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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,412,782 (hereinafter US ‘782). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims of US ‘782 include the recited elements of pending claims as stated below.
With respect to claim 1, Patent claim 1 of US ‘782 discloses for a cartridge including a housing with an outer surface and an inner surface, at least one air passage extending longitudinally through the housing between the outer surface and the inner surface wherein the longitudinal air passage would be from end to end of the housing for the air passage to extend through the housing, an opening (as a first opening as claimed) in an end (as a first end) of the housing where a cap is inserted in the first opening, the cap having an opening (as a second opening) extending there through with at least one wick extending through the opening (second opening) in the cap as recited in claim 1. It is also noted that the more detailed patent claim is deemed to anticipate and teach the broader claim scope of the pending claim wherein the pending claim is deemed an obvious variant of the patent claim.
With respect to claim 2, Patent claim 14 of US ‘782 discloses for the air passage having eight air passages spaced uniformly around housing.
With respect to claim 3, Patent claim 1 of US ‘782 disclose for a traverse end wall defining at least one outlet.
With respect to claim 4, Patent claim 2 of US ‘782 discloses for the monolithic wick.
With respect to claim 5, Patent claim 4 of US ‘782 discloses for the wick including one or more slots extending longitudinally through the wick.
With respect to claim 6, Patent claim 5 of US ‘782 discloses for one or more slots including at least two slots.
With respect to claim 7, Patent claim 6 of US ‘782 discloses for the one or more slots that are about 100 microns to about 400 microns wide.
With respect to claim 8, Patent claim 7 of US ‘782 discloses for the one or more slots that are evenly space.
With respect to claim 9, Patent claim 8 of US ‘782 discloses for the one or more slots having same dimensions.
With respect to claim 10, Patent claim 9 of US ‘782 discloses for the one or more slots having different dimensions.
With respect to claim 11, Patent claim 3 of US ‘782 discloses for the wick having a height of 6 cm, a width of 3.5 mm, and a length of 3.5 mm.
With respect to claim 12, Patent claim 10 of US ‘782 discloses for the wick comprising a plurality of filaments.
With respect to claim 13, Patent claim 11 of US ‘782 discloses for the wick that is formed from materials including cellulose, glass, ceramic, graphite, or any combination thereof.
With respect to claim 14, Patent claim 1 of US ‘782 discloses for the housing including the outer surface and the inner surface wherein it would have been obvious to form the outer surface and the inner surface of the house in a single integrally formed piece as the housing would have surfaces that define the housing with its exterior and interior surfaces.
With respect to claim 15, Patent claim 15 of US ‘782 discloses for a cartridge including a housing with an outer surface and an inner surface, at least one air passage extending longitudinally through the housing between the outer surface and the inner surface wherein the longitudinal air passage would be from end to end of the housing for the air passage to extend through the housing, an opening (as a first opening as claimed) in an end (as a first end) of the housing where a cap assembly is inserted in the (first) opening, the cap assembly having an opening (as a second opening) extending there through with at least one wick extending through the opening (second opening) in the cap, and a power supply that includes a battery as recited in claim 15. It is also noted that the more detailed patent claim is deemed to anticipate and teach the broader claim scope of the pending claim wherein the pending claim is deemed an obvious variant of the patent claim.
With respect to claim 16, Patent claim 15 of US ‘782 discloses for a reservoir that is configured to contain a pre-vapor formulation wherein the reservoir is defined by the inner surface of the housing wherein a cap assembly is inserted in the first opening of the inner surface.
With respect to claim 17, Patent claim 15 of US ‘782 discloses for the housing including the outer surface and the inner surface wherein it would have been obvious to form the outer surface and the inner surface of the house in a single integrally formed piece as the housing would have surfaces that define the housing with its exterior and interior surfaces.
With respect to claim 18, Patent claim of 26 of US ‘782 discloses for the air passage having eight air passages spaced uniformly around housing.
With respect to claim 19, Patent claim of 15 of US ‘782 discloses for a traverse end wall defining at least one outlet.
With respect to claim 20, Patent claim 19 of US ‘782 discloses for the monolithic wick.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG Y PAIK whose telephone number is (571)272-4783. The examiner can normally be reached 9:00-5:30; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven W. Crabb can be reached at 571-270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANG Y PAIK/Primary Examiner, Art Unit 3761
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