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, 4-8, 10, 18, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of U.S. Patent No. 12016999 in view of Mironov et al. (WO 2015/117704).
Claims 1 and 3-6 of the ‘999 patent claim a fluid permeable heater assembly with an electrically conductive filament arrangement, base, solid aerosol-forming substrate on the base, and a thermally conductive material on a top side of the base between the conductive filament arrangement and the base all as claimed in the instant invention. The ‘999 patent differs only in that it does not claim the heater assembly as part of a cartridge comprising a cartridge body as in the instant claims.
Mironov et al. discloses a cartridge for use in an electrically operated aerosol-generating system, comprising cartridge 20 which itself comprises a housing 24, the housing containing two separate capillary materials 27, 28. A disc of a first capillary material 27 (aerosol-forming sheet) is provided to contact the heater element 36, 32 in use. A larger body of a second capillary material 28 is provided on an opposite side of the first capillary material 27 to the heater assembly. Both the first capillary material and the second capillary material retain liquid aerosol-forming substrate. The housing has an open end to which heater assembly 30 is fixed. Heater assembly 30 comprises substrate 34 (base) having an aperture 35 formed in it, a pair of electrical contacts 32 fixed to the substrate and separated from each other by a gap 33, and a plurality of electrically conductive heater filaments 36 (filament arrangement) spanning the aperture and fixed to the electrical contacts on opposite sides of the aperture 35.
It would have been obvious to one of ordinary skill in the art before the effective filing date that the fluid permeable heater assembly of the ‘999 patent be included in a cartridge having a housing as taught by Mironov et al. since such cartridges are notoriously well known in the art.
Regarding claim 8, Mironov et al. discloses that the cartridge housing 400 comprises a liquid containing capillary material such as a high retention material or high release material (HRM) 41 serving as liquid reservoir and directing liquid towards the heater 30 for evaporation at the heater (Page 27, lines 31-36).
Regarding claim 10, Mironov et al. discloses that the capillary material 22 is soaked in a liquid aerosol-forming substrate. In this example the aerosol-forming substrate comprises 39% by weight glycerine, 39% by weight propylene glycol, 20% by weight water and flavourings, and 2% by weight nicotine (Page 19, lines 13-20).
Regarding claims 18 and 19, Mironov et al. discloses that the filament arrangement may be an array of filaments, for example arranged parallel to each other. Preferably, the filaments may form a mesh. The mesh may be woven or non-woven (Page 2, lines 25-28).
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12016999. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the ‘999 patent includes all limitations of claims 1 and 8 of the instant invention in addition to further limitations including electrical contacts.
Allowable Subject Matter
Claims 2-3, 9, 11-17 and 20 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Mironov et al. (WO 2015/117704).
Mironov et al. discloses a cartridge for use in an electrically operated aerosol-generating system, comprising: cartridge 20 which itself comprises a housing 24, the housing containing two separate capillary materials 27, 28. A disc of a first capillary material 27 is provided to contact the heater element 36, 32 in use. A larger body of a second capillary material 28 (base) is provided on an opposite side of the first capillary material 27 to the heater assembly. Both the first capillary material and the second capillary material retain liquid aerosol-forming substrate. The structure of the capillary material forms a plurality of small bores or tubes, through which the liquid can be transported by capillary action (Page 6, line 32 - Page 7, line 10; Page 19, line 34 - Page 20, line 19; Figure 4). The housing has an open end to which heater assembly 30 is fixed. Heater assembly 30 comprises substrate 34, a pair of electrical contacts 32, and a plurality of electrically conductive heater filaments 36 (filament arrangement) spanning the aperture and fixed to the electrical contacts on opposite sides of the aperture 35 (Figures 3 and 4; Page 19, lines 13-25; Page 20, lines 23-25). The contacts 32 are separated from each other by insulating gap 33 and are formed from copper foil (Page 22, lines 21-28; Figure 8). The aerosol forming substrate may be a solid substrate. Ambient air may pass through one or several channels arranged in a solid aerosol-forming substrate (Page 11, lines 9-10). Mironov et al. discloses contacts 32, made of copper foil (thermally conductive material), are located between the filaments 36 and the capillary material 28 (base) but does not explicitly disclose that the contacts 32 are configured to conduct heat from the electrically conductive filament arrangement to the solid aerosol-forming substrate. Mironov et al. also does not disclose that the base defines an opening through the base and the aerosol-forming substrate is in the form of a layer of an aerosol-forming sheet arranged around the opening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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