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 .
Election/Restriction
Applicant's election with traverse of Species-A in the reply filed on 9-1-26 is acknowledged. The traversal is found persuasive and the restriction requirement mailed July 1, 2026 is withdrawn.
Claim Objections
Claims 1-5, 11-13, and 16 are objected to because of the following informalities:
●claims 1, 3-5, and 13, “said” should be inserted after “each” (Ln12)
●claim 2, “opposite” should be inserted before “lateral” (Ln4)
●claim 11, “surface” (Ln4) should be amended to read “surfaces”
●claim 12, “said” should be inserted after “each” (Ln3)
●claim 16, “opposite” should be inserted before the second recitation of “lateral” (Ln4).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are: supporting elements in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 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.
Claim 1 is considered to be indefinite in that “the corresponding lateral surface” (Ln13) lacks antecedent basis and/or the antecedent basis is not clearly defined. Also, see the same in claim 3, line 3; claim 4, line 3; and claim 17, line 3.
Claim 1 is considered to be indefinite when referring to “said first pair of opposite lateral surfaces” (Lns8-9) in that it is unclear how many pairs are required since claim 1 first recites “at least” a first pair and then recites “said first pair” (only one pair) (Ln8-9). Also, see the same in claim 2, line 4, and claim 16, lines 3-4.
Claim 13 is considered to be indefinite in that “the corresponding flow channel” (Ln2-3) lacks antecedent basis and/or the antecedent basis is not clearly defined.
Claim 15 is considered to be indefinite in that “several” (Ln4) does not clearly state the number-value or numerical-range for the quantity of dyes present.
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.
(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, 3-6, 8-13, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeoung (KR-20212024406-A).
Claim 1: Jeoung teaches a flat-shaped consumable article for an aerosol generating device 1000, the flat-shaped consumable article extending along article axes and comprising:
●a tobacco substrate 200 defining at least a first pair of opposite lateral surfaces extending
along the article axes
●a support structure 150 comprising
●an outlet portion arranged successively with the tobacco substrate 200 along
the vertical article axis
●a substrate portion extending from the outlet portion along the vertical article
axis and configured to be engaged with said first pair of opposite lateral surfaces to maintain the tobacco substrate 200 together with the support structure 150.
The outlet portion comprising an airflow passage extending from the tobacco substrate 200 (flow is vertically upwards in Figure 1, for example, and reaches the tobacco substrate 200 before reaching the outlet portion.
The substrate portion comprising a pair of legs, each said leg being configured to extend along at least a part of the corresponding lateral surface. Each said leg comprising two protrusions and one position determining unit 152.
Note that the actual area within the support structure 150 may belong to either the outlet portion or the substrate.
See page 2, lines 33-38; page 3, lines 1-5; page 5, lines 25-39; page 6, lines 19-22; page 7, lines 10-25; the first of Figures 1, 2, and 3 annotated below illustrating flat surface and article axes; the second Figure 2 annotated below illustrating lateral surfaces; Figure (4a) annotated below illustrating the substrate portion(s) with and legs; and the second Figure 3 annotated below illustrating the outlet portion.
FIGURE 1
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FIGURE 2 FIGURE 3
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FIGURE 2
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FIGURE 4(a)
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FIGURE 3
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Claim 3: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein each said leg defines an internal surface (that facing the tobacco substrate 200) configured to be engaged with the corresponding lateral surface of the tobacco substrate 200. See page 5, lines 25-39; page 7, lines 10-25; and Figure 4(a) annotated above.
Claim 4: Jeoung teaches the flat-shaped consumable article according to claim 3, wherein the internal surface of each said leg defines a cross-sectional shape complementary to a cross-sectional shape of the corresponding lateral surface of the tobacco substrate 200 at position fixing units 213. See page 5, lines 25-39; page 7, lines 10-25; and Figure 3 annotated below.
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Claim 5: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein each said leg defines a tapered portion extending until a leg end and defining at the leg end a taper angle. See Figure 3 annotated below.
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Claim 6: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein the support structure 150 is made of one single piece as shown in Figure 3.
Claim 8: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein the support structure 150 comprises a flavoring agent. The aerosol generating device 1000 comprises a cartridge 130 under the support structure 150 and the tobacco substrate 200. The cartridge 130 contains an aerosol generating material having a flavoring agent therein. The aerosolized flow, with the flavoring agent, moves into the support structure 150 and the tobacco substrate 200. See page 3, lines 25-36; Figure 1. Also, the tobacco substrate 200 includes a tobacco medium 220 having a flavoring agent with the tobacco medium 220 being in the support structure 150. See page 6, lines 9-13.
