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 1-4, 5, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18279252 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the are directed to the same invention and limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a processor that may sense the position of a cover based on information from a positioning sensor [0094], it does not reasonably provide enablement for a processor to be configured to control power supplied from the battery to the heater based on whether or not the cover opens the hole. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. One of ordinary skill does not know how to configure a processor to identify if a cover opens a hole without sensing circuity. Processors are not known to perform this function.
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.
(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 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sayed et al. (US 20220183357 A1).
Regarding claims 1 and 3 Sayed et al disclose a an aerosol generating device (100) including a housing (102) including a hole (104) for accommodating an aerosol-generating article and a guide (202) separated from the hole (104), and a lid/cover (108a) that moves between a first position ( open position ) and a second position ( closed position ) along the guide (202) in order to open and close the hole (104) [0019], wherein when the cover (108) is located in the first position, the hole (104) is opened, and when the lid/cover (108) is located in the second position, the hole (108) is closed (see, [0038], [0067-0080] and figures 9A-9E below).
The spring (i.e. a deformed structure) of Sayed et al. biases the lid towards the open position when the lid is in or near the open position or toward the closed position when it is in or near the closed position ([0004], [0075-0078], see also claim 1). The spring moves the cover by elastic force before a threshold position between the first and second portion. Pivot points are used as a first and second maintain portions. The spring has a wound portion between the ends of the spring.
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Regarding claim 2, the guide of Sayed (202) comprises a protrusion (as illustrated) on a surface of the housing. Portion 204 on the bottom of the lid (108b) goes under the protrusion while the top of the lid (108a) goes on top of the protrusion creating a groove where the protrusion from the housing is inserted (see figures 6-8).
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Regarding claim 6-9, the spring of Sayed et al. accumulates elastic force before the cover reaches the threshold position (intermediate position), stating, “Here the spring 206 is in a more compressed state than in FIG. 9B…In FIG 9C the lid 108 has not yet reached the intermediate position and is therefore still biased towards the open position, in the direction of arrow 220.” [0076]. The compressed spring as described and shown stores more energy than an expanded spring.
When the lid, “has moved beyond an intermediate position and the spring 206 has continued to rotate about the two pivot points 208, 210…The spring 206 therefore biases the lid 108 towards the closed position in the direction of arow 222.” [0077]. The spring inherently accelerates movement of the cover by providing a biasing force.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 102(a)(2) as 103 as being unpatentable over Sayed et al. (US 20220183357 A1) in view of Tanaka (US 20210015151A1).
Regarding claims 4 and 5, Sayed et al. disclose a spring (i.e. elastic member) has a wound portion between and end and the other end, but Sayed et al. do not expressly disclose that as the cover moves the movement path of the wound portion forms a curve.
However, it is known in the art that other types of springs are readily available. For instance, Tanaka discloses a smoking device with a lids and a guide member along with a torsion spring. The spring applies torsion and is illustrated in three different position and that winding forms a curve through the illustrated movement path (see figure 6, element 60a, 60b, and 60c, below). The spring has a first part and a second part that extend in different directions.
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It would have been obvious to one of ordinary skill in the art at the time of invention to use the spring of Tanaka in place of the spring of Sayed et al. because it is well known in the art to replace one element of the same type for the same purpose. Replacing one known spring biasing a moving lid with another known spring biasing a moving lid would have been obvious and would have had predictable results.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sayed et al. (US 20220183357 A1) as applied to claim 1 above, and further in view of Bellusci et al. (US 20210007396 A1).
Regarding claim 10, Sayed et al. disclose a heater configured to heat the aerosol generating article, a battery to power the heater, and a controller such as a processor and memory to control the power supplied to the heater [0017, 0018, 0037, 0045-0046]. Sayed et al. do not disclose that the processor is configured to control power supplied from the battery to the heater based on whether or not the cover opens the hole.
However, Bellusci et al. disclose a similar cover for a similar aerosol generating device. The device of Bellusci et al. contains a detector that provides, “a signal to the controller 18 indicative of whether the cover element 42 is in the closed position or the open position.” [0104]. The controller will not supply power to the heater if the cover is closed because it is assumed that an aerosol generating article is not in the heating cavity [0105]. If the cover is open, the controller may supply power to the heater [0106].
It would have been obvious to one of ordinary skill in the art at the time of invention to use a sensor as disclosed in the invention of Bellusci et al. to detect whether the cover of Sayed et al. is in the open and closed position so that the controller can determine whether or not to provide power to the heating system as described by Bellusci et al.
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.
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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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