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.
Claims 4 are 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.
The term “in the vicinity” in claim 4 is a relative term which renders the claim indefinite. The term “in the vicinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
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Claims 1, 6, 11-20, 22-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7 and 9-17 of U.S. Patent No. 12,484,638. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claims 1, 6, 11 and 17, U.S. Patent No. 12,484,638 claims a metal housing for an aerosol provision device, the metal housing comprising:
a printed circuit board mounted within the metal housing (Claim 1)
radiating conductor element (Claim 1), fully enclosing the printed circuit board (Claim 9);
a first contact spring providing a first electrical connection between a first connection point on an inside of the metal housing and a ground connection of the printed circuit board; a second contact spring providing a second electrical connection between a second connection point on the inside surface of the metal housing and an antenna signal output for providing an antenna signal for transmission by the metal housing; and a radiating conductor element extending from a first surface element to a second surface element, wherein the first connection point and the second connection point points are provided on the radiating conductor element (Claim 1)
The inside of the metal housing is the radiating conductor element. Thus, the first connection point is on an inside of the radiating conductor element and an antenna signal output. The ground connection on the printed circuit board represents the claimed signal output on the circuit board.
With respect to claim 12, U.S. Patent No. 12,484,638 claims that the radiating conductor element is elliptical (Claim 2).
With respect to claims 13-15, U.S. Patent No. 12,484,638 claims a signal generating circuit that communicated with a mobile communications device via Bluetooth (Claims 15-17). The circuit itself represents the claimed “module”.
With respect to claim 16, The ground connection on the printed circuit board represents the claimed signal output on the circuit board (See rejection of claim 1) and thus, the circuit is on the circuit board.
With respect to claims 18-20 are rejected by claims 7, 10 and 11 of U.S. Patent No. 12,484,638. Specifically, U.S. Patent No. 12,484,638 claims that the housing is for an electronic smoking article; an aerosol providing device comprising the housing as claimed in claim 1 and an electronic smoking article comprising the aerosol provisioning device of claim 10.
With respect to claim 22, U.S. Patent No. 12,484,638 claims a method for enabling transmitting via a metal housing, the method comprising: inserting a printed circuit board into the metal housing for an aerosol provision device such that a first contact spring of the printed circuit board provides an electrical connection between a first connection point on an inside of the metal housing and a ground connection of the printed circuit board, and a second contact spring of the printed circuit board provides an electrical connection between a second connection point on the inside surface of the metal housing and an antenna signal output for providing the metal housing with an antenna signal for transmission by the metal housing, wherein the metal housing comprises a radiating conductor element extending from a first surface element to a second surface element, wherein the first connection point and the second connection point points are provided on the radiating conductor element, and wherein a distance between the first surface element and the second surface element is at least one quarter of a wavelength of the antenna signal for transmission. (Claim 12)
The inside of the metal housing is the radiating conductor element. Thus, the first connection point is on an inside of the radiating conductor element and an antenna signal output. The ground connection on the printed circuit board represents the claimed signal output on the circuit board.
With respect to claim 23, U.S. Patent No. 12,484,638 claims matching an impedance between an antenna signal generating circuit (e.g., output) and the metal housing (Claim 13).
With respect to claim 24, U.S. Patent No. 12,484,638 claims adjusting the impedance matching (Claim 14).
With respect to claim 25, U.S. Patent No. 12,484,638 claims generating the antenna signal output for transmission (Claim 15).
With respect to claim 26, U.S. Patent No. 12,484,638 claims that the transmission is Bluetooth (Claim 16).
With respect to claim 27, U.S. Patent No. 12,484,638 using the signal for communication with a mobile communications device (Claim 17.
With respect to claim 28, U.S. Patent No. 12,484,638 claims that the signal is for locating the device (Claim 18).
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, 2, 7, 13-20, 22 and 25-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MARION et al. (US 2016/0261021).
With respect to claims 1 and 19, MARION et al. discloses an antenna for an aerosol delivery device (Abstract) and an aerosol delivery device comprising the same (as required by claim 19). The device includes a housing, 206, 304 (Paragraph [0067], [0068], [0031], [0062]; Figure 3); a circuit board, 308, mounted within the housing (Paragraphs [0062], [0054]; Figure 4). The inner wall of the housing, encloses the circuit board (Figure 4), and radiates electromagnetic radiation generated by the antenna to drive the outer body to radiate, thereby producing a dipole effect, and resonate the housing to act as an antenna (Paragraphs [0060]-[0064], Abstract). Thus, the inner wall of the housing represents the claimed radiating conductor given its function of driving the outer wall in resonance to act as an antenna. The housing further comprises an antenna wire connected to the battery (e.g., electrical connection to the battery) (Paragraph [0062]) and then to the inner wall (e.g., electrical connection to a first connection point on an inside of the radiating conductor element) (Paragraphs [0062] and [0068]; Figure 4), via the control component of the circuit board to electrically resonate in a manner that forms an antenna (e.g., the electrical connection is on the circuit board as an antenna signal output).
With respect to claim 2¸ MARION et al. discloses that the housing operates as a monopole antenna (Paragraphs [0062], [0063]; Figures 4 and 5).
With respect to claim 7¸ MARION et al. discloses that the housing an antenna are electrically resonant and tightly coupled and may form a dipole antenna (e.g., matching circuit) (Paragraphs [0060], [0068]; Abstract).
