.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 .
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(s) 1-6, 11-13 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mironov et al. (WO2015101479) in view of Silvestrini et al. (U.S Pub. No. 20180014573).
Regarding claim 1, Mironov discloses a capsule for an aerosol-generating device, comprising:
a base of a thermally-conductive material, the base defining a first cavity (space by reference sign 202, fig. 2) therein, the base including a first surface (by reference sign 108, fig. 2), the first surface defining an opening to a second cavity (by reference sign 110, fig. 2), the second cavity being annular and the first cavity surrounding the second cavity (see fig. 2), the second cavity is configured to receive a heating system configured to heat the base (see figs. 3-4 by reference sign 308); and
a cover (200, fig. 2) coupled to the base and on the base.
Regarding claim 2, Mironov discloses the base further includes:
a first wall; and
a second wall, the first surface connecting the first wall and the second wall, the first surface, the first wall and the second wall defining the first cavity (space by reference sign 202, fig. 2).
Mironov does not expressly disclose the base including a plurality of dividers. Silvestrini discloses a cartridge for an aerosol-generating device wherein the cartridge has a plurality of dividers to form compartments to contain different substances [0005-0009]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the base of Mironov including a plurality of dividers to house different substances as taught by Silvestrini.
Regarding claim 3, Mironov discloses wherein a width of the first cavity increases (see fig. 2) as the first wall and the second wall extend from the first surface (108, fig. 2).
Regarding claim 4, Mironov discloses wherein the width continuously increases from a bottom portion to a top portion (see fig. 2).
Regarding claim 5, Mironov discloses the radius of the base of the capsule is preferably between about 3mm and about 6mm and the radius of the recess is between about 1.5mm and about 3mm overlapping with the claimed wherein the width has a maximum of about 2 mm. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Regarding claim 6, Mironov discloses wherein the first wall, the second wall and the first surface are integral (see fig. 2).
Regarding claim 11, Mironov discloses the cover includes an overhang coupled to the base (by reference sign 200, fig. 2) .
Regarding claim 12, Mironov discloses wherein a width of the first cavity increases along a first direction and a width of the second cavity decreases along the first direction (see fig. 2).
Regarding claim 13, Mironov discloses wherein the first direction is a longitudinal direction of the capsule (see fig. 2).
Regarding claim 15, Mironov discloses an aerosol-forming substrate in the first cavity (by reference sign 202, fig. 2).
Regarding claim 16, Mironov discloses the aerosol-forming substrate includes tobacco (page 2, line 20).
Claim(s) 7-10, 14 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mironov et al. (WO2015101479) in view of Silvestrini et al. (U.S Pub. No. 20180014573) and further in view of Armoush et al. (U.S Pub. No. 20170251718).
Regarding claim 7, Mironov does not expressly disclose a plurality of apertures are in a circular pattern through the first surface. Armoush discloses a first plurality of apertures through the first surface, wherein the first plurality of apertures are in a circular pattern (by reference sign 304, fig. 3) to promote even airflow [0084]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the capsule of Mironov with a first plurality of apertures through the first surface wherein the first plurality of apertures being around the opening to the second cavity and the first plurality of apertures are in a circular pattern.
Regarding claim 8, when taken Mironov and Armoush together as a whole, it would be obvious to one of ordinary skill in the art at the time the invention was made that the first plurality of apertures are in a single circular line.
Regarding claim 9, Armoush discloses the cover includes a second plurality of apertures in a middle portion of the cover, the first plurality of apertures and the second plurality of apertures defining an air flow path through the base and the cover [0030] [0065]. Furthermore, it would have been obvious to one of ordinary skill in the art to make the second plurality of apertures being in the third surface wherein the third surface and the second surface being at different heights.
Regarding claim 10, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the third surface is elevated with respect to the second surface for airflow.
Regarding claim 14, it would have been obvious to have been obvious to have the second plurality of apertures over an interior wall of the base, the interior wall defining an end of the second cavity for airflow (see [0084] of Armoush). Also duplication of parts and rearrangement of parts are obvious design choice unless new and unexpected results is produced (see (In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)).
Regarding claim 17, Armoush discloses the second plurality of apertures are in a circular pattern including at least two circles (see fig. 3).
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11882872. Although the claims at issue are not identical, they are not patentably distinct from each other because they have the same scope of invention.
Response to Arguments
Regarding Nonstatutory Double Patenting rejection, Applicants request the Examiner to hold the rejections in abeyance because the claims of the present application are currently being prosecuted.
Applicant’s arguments filed 10/09/2025 have been considered but are moot in view of the new ground of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/Examiner, Art Unit 1747