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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 25, 2023 is being considered by the examiner.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications 61/883,742, 14/498,175, 16/040,906 and 17/134,702 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application.
Claim 3 of the instant application recites a connection spring that is electrically connected to a plurality of pins. The prior-filed applications do not provide support for the subject matter of claim 3. Instead, they explicitly disclose that the connection spring is electrically connected to one of the pins. Consequently, claim 3 will not be afforded benefit of the earlier filing dates of the prior-filed applications.
Drawings
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 subject matter of claim 3 must be shown or the features canceled from the claim. No new matter should be entered.
As discussed above, the prior-filed applications fail to disclose the subject matter of claim 3. Given that this is a continuation application, the drawings of this application are identical to the drawings of the earlier-filed application. Naturally, the drawings fail to illustrate the subject matter of claim 3.
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.
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 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 15 and 14 of US 10,874,145 B2, respectively. Although the rejected claims and the corresponding claims of US 10,874,145 B2 are not identical, they are not patentably distinct from each other because the claims of US 10,874,145 B2 anticipate the corresponding claims of the instant application.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
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.
Claims 4 and 5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 4, the recitation “…connection board electrically connected…” is grammatically ambiguous. It is unclear whether the recitation intends to convey that the connection board is electrically connected to the pins, or that the puff sensor is electrically connected to the pins.
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The subject matter of claim 10 is verbatim recited in claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 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.
Claims 1-10 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Glasberg et al. (“Glasberg”) (US 2014/0014124 A1) in view of Klemenz et al. (“Klemenz”) (US 2008/0136369 A1).
With respect to claim 1, Glasberg discloses an electronic vaping article (see title) comprising (see Fig. 1A):
an outer housing 12 configured to hold a liquid formulation (see [0042]);
a heater 96 in fluidic communication with the liquid formulation (see Fig. 2 and [0042]);
a power supply 30 operable to apply a voltage across the heater 96 (see Figs. 2 and 8, and [0042]);
a first electrical contact 38 and a second electrical contact 40 electrically connected to the power supply 30 (see Fig. 2 and [0033] disclosing that contacts 38 and 40 are charging contacts), the power supply 30 configured to be charged via the first electrical contact and the second electrical contact (see [0033]-[0034]); and
a sensor and feedback assembly 64 (see [0036]) including a connection board (every circuit comprises a board) and a plurality of pins (pins formed on and in the board, the pins corresponding to leads 65, 67, 69, 71, 73) extending through the connection board (see Fig. 2).
The vaping article taught by Glasberg differs from the claimed invention in that Glasberg does not disclose that the sensor and feedback assembly comprises the claimed connection spring.
However, Glasberg discloses a biasing mechanism associated with the first electrical contact 38, wherein the biasing mechanism comprises a spring 112 that biases a charging contact 46 towards the first electrical contact 38 (see Figs. 9-11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have reversed the biased interaction between contacts 38 and 46 such that contact 46 is fixed and contact 38 is biased towards contact 46. The modification would constitute reversal of relative movement of two elements, which is deemed to be an obvious modification according to In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). If the modification is made, then the sensor and feedback assembly would comprise a connection spring that biases the first electrical contact 38 outwardly towards contact 46 (i.e. bias contact 38 away from the power supply 30) (see also Fig. 1 of Klemenz illustrating how the modification would be achieved. Klemenz discloses spring-biased contacts 37, which are analogous to contact 38 of Glasberg, biased outwardly towards fixed contacts 51, which are analogous to contact 46 of Glasberg).
With respect to claim 2, as discussed above, the plurality of pins include a pin for each of the leads 65, 67, 69, 71 and 73. That said, the plurality of pins include a first pin (pin connected to lead 65) and a second pin (pin connected to lead 67), wherein the first pin and the second pin are electrically connected to the power supply 30 (see [0038] disclosing that leads 65 and 67 are respectively connected to charging contacts 38 and 40, which are in turn connected to the power supply 30).
With respect to claim 3, if the vaping article is modified as suggested above (see rejection of claim 1), then the connection spring would be physically connected to the first pin (see Fig. 2) and electrically connected to the other pins by virtue of being part of a common electrical circuit.
