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 .
Claim Objections
Claim 38 is objected to because of the following informalities:
-in lines 2 and 4, the word “of” in front of the words “the outer part” should be deleted and replaced with -- in --.
Appropriate correction is requested.
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 19-23, 25-26, 28-33 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over CN 206714071U (hereinafter referred to as “Chen”) (see Mechanical English Translation).
Regarding independent claim 19, and dependent claim 37, Chen discloses an electronic cigarette (read: aerosol-generating device) which comprises a battery assembly (100) (corresponding to the claimed “[a]n aerosol-generating device”). The battery assembly (100) of the electronic cigarette further comprises a housing body (10) (read: housing part) that is provided with a holding cavity/chamber (11) (read: opening) which inherently has an interior surface (read: second surface) into which an insulating member (20) (read: inner part), having an outer surface (read: first surface), is inserted. As evident from the Figure, it is clear that, when the insulating member (10) is inserted into the housing body (10), the interior surface of the housing body (10) faces toward the outer surface of the insulating member (20) (corresponding to the claimed “an inner part having a first surface; a housing part at least partially defining an outer appearance of the aerosol-generating device and having a second surface facing towards the first surface, the housing part having an opening”).
Chen further discloses that the holding chamber (11) inner wall is provided with multiple fixing pieces (12), such as double-faced adhesive tape, to which the outer surface of the insulating member (20) is connected to. “Multiple” pieces strongly infers, if not teaches, that these pieces of tape are provided around the perimeter of the holding chamber; however, in the alternative, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided these pieces fully around the circumference of the holding chamber in order to better ensure that the insulating member (20) is well-secured to the inner wall of the holding chamber (11) of the housing body (10). It is noted that Applicant recites “an adhesive tape” which infers that instead of “pieces” of adhesive tape, a singular piece of adhesive tape is provided fully around the opening of the housing part. While Chen et al doesn’t appear to explicitly disclose this, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have opted to provide an integral or continuous piece of tape based on the doctrine of mere substitution of equivalents because substituting a single piece of tape for multiple pieces of tape is the mere substitution of one known element for another to obtain predictable results. In other words, the single piece performs the exact same function (securing) as multiple pieces, yielding the same predictable outcome without any new or unexpected properties. Additionally (or in the alternative), using a single piece of tape to achieve the same securing/fastening function is a matter of design choice that simplifies assembly or reduces manufacturing costs (corresponding to the claimed “an adhesive tape adhered to both the first surface and the second surface fully around a circumference surrounding the opening of the housing part”; and the “[a] double-sided adhesive configured to seal a space between an outer part of an aerosol-generating device and a surface of an inner part of the aerosol-generating device circumferentially around an opening in the outer part” recitation of claim 37) (see entire English translation).
Regarding claim 20, as evident from Fig. 1, it is clear that the interior wall of the housing body (10) is parallel with the outer surface of the insulating member (20) as they are in slidable relation to each other (corresponding to the claimed “wherein the first surface and the second surface are parallel to each other”).
Regarding claim 21, Chen does not appear to articulate the material of construction for its insulating member (20); however, given that it mentions that plastic has been known for its use in electronic cigarette battery assemblies, in preventing the battery itself from contacting a metal shell casing that it is placed in, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen plastic as the material of construction of its insulating member (20) (corresponding to the claimed “wherein the inner part is a plastic part”).
Regarding claim 22, given that it would have been obvious to fabricate the insulating member (20) of plastic, it follows that said member would also be water-resistant as this is a common property of most plastic materials and would have merely provided protection of the battery which is being housed therein (corresponding to the claimed “wherein the inner part is non-permeable to water”)
Regarding claim 23, as evident from Figure 1, the insulating member (20) has an opening at its holding part (21) which is consistent with the opening at the holding chamber (11) of the housing body (10) (corresponding to the claimed “wherein the inner part has an opening corresponding to the opening of the housing part”).
Regarding claim 25, Chen discloses that its battery (30) (read: a body of the aerosol-generating device) is inserted into the insulating member (20) which is inserted into the housing body (10), resulting in the insulating member (20) being provided between the battery and the housing body (10) (corresponding to the claimed “wherein the inner part is provided between a body of the aerosol-generating device and the housing part”).
