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 .
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11930857. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 1 of the ‘857 patent includes all limitations of claim 1 of the instant application and includes additional limitations such as “performing a temperature incrementing process” and “wherein the temperature incrementing process begins solely based on the first removal of the cartridge from the vaporizer body”.
Claims 2-7 of the instant application are substantially identical to claims 2-7 of the ‘857 and differ only in that the ‘857 patent refers to a “first setpoint temperature” and a “second setpoint temperature” where in the instant application refers to a “setpoint temperature” and a “next setpoint temperature”. The ‘857 patent also recites a “first removal”, “first timeout period”, and “first removal” where the instant application simply states “removal, “timeout period”, and “removal”.
Claims 8-10 of the instant application are identical to claims 8-10 of the ‘857 patent.
Claim 11 of the instant application is substantially identical to claim 11 of the ‘857 patent except where the ‘857 patent refers to a “first setpoint temperature” and the instant application refers to a “setpoint temperature”.
Claim 12 of the instant application is identical to claim 12 of the ‘857 patent.
Claim 13 of the ‘857 patent includes all limitations of claim 13 of the instant application and includes additional limitations such as “performing a temperature incrementing process” and “wherein the temperature incrementing process begins solely based on the first removal of the cartridge from the vaporizer body”.
Claims 14-24 of the instant application are identical to claims 14-24 of the ‘857 patent.
Claim 25 of the ‘857 patent includes all limitations of claim 25 of the instant application and includes additional limitations such as “performing a temperature incrementing process” and “wherein the temperature incrementing process begins solely based on the first removal of the cartridge from the vaporizer body”.
Claims 1, 3-5, 7, 8, 12, 13, 15-17, 19, 20, 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-12, 17-21, and 23 of copending Application No. 18/549297 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1 of the instant application, claims 1, 2, and 4 of the copending application contain all limitations of claim of the instant application and differ only in that the reference application refers to “a first operational mode in a sequence of operational modes, wherein the first operational mode defines first parameters of the heating element” and a “second operational mode in the sequence of operational modes, wherein the second operational mode defines second parameters of the heating element” where the instant application refers to “a setpoint temperature” and “a next setpoint temperature”. However, claim 4 of the reference application says “the first parameters of the heating element comprise a first setpoint temperature and/or the second parameters of the heating element comprise a second setpoint temperature.”
Claim 3 of the instant application is substantially equivalent to claim 6 of the reference application. The claims differ only where the instant application recites “setpoint temperature” and the reference application states “a first operational mode in the sequence of operational modes”.
Claim 4 of the instant application is substantially equivalent to claim 7 of the reference application. The claims differ only where the instant application recites “setpoint temperature” and “next setpoint temperature” and the reference application states “the first operational mode” and “the second operational mode”.
Claim 5 of the instant application is identical to claim 8 of the reference application.
Claim 7 of the instant application is substantially equivalent to claim 9 of the reference application. The claims differ only where the instant application recites “the next setpoint temperature” and the reference application states “the second operational mode”.
Claim 8 of the instant application is substantially equivalent to claim 10 of the reference application. The claims differ only where the instant application recites “the series of setpoint temperatures”, “setpoint temperature, and “next setpoint temperature” where the reference application states “the sequence of operational modes”, “the first operational mode”, and “the second operational mode”.
Claim 12 of the instant application is substantially equivalent to claim 11 of the reference application. The claims differ only where the instant application recites “next setpoint temperature” and “a third setpoint temperature” where the reference application states “the second operational mode”, and “a third operational mode”.
Claim 13 of the instant application is substantially equivalent to claim 12 of the reference application. The claims differ only where the instant application recites “setpoint temperature”, “next setpoint temperature”, and “sequence of setpoint temperatures” and the reference application states “the first operational mode”, “a second operational mode”, and “sequence of operational modes”.
Claim 15 of the instant application is substantially equivalent to claim 17 of the reference application. The claims differ only where the instant application recites “the setpoint temperature” and the reference application states “the first operational mode” and “first parameters”.
Claim 16 of the instant application is substantially equivalent to claim 18 of the reference application. The claims differ only where the instant application recites “setpoint temperature” and “next setpoint temperature” and the reference application states “the first operational mode” and “the second operational mode”.
Claim 17 of the instant application is identical to claim 19 of the ‘857 patent.
Claim 19 of the instant application is substantially equivalent to claim 20 of the reference application. The claims differ only where the instant application recites “the next setpoint temperature” and the reference application states “the second operational mode”.
Claim 20 of the instant application is substantially equivalent to claim 21 of the reference application. The claims differ only where the instant application recites “sequence of setpoint temperatures”, “setpoint temperature”, and “next setpoint temperature”, and the reference application states “sequence of operational modes”, “the first operational mode”, and “a second operational mode”.
Regarding claim 25 of the instant application, claim 23 of the copending application contains all limitations of claim of the instant application and differ only in that the reference application refers to “a first operational mode in a sequence of operational modes, wherein the first operational mode defines first parameters of the heating element” and a “second operational mode in the sequence of operational modes, wherein the second operational mode defines second parameters of the heating element” where the instant application refers to “a setpoint temperature” and “a next setpoint temperature”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-25 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Hatton et al. (US 2018/0077967). Hatton et al. discloses a vaporizer comprising a cartridge, wherein the apparatus may be operated to allow the user to select the operating temp (set mode) by shaking the device with a cartridge inserted. This may then change the display (e.g., multi-colored LEDs on the surface of the device), for example, displaying battery life using the multiple LEDs arranged (e.g., in an X pattern). While in this state, removing cartridge enters temp set mode. The device automatically cycles through the 4 (+1 or more, when user defined) presets. The user may then choose one by reinserting the pod at appropriate time ([0085]). While Hatton teaches reinserting the cartridge at a specific time to select a temperature mode, it does not disclose or suggest “detecting, during a timeout period and following removal of the cartridge, reinsertion of the cartridge in the vaporizer body; incrementing, in response to detecting reinsertion of the cartridge during the timeout period, the setpoint temperature to a next setpoint temperature in a sequence of setpoint temperatures”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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