With respect to claim 4, the vaping article further comprises a puff sensor 36 on the connection board, the puff sensor electrically connected to the plurality of pins (see [0044] and Fig. 2).
With respect to claim 5, Glasberg discloses that the puff sensor is disposed in air flow path 68 (see [0013]), which extends through the housing (see [0037]). While Glasberg does not explicitly disclose the spatial relationship between the puff sensor, the power supply 30 and the connection board, based on the disclosure regarding the potential locations where the puff sensor can be located (i.e. within flow path 68), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have positioned the puff sensor within the air flow path 68 (e.g. end of shell 16 closer to mouthpiece 18, see Figs. 1A and 2) such that the connection board is between the power supply 30 and the puff sensor.
With respect to claim 6, the first electrical contact 38 is in a form of a conductive post (see Fig. 2 and [0044]).
With respect to claim 7, the second electrical contact 40 is in a form of a conductive band (see Fig. 3).
With respect to claim 8, the first electrical contact 38 is at a center of an end face 52 of the outer housing, and the second electrical contact 40 is on a side wall of the outer housing (see Fig. 3).
With respect to claim 9, Klemenz further discloses a light emitting diode (LED) that is configured to illuminate when a first electrical contact 37 connects with a complementary contact 51 and pushes the first electrical contact 37 inwardly (see Fig. 1 and [0039]). In light of the disclosure of Klemenz, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further provided the modified vaping article with an LED that is configured to illuminate when the first electrical contact 38 is pushed inward relative to the power supply 30 (i.e. when the first electrical contact 38 makes electrical connection with contact 46). The modification would enable one to ascertain the charging status of the power source 30.
With respect to claim 10, as discussed above (see the rejection of claim 1), the connection spring would be configured to bias the first electrical contact 38 away from the power supply 30.
With respect to claim 13, the first electrical contact 38 and the second electrical contact 40 are at an upstream end (right end) of the outer housing (see Fig. 2).
With respect to claim 14, the first electrical contact 38 is farther from a downstream end (left end in Fig. 2) than the second electrical contact 40 (see Fig. 2).
With respect to claim 15, the power supply 30 comprises a rechargeable battery (see abstract).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Glasberg in view of Klemenz as applied to claims 1-10 and 13-15 above, and further in view of Newton (US 2012/0227753 A1).
With respect to claim 11, the connection board comprises an integrated circuit (see Fig. 8) and a button switch in the form of a mechanical vane switch 36 (see [0044 and Fig. 8). However, neither Glasberg nor Klemenz disclose a capacitor on the connection board.
Newton discloses an electronic cigarette comprising a rechargeable power source (see abstract). According to Newton, the rechargeable power source can be a battery or a capacitor (see [0037]). In light of the disclosure of Newton demonstrating the interchangeability of a battery and a capacitor, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a capacitor as the power source 30 in the modified vaping article, wherein the capacitor is provided on the connection board.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Glasberg in view of Klemenz as applied to claims 1-10 and 13-15 above, and further in view of Vester (US 4,517,996).
With respect to claim 12, neither Glasberg nor Klemenz disclose a mouth-end insert defining diverging outlets. Instead, Glasberg discloses a single outlet 70 comprising a uniform cross-section through which a user inhales the aerosolized liquid formulation (see Figs. 1A and 2).
Vester discloses a mouthpiece for a cigarette, the mouthpiece comprising a plurality of outlets 34 and 40, at least one of which 34 comprises a diverging conduit 32 (see Fig. 2). In light of the disclosure of Vester, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided mouthpiece 18 of the modified vaping article with diverging outlets for the purpose of optimizing the profile (e.g. density, spread) of the aerosolized liquid formulation inside a user’s mouth (see lines 50-59, col. 4 of Vester disclosing the purpose of the diverging outlet 32). In this modified article, the cartomizer 34 that holds the liquid formulation and the heater 96 would be provided in shell 16 of the outer housing instead of the mouthpiece 18, which is contemplated by the disclosure of Glasberg (see [0042]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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