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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the at least one first portion of the ground wire providing a spring force and being biased to extend toward the ground terminal must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Figure 3 of the drawings simply shows a ground terminal 11a already connected with a resilient ground wire 10.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the present abstract does not clearly state where “The at least one first section” recited in line 1 comes from.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
These limitations recited in claims 1 and 2, “A grounding connection configured to selectively ground the electrical circuit and complete the electrical circuit wherein the grounding connection includes a ground terminal and a grounding element”, are not described in the original specification.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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.
Claim 1, line 1 recites, “At least one first section of an e-vaping device”. However, the body of claim 1 recites, a power supply and a heater. On the other hand, Paragraph [0040] of the present specification describes that the e-vaping device 60 is formed of two major sections: a first section 70 and a second section 72. Then, Paragraph [0044] describes the first section to include a mouth-end insert 20 with outlets 21; Paragraph [0050] describes the second section 72 to include a power supply 12, a puff sensor 16 with control circuitry 11; and Figure 2 of the drawings shows the mouth-end insert 20 with outlets 21 and the heater 319 located within the first section 70 and the power supply 12, a puff sensor 16 with control circuitry 11, and the gasket 9 located within the second section 77. Therefore, it is not clear what the claimed invention is, a first section, a second section or an e-vaping device, in view of the present specification since the preamble of claim 1 recites for “a first section of an e-vaping device” while the body of the claim 1 recites the components of the second section of the e-vaping device, but also a heater, which is in the first section.
Claim 1 recites, “At least one first section”, but claims 2-20 do not recite, “at least one second section”. Therefore, it is not clear whether the claimed invention includes at least one second section or just the first section. If the claimed invention does not have the second section, what is the point of saying “first section”? The examiner suggests the applicant to change “first section” to just -- section --.
Claim 4, lines 2-3 recite, “at least one first portion of the ground wire being made from a resilient material that provides a spring force”. Figure 3 shows the ground wire 10 as a rectangular object with a dotted line, where the rectangular object is placed between the gasket 9 and the housing 22 and the dotted line extended from the rectangular object and connected to the ground terminal 11a. The drawings do not show any structure that can provide a spring force. Therefore, it is not clear how the ground wire made from a resilient material can provide a spring force.
Claims 5 and 12, line 2 recite, “at least one second portion of the insulator”. However, all the preceding claims do not recite, “at least one first portion of the insulator”. Therefore, it is not clear how the second portion of the insulator can exist without the first portion of the insulator. What is the at least one first portion of the insulator?
Claim 5 recites the limitation "the section" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 also recite “a spring force”. Therefore, the same rejection stated for claim 4 also applies to claim 11.
Claim 19 recites an e-vaping device comprising a first section and a second section where each section has different elements. Claim 20 recites that the e-vaping device further comprising control circuitry. It is not clear to which section between the first section and the second section that the control circuitry belongs to.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 9, and 14-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Malamud et al (US Patent Application Publication No. 2015/0208731 A1).
Malamud discloses at least one first section 72 of an e-vaping device 60, comprising: a power supply 1, the power supply 1 being configured to be selectively electrically connected to a heater 14 (see Paragraph [0086]), the power supply 1 and the heater 14 being in an electrical circuit (see Fig. 3A); and a grounding connection 205 configured to selectively ground the electrical circuit and complete the electrical circuit (see the first and second ground lines 212a and 212b); (claim 2) wherein the grounding connection includes a ground terminal 212a and a grounding element 212b, (claim 3) which are selectively electrically connecting the ground terminal 212a to the grounding element 212b to selectively complete the electrical circuit (by connectors 210 and 215); (claim 9) wherein the grounding connection includes a first electrical element 212a and a second electrical element 212b in the electrical circuit, the grounding connection being further configured such that the first electrical element 212a and the second electrical element 212b are selectively electrically connectable to each other (by connectors 210 and 215); (claim 14) wherein the first electrical element 212a (wire) and the second electrical element 212b (are both electrically conductive and electrically passive elements; (claim 15) wherein the first electrical element 212a is a ground wire (see Paragraph [0085]) and the second electrical element is a grounding element 212b, (claim 16) which is a housing 6 of the at least one first section 72 (see Fig. 1A).
(claim 17) The at least one first section further comprising: control circuitry 102, the control circuitry 102 being configured to cause the power supply 1 to send an electrical current to the heater 14 if the control circuitry 102 senses an airflow in the at least one first section, the control circuitry being in the electrical circuit (see Paragraphs [0068]-[0069]); (claim 18) wherein the grounding connection is further configured such that the grounding connection includes a first mode (connectors 210/215 are disconnected from each other) where the electrical circuit is not grounded and the at least one first section is disabled from operational use, and the grounding connection includes a second mode (210 is connected to 215) where the electrical circuit is grounded and the at least one first section is enabled for operational use.
