DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 43 – defined as an airway. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of claim 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Election/Restrictions
Applicant’s election without traverse of Species-(c) (Figure 6) – indicating that the elected species encompasses claims 1-20 – is acknowledged. Upon review of the restriction requirement mailed 1-14-26, the instant specification and claims, and the state of the prior art: the application is not considered to include patentably distinct species among Figures 4, 5, 6, 7, and 8. The restriction requirement is withdrawn.
Claim Objections
Claims 6 and 9 are objected to because of the following informalities:
●claim 6, “the” should be inserted after “in” (Ln1)
●claim 9, “the” should be inserted after “in” (Ln3).
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
●heating body claims 1, 19, 20
●electrical component claim 20
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.
Claims 3-7, 9, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 is considered to be indefinite in that it is unclear what is intended by the phrase “actually vaporized” (Ln2). Specifically, does this refer to the amount of liquid vaporized or some other amount? The instant specification does not elaborate upon the phrase such that one cannot determine the scope of the claim.
Claim 3 recites the limitation "the vaporization liquid" (Lns1-2). There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the vaporization liquid" (Lns3-4). There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation “electrical component” which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The written description does not define what is encompassed under “electrical component. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a
limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites
what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the
structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly
recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which
are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Also for claim 20, the claim and the instant specification do not clearly define what constitutes an electrical component and does not clearly set for the relationship between the electrical component and the heating body so as to be able to supply power to the heating body.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Jeong (US 2022/0132925 A1).
Claims 1 and 10-18: Jeong teaches a vaporization core for an e-cigarette which vaporizes a stored aerosol-generating material (¶2 ¶53 Abstract), the vaporization core comprising
●liquid porous guide body 15 having a rectangular parallelepiped shape (¶60; ¶103
Lns13-15; see portion of Figure 1 annotated below) comprising
►a first side surface (top surface of liquid guide body 15 facing liquid storage
tank 13) (¶60)
●at least a part of the first side surface forming a liquid absorbingregion (¶63 ¶64)
►a second side surface (bottom surface of liquid guide body 15 facing lower
case 17) (¶60)
●arranged opposite to the first side surface (Fig1)
●at least a part of the second side surface forming a vaporization
region (comprising at least heating body 16 and open space thereabout) (¶63 ¶64 ¶73)
►a liquid guide portion which stores liquid in use (liquid storage portion; of same
material: ceramic ¶88 (i.e. beads); of equal area) (see portion of Figure 1
annotated below)
●being a part of the liquid guide body 15 between the first side
surface and a position obtained by translating the first side surface to the second side surface
●heating body 16 (¶63 ¶64 ¶73)
●arranged at the vaporization region of the second side surface
(¶63 ¶64 ¶73)
●is a heating circuit pattern 161 (¶74) (claim 15: “printed” refers to
how the heating body is formed and is not considered to be a structural limitation to the claimed structure (i.e. vaporization core)).
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With respect to the claimed distance between the first side surface and the second side surface (i.e. height of the liquid guide portion being 1mm to 4mm), Jeong teaches the liquid guide portion has a rectangular parallelepiped shape with a height of 2mm (¶103 Lns13-15: “and the porous wick has a rectangular parallelepiped shape having a height of 2.0 mm, a width of 2.0 mm, and a length of 11 mm”) where 2mm is entirely encompassed by the claimed range of 1mm to 4mm. Also for claim 16: an orthographic projection area of the liquid guide portion would be equal to an orthographic projection area of the liquid storage portion within a plane perpendicular to a direction from the first side surface to the second side surface (see discussion of claim 1: a liquid guide portion which stores liquid in use (liquid storage portion)) – and such have a cuboid shape (Fig2 Fig6 Fig7). Also for claim 18: the vaporization core comprises vaporization core seal member (comprising at least wick housing 14), the vaporization core seal member being sleeved on the liquid guide body. The vaporization core seal member having a liquid flowing openings and the at least part of the first side surface is exposed from the liquid flowing openings to form the liquid absorbing region (¶s64-69 Fig1 Fig2). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 1, with respect to the claim limitation of “a liquid storage amount Q2 of the liquid guide portion being equal to 2.5 mt to 75 mg”, this limitation refers to an amount of aerosol-generating liquid. However, the claim does not recite that the vaporization core includes a liquid such that the limitation is not considered to be a structural limitation of the claimed structure (i.e. vaporization core). Also, the limitation refers to a feature that is present when the vaporization core is being used (intended use limitation) and not to a structural limitation of the claimed structure.
Claim 1, with respect to claimed heating body, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating body to perform the claimed function. Jeong teaches a structure for the heating body to perform the same claimed function. Jeong is thus considered to meet this limitation of the claim.
Claims 2-9: with respect to the claimed limitations, these limitations refer to an amount of aerosol-generating liquid and/or an amount of vaporized liquid and/or an inhalation time. However, the claims do not recite that the vaporization core includes a liquid such that the limitations are not considered to be structural limitations of the claimed structure (i.e. vaporization core). Also, the limitations refer to features present when the vaporization core is being used (intended use limitation) – not to structural limitations of the claimed structure.
Claim 19: Jeong teaches a cartridge, for an e-cigarette, comprising:
●the vaporization core for the e-cigarette according to claim 1 (see entire discussion of
claim 1 above)
►the liquid absorbing region of the first side surface being in communication with
liquid storage cavity 13
►the vaporization region of the second side surface being in communication with
vaporization cavity 13 by way of the vaporization core
●housing (comprising at least the walls of liquid storage cavity 13, u-shaped piece on
top in Figure 2, lower case 17) comprising
►liquid storage cavity 13
►airway 12
►having the vaporizing core inside
►a vaporization cavity (at least a part of the second side surface forming a
vaporization region – the vaporization region comprising at least heating body 16 and open space thereabout with the open space forming a vaporization cavity)
●being in communication with airway 12 by way of the vaporization core
●an air inlet in communication with the vaporization cavity (Fig1: where
bottom most arrow is located)
●an air outlet in communication with airway 12 (Fig1: second arrow from
bottom)
Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 19, with respect to claimed heating body, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating body to perform the claimed function. Jeong teaches a structure for the heating body to perform the same claimed function. Jeong is thus considered to meet this limitation of the claim.
Claim 20: Jeong teaches an e-cigarette, comprising:
●the cartridge according to claim 19 (see entire discussion of claim 19 above) and
●a cigarette rod (¶56).
As discussed above under 35 U.S.C. 112(b): claim 20 and the instant specification do not clearly define what constitutes an electrical component and does not clearly set for the relationship between the electrical component and the heating body so as to be able to supply power to the heating body. Thus, as best understood – claim 20 requires an electrical component, as part of the e-cigarette, connected to the heating body and configured to supply power to the heating body. Jeong teaches one or more terminal electrically connected to a battery to power heating body 16 (¶35 ¶s74-75). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 20, with respect to claimed heating body, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating body to perform the claimed function. Jeong teaches a structure for the heating body to perform the same claimed function. Jeong is thus considered to meet this limitation of the claim.
Claim 20, with respect to claimed electrical component, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Jeong teaches a structure for the electrical component to perform the claimed function. Jeong is thus considered to meet this limitation of the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/344,884 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1-20 are within the claims and/or claim combinations of the reference application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/344,885 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1-20 are within the claims and/or claim combinations of the reference application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/820,314 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1-20 are within the claims and/or claim combinations of the reference application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/820,306 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claims 1-20 are within the claims and/or claim combinations of the reference application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art of Record
The following prior art is made of record. Guo teaches an atomizing core having uniform porosity. Song teaches an atomizing core of porous ceramic.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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