DETAILED ACTION
Claims 1-9, submitted on May 22, 2024, are pending in the application and are rejected for the reasons set forth below. No claim is allowed.
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 . 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.
Improper Priority Claims
This application is a continuation of a prior application, which in turn is a continuation of several other prior-filed applications under 35 U.S.C. 120. Specifically, this application is a continuation of Application No. 18/530,143, which is a continuation of Application No. 17/002,606, which is a continuation of Application No. 14/467,565, which claims the benefit of provisional Application No. 61/879,281. The subject matter of the instant claims lacks written support in the prior-filed applications for the reasons discussed below.
To be entitled to the benefit of the filing date of any of these earlier-filed application, the instant application must be an application for a patent for an invention that is also disclosed in at least one of the prior applications; the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a). Accordingly, the disclosure of a prior-filed application must provide adequate written support for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a). Furthermore, the disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP1 201.07. If there is a continuous chain of copending nonprovisional applications, such as in the present situation, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) in order for the later-filed application to be entitled to the benefit of the earliest filing date. See MPEP 211.05 (Sufficiency of Disclosure in Prior-Filed Application).
The examiner has reviewed the disclosures of each of the prior-filed applications and cannot find written support for any of the following claim limitations:
An electronic inhalation device2
a mouthpiece
a power source
a vaporizing element
a cartridge containing a fluid that is inhalable when vaporized
the fluid comprising: a plurality of cannabinoids comprising at least THC or CBD, wherein the cannabinoids are present in at least 70% of the fluid in the cartridge
the fluid comprising: at least THC
wherein the THC is present in at least 10% of the fluid in the cartridge3
wherein the THC comprises at least 30% of the fluid in the cartridge
a plurality of terpenes comprising4 at least myrcene, limonene, and alpha-pinene
a fruit ester
said total amount of terpenes, terpenoids, and fruit ester are present in the fluid in an amount of at least 2% of said fluid
a sum of the amounts of myrcene, limonene, and alpha-pinene is at least 30% of total amount of terpenes and terpenoids in the fluid
wherein the sum of the amount of myrcene, limonene, and alpha-pinene is at least 25-90% of the total amount of terpenes and terpenoids present in the fluid
wherein said total amounts of terpenes, terpenoids, and fruit ester are present in the fluid in an amount of at least 2% of said fluid
These claim limitations are therefore new matter, and the instant application is an improper continuation under 35 U.S.C. 120. In order to be a proper continuation under 35 U.S.C., the disclosure of this application must be the same as the disclosure of the prior-filed application. Applicant is required do delete the new matter from the present application. Alternatively, applicant may rebut respond by citing, with reference to specific page/line numbers, where writ-ten support for these claim limitations may be found in the prior-filed applications.
Objection to The Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). The specification is required to disclose the subject matter of the claimed invention. As explained above, the written description of the invention in the specification completely lacks disclosure of the claimed inven-tion.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. As explained in detail above, the claims are replete with new matter. They therefore lack written description.
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 possi-ble 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 accompa-nied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejec-tion 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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,275,914 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘914 Patent claims an elec-tronic inhalation device comprising: a mouthpiece; a vaporizing element; and a cartridge contain-ing a fluid that is inhalable when vaporized, the fluid comprising: cannabinoids comprising at least one of THC, CBD or a combination thereof, wherein the cannabinoids are present in an amount of at least 20% by weight of the fluid; and terpenes including limonene and myrcene. Dependent claims 5, 9, and 14 of the ‘914 Patent further require alpha-pinene. The dependent claims also require different concentrations or the inclusion of a fruit ester. The difference between the instant claims and the claims at of the ‘914 Patent is in the concentration: the ‘914 Patent requires “the cannabinoids are present in an amount of at least 20% by weight of the fluid” (see, e.g., claim 1 of the ‘914 Patent). On the other hand, instant claim 1 requires that “the canna-binoids are present in at least 70% of the fluid in the cartridge.” In situations like this, where “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” See MPEP 2144.05(I). The examiner therefore concludes that the instant claims are prima facie obvious over the claims of the ‘914 Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Theodore R. Howell whose telephone number is (571)270-5993. The exam-iner can normally be reached Monday - Thursday, 8:00 am - 7:00 pm (Eastern Time). 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, Amy L. Clark can be reached at (571)272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THEODORE R. HOWELL
Primary Examiner
Art Unit 1628
/THEODORE R. HOWELL/ Primary Examiner, Art Unit 1628
August 31, 2026
1 Manual of Patent Examining Procedure (MPEP), Latest Revision November 2024 [R-01.2024]
2 The examiner acknowledges disclosure of an “electronic cigarette” in, e.g., the specification of application no. 14/467,565, filed Aug. 25, 2014, at p. 8. The “electronic inhalation device” of the instant claims appears, however, to be an attempt by applicant to claim a device that is broader in meaning than the original disclosure of “electronic cigarette.”
3 The examiner acknowledges written support for a composition “where the three terpenes (trio) account for about 10% of the terpenes (wt./vol.)” (see, e.g., the specification of application no. 61/879,281, filed Sept. 18, 2013, at p. 26), but “10%” terpenes is not the same thing as “10%” THC.
4 The examiner also acknowledges several instances of written support for a composition that “consists of” beta-myrcene, limonene, and alpha-pinene, among other things (see, e.g., the specification of the ‘281 application at p. 5). But as explained in MPEP 2111.03, “comprising” as used in the instant claims is substantially different than “consisting of” as used in the prior-filed applications.
Prosecution Insights