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 § 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.
Claim(s) 1-3 and 5-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ping (US 4,342,902).
Regarding claims 1, 17, and 18, Ping discloses a holder that accommodates a battery cell (making it a power supply assembly, see figure 6, element 30), electronically produces a vapor (i.e. ignites cigarettes), and includes a conductive structure arranged on the holder (elements, 15, and 23-25). As illustrated in figure 6, the conductive structures are integrated onto the wall of the holder.
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Ping does not teach how conductive structure is formed. However, the steps and parameters for the process for making the conductive structures do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 2 and 3, the rear wall as shown in figure 6 can be a side wall or a bottom wall depending on how the device is held.
Regarding claims 5 and 6, the rear wall (27) has a printed circuit board (26) as part of its structure. Therefore, the first accommodating cavity where the batteries are located has a conductive structure and the second accommodating cavity accommodates contains a first circuit board and the conductive structure (circuit 25) connects each additional accommodating cavity (see figure 8 below).
Regarding claim 8, Ping discloses elastic electrodes (21) that contact a first electrode in the second accommodating cavity. The circuit connect to contact 21 can be considered the first circuit board because the circuit is located on a planer block.
Regarding claim 9, the area where the electrode is located is considered to be a boss.
Regarding claims 7, 10, and 11, adjacent cavities are connected with electrodes that connect subsequent circuits as shown in figure 8 (see below). As shown the contact in the prior cavity serves as a connection to the contact in the next cavity.
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Regarding claim 12, the conductive structures are elongated connection portions. The process of forming the conductive structures is a process limitation and the steps and parameters for the process for making the conductive structures do not add patentable details to this invention (see above).
Regarding claim 13, the first and second conductive members as illustrated by Ping are located at an end of each conductive portion (see figure 6 above).
Regrading claim 14, the conductive members are integral to the holder. The process of forming the conductive structures is a process limitation and the steps and parameters for the process for making the conductive structures do not add patentable details to this invention (see above).
Regarding claim 15, the first electrode of each conductive member (figure 6, element 29) are mirror images of one another.
Regarding claim 16, the electrodes on two adjacent first electrodes on the first conductive member have mirror symmetry (electrodes labeled 24 are mirror images of one another).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ping (US 4,342,902) as applied to claim 1 above.
Regarding claim 4, Ping illustrates two battery cells and illustrates that the conductive structure extends from the first end to the second end (the height of the device as shown). Although the battery is shown in two cells, it would have been notoriously well known in the art that this arrangement is equivalent to a single battery cell of a different type or a single battery composed of multiple cells. As such, it would have been obvious to one of ordinary skill in the art at the time of invention to integrate two batteries into one because it has been held, “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice." (see MPEP 2144.04 (V)(B)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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, Michael H 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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/Michael J Felton/Primary Examiner, Art Unit 1747
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