Claim 9: Jeoung teaches the flat-shaped consumable article according claim 1, further comprising wrappers 211 and 210 wrapping the tobacco substrate 200 on a top and bottom (partially enclosing tobacco substrate 200) without at least a part of the support structure 150. See page 5, lines 25-39.
Claim 10: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein the outlet portion is hollow in that it is an airflow passage. See page 6, lines 19-22 and Figure 3.
Claim 11: Jeoung teaches the flat-shaped consumable article according to claim 2, wherein the tobacco substrate 200 comprises at least one flow channel extending along the vertical article axis (allowing air to travel through) and formed on at least one of the lateral surfaces of the second pair of opposite lateral surfaces (flow channel is through the tobacco substrate 200 by way of a compartment 214 which is on/against an internal surface of the lateral surfaces of the second pair of opposite lateral surfaces. See page 6, lines 19-39, and Figures 4(a).
Claim 12: Jeoung teaches the flat-shaped consumable article according to claim 11, wherein the outlet portion comprises at least two edges extending perpendicularly to the vertical article axis. See Figure 3 annotated below.
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Figure 4(c) illustrates that at least a part of one each said edge is configured to be in contact with the tobacco substrate 200.
Claim 13: Jeoung teaches the flat-shaped consumable article according to claim 12, wherein each said edge comprises a recess portion arranged to face the corresponding flow channel. See Figure 3 annotated below.
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Claim 18: Jeoung teaches the flat-shaped consumable article according to claim 10, wherein the outlet portion is empty in that it is an airflow passage. See page 6, lines 19-22 and Figure 3.
Claim 19: Jeoung teaches the flat-shaped consumable article according to claim 10. Jeoung teaches that the outlet portion comprises supporting elements arranged inside the outlet portion -- supporting the tobacco substrate upon a bottom and a side. See Figure 4(c) annotated below.
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With respect to claimed supporting elements, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the supporting elements. Jeoung teaches a structure for the supporting. Jeoung is thus considered to meet this limitation of the claim.
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.
Claims 2 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jeoung.
Claims 2 and 16: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein the tobacco substrate 200 further defines the second pair of opposite lateral surfaces extending along one of the article axes as discussed above with respect to claim 1. Jeoung does not teach that the second pair of opposite lateral surfaces is at least 5 times wider (claim 2) or 10 times wider (claim 16) than the first pair of opposite lateral surfaces. However, the relative dimensions between the first and second pair of opposite lateral surfaces to which one skilled in the art would consider is a function of, among other variables, the size of the aerosol generating device, the type of vaporizable material in the tobacco substrate, the allowed dimensions of the apparatus producing the tobacco substrate, and the consumers’ desired appearance of the aerosol generating device. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the relative dimensions between the first and second pair of opposite lateral surfaces to which one skilled in the art would consider based on known variables, such as those listed for example; and thus, the claimed relative dimensions cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claim 17: Jeoung teaches the flat-shaped consumable article according to claim 4, wherein the positions of the protrusions-and-units152 and of the units 213 may be reversed (protrusions-and-units152 on the tobacco substrate 200 and units 213 on the support structure 150). See page 6, lines 19-33. Upon this reversal, the cross-sectional shape of the internal surface of each said leg has a concave shape and the cross-sectional shape of the corresponding lateral surface has a convex shape. Jeoung does not specifically recite the shapes are rounded. See shapes in Figure 3. However, changes in shape (meaning herein that the concave and convex shapes are rounded at the edges where in Figure 3 of Jeoung the edges appear seemingly rounded) of a structure is a matter of design choice. Without a showing that the rounded shape is significant – it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided a different shape at the edges (meaning herein that the edges are surely rounded in Figure 3 and not just seemingly rounded) (MPEP 2144.04(IV)(B)) -- note that the seemingly rounded edges in Figure 3 appear so close to being rounded that properties of these edges essentially have the same as those of rounded edges. It is noted that the positioner 153 has rounded edges; and, one skilled in the art (before the effective filing date of the invention) having a rounded edge protrusion in one portion of the support structure 150 would recognized (and found obvious) that the other edges could also function when rounded.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jeoung, as applied to claims 1, 3-6, 8-13, and 18-19 above, and further in view of Gill (WO 2019/129844 A1).