Regarding clam 26, it follows that the insulating member (20) would be in sealing engagement with the battery (30) so as to enable a fraction fit that will ensure that the battery (30) remains securely within the insulating member (20) (corresponding to the claimed “wherein the inner part is in sealing engagement with the body”).
Regarding claims 28-31, while Chen is silent regarding the thickness of its double-faced adhesive tape, it is clear that a particular tape thickness is not required by Chen. Further, thickness is a "result-effective variable". Therefore, determining the exact thickness necessary for the tape's optimal performance is a matter of routine optimization well within the capability of one of ordinary skill in the art and, in so doing, one would arrive at a thickness lying within the claimed ranges. Also, adapting the claimed thickness of an adhesive tape for fixing the insulating member (20) to the housing body (10) can also be considered a mere matter of obvious design choice (corresponding to the claimed “wherein the adhesive tape has a thickness between 0.05 millimeter and 1 millimeter” recitation of claim 28; the “wherein the adhesive tape has a thickness between 0.1 millimeter and 1 millimeter” recitation of claim 29; “wherein the adhesive tape has a thickness between 0.1 millimeter and 0.6 millimeter” recitation of claim 30; wherein the adhesive tape has a thickness between 0.1 millimeter and 0.3 millimeter” recitation of claim 31).
Regarding claim 32, as stated above, Chen discloses that its invention includes an atomizer connected to the battery assembly (100) and since it is well-known that many electronic smoking devices include a heating chamber configured to receive an article and a heater configured to heat said article; it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have incorporated the claimed structure in the device of Chen.
Regarding claim 33, and dependent claim 36, as stated above, Chen discloses an electronic cigarette (read: aerosol-generating device) which comprises a battery assembly (100) and, inherently, a method for assembling the same (corresponding to the claimed “[a] method for assembling an aerosol-generating device”). The battery assembly (100) of the electronic cigarette further comprises a housing body (10) (read: housing part) that is provided with a holding cavity (11) (read: opening) which inherently has an interior surface (read: second surface) into which an insulating member (20) (read: inner part), having an outer surface (read: first surface), is inserted. As evident from the Figures, it is clear that, when the insulating member (10) is inserted into the housing body (10), the interior surface of the housing body (10) faces toward the outer surface of the insulating member (20) (corresponding to the claimed “providing an inner part of the aerosol-generating device; providing an outer part of the aerosol-generating device, the outer part having an opening”).
Chen further discloses that the holding chamber (11) inner wall is provided with multiple fixing pieces (12), such as double-faced adhesive tape, to which the outer surface of the insulating member (20) is connected to. “Multiple” pieces infers that these pieces of tape are provided around the perimeter of the holding chamber; however, in the alternative, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided these pieces fully around the circumference of the holding chamber in order to better ensure that the insulating member (20) is well-secured to the inner wall of the holding chamber (11) of the housing body (10). Applicant recites “an adhesive tape” which infers that instead of “pieces” of adhesive tape, a singular piece of adhesive tape is provided fully around the opening of the housing part. While Chen et al doesn’t appear to explicitly disclose this, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have opted to provide an integral or continuous piece of tape based on the doctrine of mere substitution of equivalents as substituting a single piece of tape for multiple pieces of tape is the mere substitution of one known element for another to obtain predictable results. In other words, the single piece performs the exact same function (securing) as multiple pieces, yielding the same predictable outcome without any new or unexpected properties. Additionally (or in the alternative), using a single piece of tape to achieve the same securing/fastening function is a matter of design choice that simplifies assembly or reduces manufacturing costs (corresponding to the claimed “attaching a first adhesive side of a double-sided adhesive tape to the inner part, and attaching a second adhesive side of the double-sided adhesive tape to the outer part around a circumference surrounding the opening of the outer part”; and the “wherein the inner part is attached to the outer part via the double-sided adhesive tape” recitation of claim 36) (see entire English translation).
Allowable Subject Matter
Claims 24, 27, 34-35 and 38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DIONNE W. MAYES/ Primary Examiner, Art Unit 1747
Prosecution Insights