Regarding claims 19-20, Malamud discloses (claim 19) an e-vaping device 60, comprising: the at least one first section 71, 72 including a first section 72 including the power supply 1 and the grounding connection 212b, and a second section 71 including the heater 14, the first section 72 being configured to be selectively connected by connectors 215, 210 to the second section 71; and (claims 20) control circuitry 102, the control circuitry 102 being configured to cause the power supply 1 to send an electrical current to the heater 14 if the control circuitry 102 senses an airflow in the e-vaping device 60, the control circuitry 102 being in the electrical circuit (see Paragraphs [0068]-[0069]).
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.
Claim(s) 4-8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malamud et al (US Patent Application Publication No. 2015/0208731 A1) in view of Ditzig (US 6,667,936 B1).
Regarding claims 4, 10 and 11, Malamud discloses the grounding connection including a ground wire (or a first electrical element) 212a connected to the ground terminal (or a second electrical element) 215.
However, Malamud does not disclose at least one first portion of the ground wire (the first electrical element) 212a being made from a resilient material that provides a spring force, the grounding connection being further configured such that the at least one first portion of the ground wire (the first electrical element) 212a is biased to extend toward the ground terminal (the second electrical element) 215.
On the other hand, Ditzig discloses a device 10 comprising a power source 80 to provide the energy to run an electronic counter means 70 and a spring contact plate 100 made of spring steel for holding the power source 80 that sits atop the spring contact plate 100 against the electronic counting means 70 completing the electronic counting means 70 circuit.
Although the device 10 of Ditzig, the e-vaping device of the instant invention and the e-vaping device of Malamud are three different electronic devices, these three devices have one thing in common, the use of an electrical connection and disconnection. While the e-vaping device of the instant invention uses a ground wire made from a resilient material that provides a spring force for the electrical connection, the e-vaping device of Malamud uses a ground wire 212a with a screw connection connector 210 for the electrical connection and the device 10 of Ditzig uses a spring contact plate 100 for the electrical connection. Also, it is common knowledge that many other electrical materials, contacts/terminals, springs, plated traces and pads and other electronic components can be used to provide electrical connection and disconnection.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the e-vaping device taught by Malamud such that it would have an electrical element made from a resilient material that provides a spring force as taught by Ditzig or the instant invention because it only deals with the use of different electrical materials to provide an electrical connection, but can be used with many other electrical materials to provide the electrical connection. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 5-8 and 12-13, claims 5, 7 and 12 recite that the grounding connection further includes an insulator, at least one first/second portion of the insulator is between the ground wire (or the ground terminal) and the grounding element, an end of the insulator extending outside of the section/the at least one first section.
Also, claims 6, 8 and 13 recite that the grounding connection is further configured such that the insulator is removable from the at least one first section to simultaneously cause the ground wire to contact the grounding element and complete the electrical circuit, the at least one first/second portion being made from a non-electrically conductive material.
However, because Malamud does not disclose “an insulator”, Malamud does not disclose all the limitations recited in claims 5-8 and 12-13.
On the other hand, Ditzig discloses a device 10 comprising an insulator 90, at least one portion of the insulator is between a power source 80 and spring contact plate 100, an end of the insulator 90 extending outside of the device 10 (see Fig. 1); wherein the insulator 90 is removable from the device 10 to simultaneously cause the spring contact plate 100 to contact the power source 80 and complete the electrical circuit, the at least one portion being made from a non-electrically conductive material.
Although the insulator 90 of Ditzig is not placed between the ground wire (or the ground terminal) and the grounding element as recited in claims 5-8 and 12-13, the insulator 90 of Ditzig and the insulator of the instant invention provides the same function, completing the electrical circuits of the device of Ditzig and the e-vaping device of the instant invention when the insulators are removed. It is common knowledge that the insulator is commonly placed between the power source and an electrical contact contacting the power source such as the insulator 90 of Ditzig. However, the electrical circuit of an electronic device can be broken any portion along the electrical circuit such as between the power source and an electrical contact as taught by Ditzig or between the ground wire (or the ground terminal) and the grounding element as taught by the instant invention. In either situation, the electrical circuit of the devices of Ditzig and the instant invention will be broken when the insulator is placed in the devices and the electrical circuit will be completed when the insulator is pulled out from the devices.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the device taught by Malamud such that it would have an insulator as taught by Ditzig or the instant invention to provide a completed electrical circuit when the insulator is pulled out of the device. Regarding placing the insulator between the ground wire (or the ground terminal) and the grounding element as taught by the instant invention, it only deals with rearrangement of essential part which does not affect or change the main function of the device. It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAE MOON HYEON whose telephone number is (571) 272-2093. The examiner can normally be reached Monday-Friday, 9:30 am - 6:00 pm.
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, Abdullah A Riyami can be reached at 571-270-3119. 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.
/hmh/
/Hae Moon Hyeon/Primary Examiner, Art Unit 2831