With respect to claim 11, MARION et al. discloses that the radiating conductor element is the inner wall of the housing (Figure 4; See rejection of claim 1 above). This inner wall extends to the end surfaces of the inner wall to connect to objects 314 and 302 (Figure 4).
With respect to claims 13-16, MARION et al. discloses that the device further comprises a communication interface (e.g., communication module) as part of the circuit board(Paragraphs [0055], [0056]) including an antenna and supporting hardware for communicating with a remote device (e.g., mobile phone) using Bluetooth or Wi-Fi.
With respect to claim 17, MARION et al. discloses that the housing is a metal housing (Paragraph [0068]).
With respect to claims 18 and 20, MARION et al. discloses that the housing is for an electronic smoking article (Paragraph [0002]).
With respect to claim 22, MARION et al. discloses an antenna for an aerosol delivery device (Abstract) and an aerosol delivery device comprising the same (as required by claim 20). The device includes a housing, 206, 304 (Paragraph [0067], [0068], [0031], [0062]; Figure 3); a circuit board, 308, mounted within the housing (Paragraphs [0062], [0054]; Figure 4). The inner wall of the housing, encloses the circuit board (Figure 4), and radiates electromagnetic radiation generated by the antenna to drive the outer body to radiate, thereby producing a dipole effect, and resonate the housing to act as an antenna (Paragraphs [0060]-[0064], Abstract). Thus, the inner wall of the housing represents the claimed radiating conductor given its function of driving the outer wall in resonance to act as an antenna. The housing further comprises an antenna wire connected to the battery (e.g., electrical connection to the battery) (Paragraph [0062]) and then to the inner wall (e.g., electrical connection to a first connection point on an inside of the radiating conductor element) (Paragraphs [0062] and [0068]; Figure 4), via the control component of the circuit board to electrically resonate in a manner that forms an antenna (e.g., the electrical connection is on the circuit board as an antenna signal output).
MARION et al. further discloses methods for forming and assembling the device (Paragraphs [0005], [0067]) comprising positioning the control component (e.g., circuit board) and antenna into the housing of the device (Paragraphs [0067]-[0069]) such that the electrical connection (noted above) is made and can be used as noted above.
With respect to claims 25-27¸ MARION et al. discloses generating an antenna signal output for transmission (Paragraph [0060], [0055]) to a mobile phone (e.g., mobile communications device), via Bluetooth or Wi-Fi signal (Paragraph [0056]).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARION et al. (US 2016/0261021) in view of ALARCON et al. (US 2016/0371437).
With respect to claim 6¸ MARION et al. does not explicitly disclose the claimed contact spring.
ALARCON et al. discloses that electrical connection can be made by spring-loaded pressing arm (Paragraph [0061]; Figure 5). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a spring loaded pressing arm as the antenna of MARION et al., so that it can ensure electrical contact with the radiation conductor element.
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Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARION et al. (US 2016/0261021) in view of FERNANDO et al. (US 2015/0359264)
With respect to claim 12, MARION et al. discloses that the cross-section of the housing is substantially tubular or cylindrical shaped (Paragraph [0031]) but does not explicitly disclose that it is substantially elliptical shaped.
FERNANDO et al. discloses that the cross section is substantially elliptical or cylindrical (Paragraph [0107]). Thus, cylindrical and elliptical cross-sectional shapes and are obvious variant, alternate expedient shapes. One having ordinary skill in the art would select an elliptical cross section for the housing to provide the desired aesthetic look or feel when holding.
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Claim(s) 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARION et al. (US 2016/0261021) in view of LEADLEY et al. (US 2018/0160733).
With respect to claims 23 and 24, MARION et al. does not explicitly disclose matching and adjusting the impedance of the antenna signal output. LEADLEY et al. discloses an electronic vaporizer (Abstract) wherein the signal from the communication interface (e.g., antenna signal output of MARION et al.) is impedance matched with the heater so that the proper transfer of signals can be supported between the communications interface and the heater acting as an antenna. This is done with an LC network (Paragraph [0041]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to match the impedance of the housing of MARION et al. with the signal output, as taught by LEADLEY et al. so that so that the proper transfer of signals can be supported between the communications interface and the housing acting as an antenna. Moreover, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention to adjust the impedance so that they do match in the event they do not initially.
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Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARION et al. (US 2016/0261021) in view of BLACK (US 2016/0081393).
With respect to claim 28, MARION et al. does not explicitly disclose that the antenna signal is used for locating the device. BLACK discloses a personal vaping device (Abstract) wherein the communication I/O interface has an antenna for providing GPS (Paragraph [0039]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the antenna of MARION et al. with GPS, as taught by BLACK so that the device’s position can be located.
Allowable Subject Matter
Claims 3-5 and 8-10 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.
With respect to claim 3, MARION et al. does not disclose the claimed slot, per se.
LI (CN 110380219; provided in IDS filed 3/29/2024) appears to show slots in the radiating conductor, 17 and 19 (Figures 1 and 2). However, these are features on end part, 21, and not slots within the radiating conductor, per se.
With respect to claim 8, while MARION et al. discloses that the resonance is tightly coupled (Abstract), MARION et al. does not indicate that the matching circuit is adjustable in any way, per se.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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