DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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 pre-AIA the applicant regards as the invention. Claim 6 recites the limitation "the chassis”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, “the chassis” will be interpreted as “a chassis”.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gavrielov (US 2017/0042227).
Gavrielov [Fig. 1-4] teaches an apparatus for receiving smokable material to enable at least one component of the smokable material to be volatilized [0045], the apparatus comprising: a housing (70 and 72 as a unitary device) [0028], the housing having a first compartment (portion of apparatus above seal 35/40) and a second compartment (portion of apparatus below seal 35/40), the first compartment being a heating compartment for receiving smokable material in use, including a heater 14 for heating smokable material received in the first compartment in use [0045], and the second compartment being an electronics compartment and containing control circuitry 45 and power source [0030-0032], the first compartment and the second compartment being hermetically sealed from each other to minimize or prevent air or vapor flowing between the first compartment and the second compartment [0036]. Component 40 is interpreted as a divider wall and component 35 is interpreted as a seal for sealing at least a portion of the divider wall to the housing [0039].
Claims 1, 2, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Monsees (US 2015/0208729).
Monsees [Fig. 2] teaches an apparatus for receiving smokable material to enable at least one component of the smokable material to be volatilized [0111], the apparatus comprising: a housing 201, the housing having a first compartment and a second compartment, the first compartment being a heating compartment for receiving smokable material in use, including a heater 205 for heating smokable material 206 received in the first compartment in use, and the second compartment being an electronics compartment and containing control circuitry 212 and power source 211, the first compartment and the second compartment being hermetically sealed from each other to minimize or prevent air or vapor flowing between the first compartment and the second compartment [0112]. The wall of 214 is interpreted as a divider wall.
Claims 1, 2, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (US 2015/0189915).
Liu [Fig. 6-7; 0067-0076] teaches an apparatus for receiving smokable material to enable at least one component of the smokable material to be volatilized, the apparatus comprising: a housing, the housing having a first compartment 2 and a second compartment 1/8, and a divider wall between the first compartment and the second compartment, the first compartment being a heating compartment for receiving smokable material in use, comprising a heater 6 in the first compartment for heating smokable material received in the first compartment in use, wherein the heater is tubular, having a first end and a second end and a hollow central portion providing a heating chamber in which smokable material is received in use, air being able to flow through one end of the tubular heater and out of the other end of the tubular heater, and the second compartment being an electronics compartment and containing a power source, the first compartment and the second compartment being isolated from each other. It is evident that via the divider wall between the first compartment 2 and the second compartment 8, the first compartment and the second compartment are hermetically sealed from each other to minimize or prevent air or vapor flowing between the first compartment and the second compartment.
Claim Rejections - 35 USC § 103
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Monsees as applied to claim 2 above, and further in view of Gavrielov.
Monsees does not specifically teach at least one seal for sealing at least a portion of the divider wall to the house. However, this configuration is known in the art as taught by Gavrielov [0039] and would have been obvious to one of ordinary skill in the art to apply to the apparatus of Monsees to achieve predictable results, i.e. sealing between the compartments.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Monsees as applied to claim 2 above, and further in view of Griffith (US 2013/0255702).
The housing of Monsees is interpreted to read on the claimed chassis. The claims do not require a separate housing and chassis. A recess is not disclosed. Griffith teaches an e-cigarette wherein a component edge is received in a groove (recess) of a chassis to facilitate placement [Fig. 7F; 0160]. It would have been obvious to one of ordinary skill in the art to configure an edge of the divider wall Monsees to be received in a recess of the chassis to facilitate placement.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gavrielov as applied to claim 4 above, and further in view of Wu (US 2015/0208724).
Gavrielov as applied above teaches a seal between the divider wall and the housing (a chassis). A groove is not disclosed. However, providing a seal within a groove is well known in the art as taught by Wu [0024]. It would have been obvious to one of ordinary skill in the art to arrange the seal of Gavrielov in a groove of the divider wall to achieve the predictable result of more securely connecting the seal to the divider wall and subsequently providing a seal between the divider wall and the housing.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Gavrielov as applied to claim 7 above, and further in view of Qiuming (WO 2015/165083).
