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 .
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 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation “100 micrometres to 750 micrometres”, and the claim also recites “200 micrometres to 500 micrometres” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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, 3, and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 13-15 of copending Application No. 18/690439 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is taught by copending claim 1 and 15. Instant claim 3 is taught by copending claim 15. Instant claim 11 is taught by copending claim 8. Instant claim 9 is taught by copending claim 13. Instant claim 10 is taught by copending claim 13. Instant claim 11 is taught by copending claim 14. Instant claim 12 is taught by copending claim 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 1-3, 8-12, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over COUNTS et al. (EP 0640297) in view of TUO et al. (CN 112120290) and JOHN et al. (US 2016/0295922).
Counts teaches an aerosol-generating system (10) comprising an aerosol-generating device (11) comprising a housing having an air outlet (61) and an air inlet (50); an airflow channel fluidly connecting the air outlet with the air inlet (see figure 6); a heating element (62 in figure 6, 91 in figure 9) coupled to the housing and along the airflow channel; a cartridge receiving cavity (61) defined withing the housing and configured to receive a cartridge (12, 110) containing a tape (43, 71, 160); a cartridge (12, 110) received within the cartridge receiving cavity and the heating element in contact with the tape (col. 11 lines 57-58), the cartridge comprising the tape (43, 71, 160) extending from a first end to a second end; a rotatable supply reel (40) fixed within the cartridge; a rotatable take-up reel (41) fixed within the cartridge; and the first end of the tape fixed to the rotatable take-up reel and the second end of the tape fixed to the rotatable supply reel (see figure 7): a solid aerosol-generating substrate (col. 6 lines 40-50) disposed on the tape.
Counts is silent to a rotatable heating element.
Tuo teaches an aerosol-generating device (11) comprising a housing; an airflow channel fluidly connecting an air outlet (14) with an air inlet (see figure 6); a rotatable heating element (11, 12) coupled to the housing and along the airflow channel; a tape (3); the heating element in contact with the tape; a rotatable supply reel (15); a rotatable take-up reel (16); and the first end of the tape fixed to the rotatable take-up reel and the second end of the tape fixed to the rotatable supply reel (see figure 1).
It would have been obvious to one of ordinary skill in the art to modify the heating element of Counts to be a rotatable heating element because Counts teaches that the heater can be modified to have different shapes and embodiments (see figures 4, 6, 9, 13, 14, and 16). Additionally, Counts teaches that the heater may be made of ceramic or metal material (col. 8 line 52-col 9 line 20) and Tuo teaches that the heater may be made of ceramic or metal material (translation page 7).
Counts teaches solid aerosol- generating substrate comprises a tobacco flavor medium (col. 6 lines 40-41) but it silent to the composition of the medium.
John teaches a tape (41) comprising a solid aerosol- generating substrate comprising nicotine (para. 0072) and glycerol (para. 0067). It would have been obvious to one of ordinary skill in the art to try the tobacco flavor medium composition of John in the tape of Counts because that glycerol aids in aerosol generation (para. 0065) and that adding nicotine results in desired sensory characteristics (para. 0059).
Regarding claim 2, Tuo teaches the rotatable heating element comprises two or more heating surfaces (11, 12) disposed about a perimeter of the rotatable heating element.
Regarding claim 3, figure 1 of Tuo shows the rotatable heating element (11, 12) is coupled to the rotatable supply reel and the rotatable take-up reel.
Regarding claim 8, Counts shows in figure 7 that the heating element contacts and deflects the tape.
Regarding claim 9, Counts teaches a power supply (20) electrically coupled to the rotatable heating element.
Regarding claim 10, Counts teaches the heating element is configured to heat the aerosol-generating substrate to a temperature between about 400°C and about 500°C (col. 9 lines 50-52) which incorporates 200 degrees C. Counts teaches that the control circuitry activates the heater for an appropriate predetermined period of time (col. 11 lines 20-21); therefore it would have been obvious to one of ordinary skill in the art to program the control circuitry to heat the aerosol-generating substrate to a temperature of 200 degrees C within 300 milliseconds.
Regarding claim 11, Counts teaches that the tape comprises a tape layer and an aerosol generating substrate layer (col. 16 lines 12-14). Although Counts is silent to the thickness of the tape layer and aerosol generating substrate layer, it would have been obvious to one of ordinary skill in the art that a tape thickness in a range from about 1 micrometres to about 50 micrometres and an aerosol-generating substrate layer of from 100 micrometres to 750 micrometres would have been achieved through routine experimentation by varying the thickness to determine the optical smoking conditions.
Regarding claim 12, Tuo teaches rotating the rotatable take-up reel to rotate the rotatable heating element and align a heating surface with the solid aerosol-generating substrate; and heating the solid aerosol-generating substrate with the heating surface to form an aerosol in an inhalation airflow (trans. page 3).
Regarding claim 16, Counts teaches that the tape comprises a tape layer and an aerosol generating substrate layer (col. 16 lines 12-14). Although Counts is silent to the thickness of the tape layer and aerosol generating substrate layer, it would have been obvious to one of ordinary skill in the art that a tape thickness in a range from about 1.5 micrometres to about 25 micrometres and an aerosol-generating substrate layer of from 100 micrometres to 750 micrometres would have been achieved through routine experimentation by varying the thickness to determine the optical smoking conditions.
Regarding claim 17, Counts teaches that the tape comprises a tape layer and an aerosol generating substrate layer (col. 16 lines 12-14). Although Counts is silent to the thickness of the tape layer and aerosol generating substrate layer, it would have been obvious to one of ordinary skill in the art that a tape thickness in a range from about 5 micrometres to about 15 micrometres and an aerosol-generating substrate layer of from 200 micrometres to 500 micrometres would have been achieved through routine experimentation by varying the thickness to determine the optical smoking conditions.
Allowable Subject Matter
Claims 4-7, 13-15 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.
Regarding claims 4-7, and 14-15, the prior art documents do not teach or suggest that the rotatable heating element includes a heating position and a cleaning position.
Regarding claim 13, the prior art does not teach or suggest a rotating step which rotates the rotatable heating element to a heating position wherein the heater of the rotatable heating element contacts the solid aerosol-generating substrate
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA SZEWCZYK whose telephone number is (571)270-5130. The examiner can normally be reached Mon-Fri 10 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA SZEWCZYK/Primary Examiner, Art Unit 1741
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