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 § 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 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PELEG et al. (US 2014/0014126)
With respect to claim 1, PELEG et al. discloses an electronic cigarette (Abstract) that vaporizes a liquid (Paragraph [0003]); comprising a heating element, 202, that is to be energized to convert a portion of a vaping material into vapor by elevating the temperature of said vaping material (Paragraphs [0029]-[0032]) and allows the viscosity to drop. The device further comprises an airflow passage through which air entraining the vapor flow (Figures 1-3; Paragraphs [0031]) and a control circuit, 102, that operates the heating element to heat the liquid during a puff and pass the liquid from the first thermal state to a second thermal state with a lower viscosity (Paragraphs [0023]-[0029]).
The liquid has a high viscosity at room temperature to reduce leakages and enable longer shelf life. The viscosity is reduced by heating the liquid in order to allow the liquid to be vaporized during inhalation (Paragraphs [0023]-[0027]).
The controller operates the heating element to also maintain a temperature after a puff for a few minutes (e.g., maintenance mode) that is above a certain level (e.g., 40-50 C ) to enable a better start for the next puff. (Paragraphs [0094]).
The maintained temperature of between 40 and 50 C represents the claimed second thermal state having relatively low viscosity. The high viscosity liquid that exists prior to heating represents the claimed first thermal state having a relatively high viscosity.
With respect to claim 5, PELEG et al. disclose that the controller operates the heating element to also maintain a temperature after a puff for a few minutes that is above a certain level (e.g., 40-50 C ) (e.g., greater than ambient, to less than vaporization temp (Paragraph [0044]) to enable a better start for the next puff. (Paragraphs [0094]).
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) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over PELEG et al. (US 2014/0014126) in view of FOURNIER et al. (US 2003/0154991).
With respect to claim 2, PELEG et al. discloses controller operates the heating element to also maintain a temperature after a puff for a few minutes (e.g., maintenance mode) that is above a certain level (e.g., 40-50 C ) to enable a better start for the next puff. (Paragraphs [0094]). PELEG et al. does not explicitly disclose the claimed timer circuit. FOURNIER et al. discloses an electrical smoking system (Abstract). The logic circuit cooperates with a timing circuit to precisely execute the activation and deactivation of the heating element with a predetermined cycle period (Paragraph [0056]). 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 timing circuit in the device of PELEG et al., as taught by FOURNIER et al. so that the heater can be maintained for a predetermined period in a precise manner.
With respect to claim 3, PELEG et al. discloses that controller operates the heating element to also maintain a temperature after a puff for a few minutes (e.g., maintenance mode) that is above a certain level (e.g., 40-50 C ) to enable a better start for the next puff. (Paragraphs [0094]). While it isn’t explicitly disclosed to reset the timer circuit, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention to reset the timing circuit after each puff, so that the temperature is maintained for a period of time in a precise manner.
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Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over PELEG et al. (US 2014/0014126) in view of MISHRA et al. (US 2016/0120225).
With respect to claim 4, the courts have generally held that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115. Thus, the vaping material and its associated properties (e.g., gelatinous in the first thermal state and liquid in the second thermal state) do not impart patentability to the claims.
Moreover, the courts have generally held that an "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
In the instant case, the operation of having the device in the first thermal state and then in the second thermal state, so that the effect on the vaporizing material is as claimed represents a manner of operation the device and does not impart patentability to the claims.
In the event that the phase transformation between states is required, MISHRA et al. discloses a vaporizing material for a cartridge of a vaporizer (Abstract). The vaporizing material is in a gelatin state (Abstract; [0007], [0021]), which helps to maintain the gel in a state at ambient temperature that prevents leakage, but allows the gel to form a liquid when heated (Paragraphs [0023], [0057]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use gelatin as the gelling agent of PELEG et al., as taught by MISHRA et al. so that the vaping material can be in a gel state while at ambient temperature (e.g., first thermal state) and then form a liquid when heated for vaporization (e.g, second thermal state) so that leakage can be prevented.
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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