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 § 112
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the period in line 16 followed by what appears to be a subtitle “(Magnetic Force Measurement Method) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The method appears to be a separate invention and is not a method related to the non-combustion-heating-type flavor inhaler being claimed.
Regarding claims 2-4 and 9, the method of measuring the magnetic force of the magnet that is a part of the flavor inhaler being claimed, appear to be an independent and distinct invention and are unrelated to the invention being claimed. Therefore, the claims are indefinite because it is unclear how a method of testing a part of the invention further limits the limitations of claim 1.
In the interest of compact prosecution, the Magnetic Force Measurement Method is not being examined because it is not connected to the flavor inhaler. The examiner suggests this method be removed from the instant claims.
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) 1-4, 5, and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reevell (US 2020008471 A1).
Regarding claims 1-4, 5, and 9, Reevell discloses a flavor body composed of an aerosol-forming substrates such as powder or homogenized tobacco (i.e. inherently contains ground tobacco powder) [0060] that has a magnet (see figures 6-8, elements 221, 222, 321, 421) that is to be held onto an accommodating portion (210, 310, 410) that has a power supply, a first heater, a magnetically attracting material (223, 322, 422). The device has a power supply unit that supplies power to the heaters [0100-0101].
The magnet on the device of Reevell is located on a body making it the outer surface. The inner surface is adjacent to the heater making it a heat-transmitting member that transmits heat from the heater to the magnet. Please note that this transfer of heat is inherent as the material is directly adjacent to a heater and even if it is thermally insulating some heat transfer will inherently occur.
Reevell discloses magnetic materials such as iron, cobalt, nickel, barium ferrite, strontium ferrite, cobalt ferrite, rare earth cobalt materials (samarium pentacobalt, praseodymium pentacobalt, and cerium pentacobalt, for example) manganese-bismuth, and manganese-aluminum [0034], with specific examples using cobalt ferrite [0165].
Although Reevell does not disclose that the disclosed magnets have a magnetic attraction force after being heated to 140C that is 95% or less of a magnetic attraction force of the measured at 20C, the properties of the magnets disclosed by the prior art as well as the instant specification would have been inherent. In particular, the instant specification states that, “The type of such a magnet is not particularly limited, and examples thereof include a neodymium magnet, a ferrite magnet, a samarium-cobalt magnet, and an alnico magnet.” (Specification 02/23/2024, page 9, first paragraph). Reevell discloses ferrite magnets, including cobalt ferrite, and samarium cobalt (i.e. samarium pentacobalt). These magnets must inherently produce the effect disclosed by the instant claims because they are disclosed as examples meeting this limitation in the specification.
Please note, if the magnets disclosed in the instant specification do not produce the claimed effect, a rejection under 35 U.S.C 112(a) enablement may be required as undue experimentation may be necessary to determine what, if any, magnets meet the claimed limitations.
Regarding the magnetic force measurement method limitation in claims 1, 2, 3, 4, and 9, Reevell does not disclose the method of measuring the strength of the magnet. However, the steps and parameters for the process for testing the magnet that is part of the invention of Reevell 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).
Furthermore, these process steps may not rise to the level of product by process because they do not make or use the flavor inhaler and are a method of testing the magnet that is used within the inhaler. Therefore, these steps either are a product by process limitation and do not add patentable weight or are unrelated to the invention being claimed and do not add patentable weight (see 35 U.S.C. 112(b) rejection above.
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) 5, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 2020008471 A1) as applied to claims 1, 2, 3, and 4 above.
Regarding claims 5, and 9-12, Reevell discloses that the magnetic materials can be paramagnetic or ferromagnetic, which includes both magnets and magnetically attracting material. Reevell does not expressly disclose that one side includes a magnet and the other a magnetically attracting material, however it is notoriously well known in the art, as well as those outside the art, that magnets are effective at attracting magnetically attracting materials. For example, it is notoriously well known that magnets cant attach magnetically to metal surfaces such as appliance like refrigerators (i.e. magnetically attracting material). It would have been notoriously well known in the art at the time of invention to use a magnet on one surface and a magnetically attracting material on the other surface in either orientation. One of ordinary skill would have expected the same result (i.e. two portions that magnetically attach).
Allowable Subject Matter
Claims 6- 8 and 13-17 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.
Claim 6, 7, 8, 13, 14, 15, 16, and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and the rewritten in independent form as discussed above.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art (see Reevell in the rejection above) does not disclose a molded body collecting part that collects the flavor molded body that has been heated. Although this is a intended use limitation, there is no structure capable of providing a collection of the flavor molded body of Reevell that is part of the flavor inhaler. Further, there is also not collecting part that includes a second heater.
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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