Claim 7: Jeoung teaches the flat-shaped consumable article according to claim 1, wherein the support structure 150 is made of a material. Jeoung does not teach that the support structure comprises paper pulp. However, cartridges that comprise paper pulp are conventional and well-known in that art as demonstrated by Gill. Gill teaches a vapour generating device 1 comprising a cartridge 20 having a vaporizable substance 22 therein. The cartridge 20 comprises an electrically insulating and non-magnetic material such cellulose fibers (pulp) and paper (cellulose fibers in paper form). See the abstract; page 11, line 24, to page 12, line 2; and Figures 1 and 2.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Jeoung that the material of the support structure 150 comprises paper pulp in that such is conventional and well-known in that art, as demonstrated by Gill, and provides the benefit of having electrically insulating and non-magnetic properties.
Note that “injection moulded” (Ln2) refers to a method of production and it not considered to provide a structural limitation to the claimed consumable article.
Claims 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jeoung, as applied to claims 1, 3-6, 8-13, and 18-19 above, and further in view of Aller (US 2020/0113239 A1).
Claims 14 and 20: Jeoung teaches the flat-shaped consumable article according claim 1. Jeoung does not teach that the support structure 150 comprises at least one visual characteristic defining a flavor of the tobacco substrate 200.
Aller teaches an aerosol delivery article 100 comprising a cartridge 300 (having a support structure) containing a vaporizable material 324 (consumable material) which includes at least one visual characteristic (for example defining a flavor of vaporizable material 324). Aller teaches providing an index or guide, relating to the colors, to the user. Aller also indicates transparent and translucent walls. See paragraphs 28-29, 40, 64, and 67-68; and, Figure 3 and Figure 4.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Jeoung that the support structure 150 comprises at least one visual characteristic defining a flavor of the tobacco substrate 200, a suggested by Aller, in that such allows consumers options when buying and/or using -- given that index or guide may be provided to the consumer.
Jeoung does not teach that the support structure comprises paper pulp. However, cartridges that comprise paper pulp are conventional and well-known in that art as demonstrated by Gill. Gill teaches a vapour generating device 1 comprising a cartridge 20 having a vaporizable substance 22 therein. The cartridge 20 comprises an electrically insulating and non-magnetic material such cellulose fibers (pulp) and paper (cellulose fibers in paper form). See the abstract; page 11, line 24, to page 12, line 2; and Figures 1 and 2.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Jeoung that the material of the support structure 150 comprises paper pulp in that such is conventional and well-known in that art, as demonstrated by Gill, and provides the benefit of having electrically insulating and non-magnetic properties.
Note that “injection moulded” (Ln2) refers to a method of production and it not considered to provide a structural limitation to the claimed consumable article.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jeoung in view of Aller, as applied to claims 14 and 20 above, and further in view of Gill.
Claim 15: Jeoung teaches the flat-shaped consumable article according to claim 14. Jeoung does not teach wherein the support structure is made of an injection molded paper pulp material, and wherein said at least one visual characteristic is a color obtained by mixing the paper pulp material with one or several dyes during injection molding. However, cartridges that comprise paper pulp are conventional and well-known in that art as demonstrated by Gill. Gill teaches a vapour generating device 1 comprising a cartridge 20 having a vaporizable substance 22 therein. The cartridge 20 comprises an electrically insulating and non-magnetic material such cellulose fibers (pulp) and paper (cellulose fibers in paper form). See the abstract; page 11, line 24, to page 12, line 2; and Figures 1 and 2.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Jeoung that the material of the support structure 150 comprises paper pulp in that such is conventional and well-known in that art, as demonstrated by Gill, and provides the benefit of having electrically insulating and non-magnetic properties.
Note that the injection moulding limitation refers to a method of production and is not considered to provide a structural limitation to the claimed consumable article.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
●eCig-parts discusses the importance of not over-tightening an e-cartridge with a
heating device to avoid structural damage and injury – in the instant application
applicant indicates that cartridges can be damaged during insertion into a heating device;
●Reevell teaches cartridge 3, having consumable 41, for e-vaping device 2;
●Robinson teaches a cartridge for a volatizing device having a housing and smokable
material therein;
●Batista teaches about cartridge damage due to shearing forces -- in handheld aerosol
generating devices.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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, Phil 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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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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