Gavrielov as applied above teaches a seal between the compartments but does not specify the remaining limitations. Qiuming teaches an e-cigarette wherein the heating wire (heater tail) connecting to heater 31 passes through the seal 51 in order to connect to the batter, as shown in Fig. 6-7. It would have been obvious to one of ordinary skill in the art to configure Gavrielov such that a heater tail passes through the seal between the first compartment and the second compartment and is connected to the power source within the second compartment to achieve the predictable result of electrically connecting the heater to the power source for vaporization of the smokable material.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gavrielov as applied to claim 7 above, and further in view of Alima (US 9,451,792).
Gavrielov does not teach the claimed configuration. Alima teaches a vaporizing device comprising a heat insulator 80 surrounding the heater for reducing heat loss from the heater to an exterior of the apparatus [Fig. 2-4]. It would have been obvious to one of ordinary skill in the art to apply this configuration to the device of Gavrielov for an improved vaporization as suggested by Alima [abstract].
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 2 above, and further in view of Wu (US 2015/0208724).
Liu as applied above teaches a divider wall and hermetically sealing the compartments from each other. A groove is not disclosed. However, providing a seal within a groove for sealing compartments from each other is well known in the art as taught by Wu [0024]. It would have been obvious to one of ordinary skill in the art to arrange a seal in a groove of the divider wall of Liu to achieve the predictable result providing a seal between the divider wall and the housing (chassis).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 2 above, and further in view of Griffith (US 2013/0255702).
Liu teaches the housing comprises a chassis [Liu Fig. 6] but a recess is not disclosed. Griffith teaches an e-cigarette wherein a component edge is received in a groove (recess) of a chassis to facilitate placement [Fig. 7F; 0160]. It would have been obvious to one of ordinary skill in the art to configure an edge of the divider wall of Liu to be received in a recess of the chassis to facilitate placement.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 7 above, and further in view of Qiuming (WO 2015/165083).
Liu as applied above teaches a seal between the compartments but does not specify the remaining limitations. Qiuming teaches an e-cigarette wherein the heating wire (heater tail) connecting to heater 31 passes through the seal 51 in order to connect to the batter, as shown in Fig. 6-7. It would have been obvious to one of ordinary skill in the art to configure Liu such that a heater tail passes through the seal between the first compartment and the second compartment and is connected to the power source within the second compartment to achieve the predictable result of electrically connecting the heater to the power source for vaporization of the smokable material.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 1 above, and further in view of Goggin (US 2016/0198771).
Liu teaches the housing has a first opening 3 to a heating chamber 5 through which smokable material can pass so as to be received within and removed from the heating chamber; the housing has a second opening 17 to the heating chamber; and the housing comprises a seal 10 for selectively covering the second opening [Fig 6]. A door is not disclosed. Goggin teaches a vaporizer wherein an outer body comprises a door to seal a cartridge within the device [0045]. It would have been obvious to one of ordinary skill in the art to replace the plug of Liu with a door for the housing, the door being movable between a first position in which the second opening is closed by the door and a second position in which the second opening is open, to achieve the predictable result of selectively covering and sealing the second opening.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claim 7 above, and further in view of Alima.
Liu does not teach the claimed configuration. Alima teaches a vaporizing device wherein a heat insulator 80 surrounds the heater 60 for reducing heat loss from the heater to an exterior of the apparatus [Fig. 2-4; col. 5, l. 21-24], which would have been obvious to one of ordinary skill in the art to apply to Liu for the same reason.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,268,240. Although the claims at issue are not identical as the ‘240 patent claims contain additional limitations not recited in the instant claims, they are not patentably distinct from each other because all of the instant limitations are recited in the ‘240 claims. All of the limitations of instant claim 1 are recited in claim 1 of the ‘240 patent. All of the limitations of instant claims 2-12 are further recited in claims 1-7 of the 849 patent.
Conclusion
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/ERIC YAARY/ Examiner, Art Unit 1755
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