DETAILED ACTION
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, 2, 3, 4, 5, 6, 10, 11, 12, 13, 14, 15, 16, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 9, 21, 9, 10, 13, 11, 12, 13, 2, 3, 4, 5of U.S. Patent No. 11896758. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of Claims 1, 2, 3, 4, 5, 6, 10, 11, 12, 13, 14, 15, 16, 18 of the present application are present in Claims 1, 8, 9, 21, 9, 10, 13, 11, 12, 13, 2, 3, 4, 5, of U.S. Patent No. 11896758 .
Claim Rejections - 35 USC § 102
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 1-2, 8-10, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Farrow (US 2015/0090253).
Regarding Claim 1: Farrow discloses a method of making (the disclosure of the apparatus discloses its method of making) an e-vaping device (1, 2, 100, 200; Figs. 1-5), comprising: defining a chamber (350; Fig. 7a) within a first housing (225; Fig. 5), the chamber including a first-shaped cavity (351; Fig. 7a) and a second-shaped cavity (352; Fig. 7a) configured to receive a first-type consumable (361, 318; Fig. 7b) and a second-type
consumable (362, 320; Fig. 7b), respectively.
Regarding Claim 2: Farrow discloses all the limitations of Claim 1, and further discloses configuring a structure selector (22; Fig. 3) to select between the first-shaped cavity and the second shaped cavity.
Regarding Claim 8: Farrow discloses all the limitations of Claim 1, and further discloses inserting the first-type consumable into a consumable insert (361; Fig. 7b), the first-shaped cavity being configured to receive the consumable insert (Fig. 7b); and sealing an opening (see sealed circular opening on 361) of the consumable insert with at least one of a sealing foil, a breakoff tab, or a sealed sachet (the seal appears as a foil, see Fig. 7b).
Regarding Claim 9: Farrow discloses all the limitations of Claim 1, and further discloses arranging at least one first heating element (12; Fig. 3) within the first-type consumable, the second type consumable, or both the first-type consumable and the second-type consumable.
Regarding Claim 10: Farrow discloses all the limitations of Claim 1, and further discloses arranging at least one first heating element (12; Fig. 3) to interface with the first-type consumable (the heating element 12 interface the first and second consumables by heating the first and second consumables).
Regarding Claim 15: Farrow discloses all the limitations of Claim 1, and further discloses the first-shaped cavity and the second-shaped cavity differ in at least one of a shape (see different shapes between 352 and 351; Fig. 7a), a size and a position.
Regarding Claim 16: Farrow discloses all the limitations of Claim 1, and further discloses wherein the defining defines such that the first-shaped cavity includes a first-type recess (see Fig. 7a) defined by an end-wall (all walls of 350 defines/limits the recesses; Fig. 7a) of the chamber and the second-shaped cavity includes a second-type recess (see Fig. 7a) defined by the end-wall (all walls of 350 defines/limits the recesses; Fig. 7a).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Farrow (US 2015/0090253).
Regarding Claim 18: Farrow discloses all the limitations of Claim 1, and further discloses wherein the defining defines such that the first-shaped cavity and the second-shaped cavity include different shapes (see Fig. 7a, [0055,56]) that are at least one of defined in the first housing, defined in an interior wall of the chamber (see Fig. 7a), or combinations thereof, but does not explicitly recite the shapes being slits.
Before the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have the shapes being slits because Applicant has not disclosed that such slits provide an advantage, are used for a particular purpose, or solve a stated problem. One of ordinary skill in the art, furthermore, would have expected shapes of Farrow, and Applicant’s invention, to perform equally well because both perform the same function of selecting the consumable.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Farrow (US 2015/0090253) in view of Memari (US 2015/0245668).
Regarding Claim 7: Farrow discloses all the limitations of Claim 1, as stated above, and further discloses arranging a articulable portion to be operatively connected to the first housing (see Figs. 2-3, and 5), the chamber being at least partially contained within the articulable portion (see Figs. 2-3, and 5 how the chamber is contained in the articulable portion of the housing), the articulable portion being movable between a closed configuration where the chamber is not accessible (see Fig. 2) and an open configuration where the chamber is accessible for insertion of the first-type consumable and the second-type consumable (see Fig. 2).
Farrow is silent regarding the articulable portion being a hinged portion.
However, Memari teaches an e-vaping device (Fig. 7) having an articulable housing (see Fig. 8) with a hinged portion (2; Fig. 8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the articulable portion of Farrrow, to have the articulable portion being an hinged portion, as taught by Memari. Such a modification would enable to open the housing without having a portion of the housing being completely separable and thus providing a risk of losing such a portion.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Farrow (US 2015/0090253) in view of Rostami (US 2017/0258140).
Regarding Claim 11: Farrow discloses electrically connecting a power source to the at least one first heating element ([0042]), but does not explicitly recite operatively connecting a controller to the power source.
However, Rostami teaches a method for making an e-vaping device (see title) comprising providing a power source ([0006]) connected to a heating element ([0011]) and operatively connecting a controller to the power source ([0006, 0042, 0135-136, 0147]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Farrrow, to have operatively connecting a controller to the power source, as taught by Rostami. Such a modification would enable to control the heating of the device.
Regarding Claim 12: Farrow in view of Rostami teaches all the limitations of Claim 11, as stated above, and Rostami further teaches configuring a detection system to detect the first-type consumable or the second-type consumable within the chamber, the detection system including the controller ([0135-136, 0147]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Farrrow in view of Rostami, to have configuring a detection system to detect the first-type consumable or the second-type consumable within the chamber, the detection system including the controller, as taught by Rostami. Such a modification would enable to automatically detect the type of consumable inserted and adjust the heating accordingly.
Regarding Claim 13: Farrow in view of Rostami teaches all the limitations of Claim 12, as stated above, and Rostami further teaches wherein the configuring of the detection system configures to cause the controller to send an electrical current ([0135-136, 0147]) from the power source to the at least one first heating element to generate a vapor when the detection system detects the first-type consumable or the second-type consumable ([0135-136, 0147]).
Allowable Subject Matter
Claims 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
Prior art fails to teach, “the defining defines such that the first-shaped cavity partially overlaps with the second-shaped cavity.” (for Claim 19).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see notice of references cited.
Contact Information
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see notice of references cited. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODOLPHE ANDRE CHABREYRIE whose telephone number is (571)272-3482. The examiner can normally be reached on 8:30-18:30. 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, Steven Crabb can be reached on 571-270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODOLPHE ANDRE CHABREYRIE/Primary Examiner, Art Unit 3761
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