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 .
Status of the Claims
Claims 1-20 are pending.
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) 1-14 and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20140373856 (Zuber hereinafter).
Regarding claims 1, 2 and 20, Zuber teaches an aerosol-generating system (Fig. 1), comprising:
an aerosol-generating device (11) with an electric heating element (8) ([0013]); and
configuring a porous body (2) which is made from a ceramic ([0026]), wherein ceramics are non-combustible, and a liquid retention medium (7) with an aerosol generating article (1),
a first end of the aerosol-generating article being formed in part by the porous body and the liquid retention medium being between the first end and the second end (see annotated Fig. 1, below),
the aerosol-generating article being selectively connectable to the aerosol-generating device ([0062]), the electric heating element (8) being in direct contact with the porous body (2) when the aerosol-generating article is connected to the aerosol-generating device (Fig. 1).
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Regarding the limitations, “the porous body being configured to absorb heat from the electric heating element and emit at least some of the absorbed heat into an airflow that is drawn into the first end and through a second end of the aerosol-generating article” these limitations are a result of the claimed porous body and the claimed article, and the normal and usual operation of the claimed article ([0018]) which are taught by Zuber. The courts have held that under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Regarding claim 3, Zuber teaches that the liquid retention medium includes an aerosol-forming substrate, specifically the aerosol-forming substrate is in a frangible capsule contained within the liquid retention medium ([0034]). The aerosol-generating article (1) is exposed to airflow during an operational use of the system ([0018]), and the aerosol-forming substrate is in a frangible capsule contained within the liquid retention medium (7) which is a large part of the aerosol-generating article, and thus the aerosol-forming substrate is exposed to the airflow during an operational use of the system.
Regarding claim 4, Zuber teaches that the liquid retention medium is directly connected to the porous body (annotated Fig. 1, above).
Regarding claims 5 and 7, Zuber teaches that the electric heating element (8) is penetrated and then embedded in the porous body (7), once the aerosol-generating article is connected to the aerosol-generating device ([0064]).
Regarding claims 6 and 10, Zuber teaches that the porous body (7) defines a cavity, or slit (23), to receive the electric heating element, once the aerosol-generating article is connected to the aerosol-generating device ([0064]).
Regarding claims 8, 9, 17, 18 and 19, Zuber teaches that an aerosol-forming substrate is in a frangible capsule contained within the liquid retention medium ([0034]). Zuber does not expressly teach that the liquid retention medium absorbs at least some of the aerosol-forming substrate once the frangible capsule is ruptured; however, given that the frangible capsule contains is ruptured during heating of the liquid retention medium ([0034]) and the liquid retention medium is designed to absorb liquid ([0038]-[0039]), it is inherent that the liquid retention medium absorbs at least some of the aerosol-forming substrate once the frangible capsule is ruptured. The courts have held that under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Regarding claims 11, 12 and 16, Zuber teaches that a first portion of the porous body is between the liquid retention medium and a distal-most end of the electric heating element once the aerosol-generating article is connected to the aerosol-generating device (see annotated Fig. 1, above), the liquid retention medium at least partially containing an aerosol-forming substrate, specifically the aerosol-forming substrate is in a frangible capsule contained within the liquid retention medium ([0034]).
Regarding claim 13, Zuber does not expressly teach that the liquid retention medium absorbs at least some of the aerosol-forming substrate once the frangible capsule is ruptured; however, given that the frangible capsule contains is ruptured during heating of the liquid retention medium ([0034]) and the liquid retention medium is designed to absorb liquid ([0038]-[0039]), it is inherent that the liquid retention medium absorbs at least some of the aerosol-forming substrate once the frangible capsule is ruptured. The courts have held that under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Regarding claim 14, Zuber teaches that the porous body (7) is pierceable by the electric heating element (8), once the aerosol-generating article is connected to the aerosol-generating ([0064] and Fig. 2).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zuber as applied to claim 1 above, and further in view of US 20110126848 (Greim hereinafter).
Regarding claim 9, Zuber does not expressly teach that the electric heating element is a susceptor.
