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 .
Response to Amendment
The amendment filed on 07/23/2025 has been entered. As directed by the amendment: claims 1, 13 and 15 are amended. Claim 14 is now cancelled. Thus, claims 1 – 13 and 15 are currently pending. Applicant’s arguments regarding the Non-Final Rejection on 04/23/2025 have been fully considered (see “Response to Arguments” section) and the following Final Rejection is made herein.
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 and 8 of this application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 151 of U.S. Patent No. US 11969010 B2.
Please see claims of the same row in the table inserted herein for comparison and how the claims 1 and 8 of the current application are anticipated by claims 1 and 15 patent No. US 11969010 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because: claims 1 and 8 are anticipated by claims 1 and 15 of US 11969010 B2 as indicated in the table below.
Claims of current application No. 18620319
Claims of patent US 11969010 B1
Claim 1. An aerosol-generating device, comprising: a device housing defining a first receiving chamber, a second receiving chamber, and an internal space, the first receiving chamber being configured to receive and accommodate a first consumable, the second receiving chamber being configured to receive and accommodate a second consumable or a separate power source; an internal power source within the internal space defined by the device housing, the internal power source being configured to provide power to the aerosol-generating device; and a controller configured to control aerosolization of an aerosol-forming substrate of at least one consumable of the first consumable and the second consumable, wherein the second receiving chamber includes electrical contacts configured to be detachably connected to the separate power source, to provide additional power from the separate power source to the aerosol-generating device, wherein the internal power source is configured to power both the first consumable and the second consumable when the first consumable is housed in the first receiving chamber concurrently with the second consumable being housed in the second receiving chamber, and wherein a receiving chamber wall of the first receiving chamber or a receiving chamber wall of the second receiving chamber includes slits.
Claim 8. The aerosol-generating device according to claim 1, wherein dimensions of the first consumable and dimensions of the separate power source are equal.
Claim 1. An aerosol-generating device, comprising: a device housing defining a first receiving chamber, a second receiving chamber, and an internal space, the first receiving chamber being configured to receive and accommodate a first consumable to be at least partially housed within the first receiving chamber, the second receiving chamber being configured to interchangeably receive and accommodate one of a second consumable or a separate power source at a time to be at least partially housed within the second receiving chamber; an internal power source within the internal space defined by the device housing, the internal power source being configured to provide power to the aerosol-generating device, the internal power source being between the first receiving chamber and the second receiving chamber; and a controller configured to control aerosolization of an aerosol-forming substrate of at least one consumable of the first consumable and the second consumable, wherein the second receiving chamber includes electrical contacts configured to be detachably connected to the separate power source, to provide additional power from the separate power source to the aerosol-generating device, based on the separate power source being in the second receiving chamber, wherein the internal power source is configured to power both the first consumable and the second consumable when the first consumable is housed in the first receiving chamber concurrently with the second consumable being housed in the second receiving chamber, and wherein dimensions of the first consumable and dimensions of the separate power source are equal. *Note- the bold limitations here anticipate claim 8.
Claim 15. The aerosol-generating device according to claim 1, wherein the receiving chamber wall of the first receiving chamber or the receiving chamber wall of the second receiving chamber includes two opposite and longitudinally arranged slits (*Note- the bold limitations here anticipate the italicized limitation of claim 1) configured to facilitate removal of the first consumable or one of the second consumable or the separate power source.
Allowable Subject Matter
Claims 1 – 13 and 15 would be allowable if the claims overcome the nonstatutory double patenting rejection as set forth in this Office action.
Response to Arguments
Nonstatutory Double Patenting Rejection
Applicant amended independent claim 1 to include the claim limitation of claim 14 and cancelled claim 14. Applicant also argued that the nonstatutory double patenting (NSDP) rejection has been rendered moot by the amendment.
However, the Examiner modified and maintained the NSDP as set forth in this Office action. *Note- an attempt was made to reach out to the applicant to file a Terminal disclaimer to facilitate compact prosecution and the applicant preferred the NSDP to be made as set forth herein.
Claim Rejection under 35 U.S.C. § 103
Applicant’s arguments, see Remarks, page 9 - 12, filed on 07/23/2025, with respect to the obviousness rejection of the claims under 35 U.S.C. § 103 have been fully considered and are persuasive.
As indicated in the Remarks and the filed statement of common ownership letter filed on 07/23/2025, the Zuber reference applied to reject claim 14 in the Non-Final Rejection and now amended into independent claim 1 is commonly owned by the applicant and does not qualify as a proper prior art. As such, the obviousness rejection of claims 1 – 13 and 15 has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DILNESSA B BELAY whose telephone number is (571)272-3136. The examiner can normally be reached M-F approx. 8:00 am - 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven 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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/DILNESSA B BELAY/Examiner, Art Unit 3761
/STEVEN W CRABB/Supervisory Patent Examiner, Art Unit 3761