Greim teaches an electrically heated smoking system including a heater for heating an aerosol forming substrate ([0018]), teaches that heating can be accomplished by inductive heating ([0055]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the heating in Zuber inductive heating, as suggested by Greim, which teaches inductive heating a reasonable alternative to other forms of heating such as resistive heating (Greim, [0053]) in an electrically heated smoking system, with a reasonable expectation of success and predictable results. It further would have been obvious to one of ordinary skill in the art to have made the heating element (8) a susceptor so that it could serve to heat the porous body (2) by induction heating.
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, 2, 5-9, 12, 14, 15, 17, 18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 6, 11, 13, 18 and 23 of U.S. Patent No. 11997776. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims contain each and every limitation of the rejected claims.
The rejection is nonstatutory because there are more limitations present in the conflicting claims and the limitations are in separate claims of the conflicting claims.
Claims 1, 2 of the instant application is taught by claim 4 of US 11997776.
Claim 5 of the instant application is taught by claim 13 of US 11997776.
Claim 6 of the instant application is taught by claim 5 of US 11997776.
Claim 7 of the instant application is taught by claim 5 of US 11997776.
Claim 8 of the instant application is taught by claim 23 of US 11997776.
Claim 9 of the instant application is taught by claim 5 of US 11997776.
Claim 12 of the instant application is taught by claim 23 of US 11997776.
Claim 14 of the instant application is taught by claim 13 of US 11997776.
Claim 15 of the instant application is taught by claims 6 and 8 of US 11997776.
Claim 17 of the instant application is taught by claim 23 of US 11997776.
Claim 18 of the instant application is taught by claim 23 of US 11997776.
Claim 20 of the instant application is taught by claim 11 of US 11997776.
Claims 1, 2, 6, 7, 10, 14, 15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 9, 10, 11, 13 and 15 of U.S. Patent No. 10952472. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims contain each and every limitation of the rejected claims.
The rejection is nonstatutory because there are more limitations present in the conflicting claims and the limitations are in separate claims of the conflicting claims.
Claim(s) 1 and 2 of the instant application is taught by claim 3 of US 10952472.
Claim(s) 20 of the instant application is taught by claim 9 of US 10952472.
Claim(s) 7 of the instant application is taught by claim 10 of US 10952472.
Claim(s) 6 and 10 of the instant application is taught by claim 11 of US 10952472.
Claim(s) 14 of the instant application is taught by claim 13 of US 10952472.
Claim(s) 15 of the instant application is taught by claim 15 of US 10952472.
Claims 1, 2, 5, 6, 7, 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 11, 12, 15 and 16 of U.S. Patent No. 10918135. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims contain each and every limitation of the rejected claims.
The rejection is nonstatutory because there are more limitations present in the conflicting claims and the limitations are in separate claims of the conflicting claims.
Claim(s) 1 and 2 of the instant application is taught by claim 3 of US 10918135.
Claim(s) 5 of the instant application is taught by claim 11 of US 10918135.
Claim(s) 6 of the instant application is taught by claim 12 of US 10918135.
Claim(s) 15 of the instant application is taught by claim 15 of US 10918135.
Claim(s) 7 and 14 of the instant application is taught by claim 16 of US 10918135.
Claims 1, 2, 5-8, 10, 12, 14, 15, 18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 8-11, 13-16 of U.S. Patent No. 10660368. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims contain each and every limitation of the rejected claims.
The rejection is nonstatutory because there are more limitations present in the conflicting claims and the limitations are in separate claims of the conflicting claims.
Claim(s) 1 of the instant application is taught by claim 14 of US 10660368.
Claim(s) 2 of the instant application is taught by claim 1 of US 10660368.
Claim(s) 5 of the instant application is taught by claim 11 of US 10660368.
Claim(s) 6 and 10 of the instant application is taught by claim 9 of US 10660368.
Claim(s) 7 of the instant application is taught by claim 8 of US 10660368.
Claim(s) 8, 12 and 18 of the instant application is taught by claim 13 of US 10660368.
Claim(s) 14 of the instant application is taught by claim 15 of US 10660368.
Claim(s) 15 of the instant application is taught by claim 11 of US 10660368.
Claim(s) 20 of the instant application is taught by claims 3 and 4 of US 10660368.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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