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 16-29 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.
Regarding claim 16, claim 16 contains the phrase: “an air blast is applied as air pressure to the first aerosol-generating article” on line 15th and 16th of the instant claim 16. It is not clear if this is the same “air pressure” on line 8th of the instant claim 16.
Claim 16 also contains the phrase: “the pressure difference” on line 17th of the instant claim 16. It is not clear if this is meant to refer back to a pressure difference because it seems “a pressure difference” was not recited anywhere in claim 16.
Claim 16 also contains the phrase: “the pressure difference is measured between both opposing first and second end faces of the first aerosol-generating article” on line 17th and 18th of the instant claim 16. It is not clear if this is meant to refer back to the first and second end faces of the first aerosol-generating article on line 9th and 10th of the instant claim 16.
Claim 16 contains the phrase: “determining the first air infusion value for the first aerosol-generating article, the air infusion value being determined” on line 7th and 8th of the instant claim 16. It’s not clear if “the first air infusion value” and “the air infusion value” are the same. Appropriate correction is required.
Claim 16 contains the phrase: “the air infusion value being determined by the equation (Pin-Pout)-100%/Pin, wherein Pin is an air pressure of between 5 millibars and 50 millibars applied at the first end face of the article and Pout is an air pressure detected at the second end face of the article” on line 7th and 9th of the instant claim 16. It’s not clear if “the article” is referred back to a first aerosol-generating article or a second aerosol-generating article. Appropriate correction is required.
Regarding claim 17, claim 17 contains the phrase: “a first continuous rod is provided as a first aerosol-generating article and wherein a second continuous rod is provided as a second aerosol-generating article, wherein the first continuous rod and the second continuous rod includes at least two aerosol-generating articles, preferably wherein the first continuous rod and the second continuous rod consists of two aerosol-generating articles”. It’s not clear if “a first aerosol-generating article” and “a second aerosol-generating article” recited in this instant claim 17 are the same as “a first aerosol-generating article” and “a second aerosol-generating article” recited in independent claim 16.
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 17 recites the broad recitation “a first resistance-to-draw RTD value of the first aerosol-generating article is measured in accordance with ISO 6565-2015”, and the claim also recites “more preferably wherein the RTD value is measured by applying a constant air flow to the first end face of the first aerosol-generating article and measuring the increase in air pressure at said first end face of the first aerosol-generating article due to the air resistance of the article “ 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.
Claim 18 recites the limitation " the individual first air infusion values of the first aerosol-generating articles" in the second line of the instant claim 18. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 20, 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 17 recites the broad recitation “wherein the first continuous rod and the second continuous rod includes at least two aerosol-generating articles”, and the claim also recites “preferably wherein the first continuous rod and the second continuous rod consists of two aerosol-generating articles“ 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.
Regarding claim 26, 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 29 recites the broad recitation “preferably wherein the predetermined first and second number of aerosol-generating articles is at least 50”, and the claim also recites “preferably at least 100, more preferably at least 1000 aerosol-generating articles“ 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.
Claim 27 recites the limitation " the size of the first perforations " in the second line of the instant claim 27. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 29, 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 29 recites the broad recitation “wherein the first aerosol-generating article comprises a first hollow tube section and a first substrate section”, and the claim also recites “preferably wherein the first aerosol-generating article further comprises a first filter section“ 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.
Claim Objections
Claim 29 is objected to because of the following informalities: claim 29 contains the phrase: “method step A) a first aerosol-generating article is provided”; however claim 16 recites “A) providing a first aerosol-generating article”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: claim 29 contains the phrase: “The method according to any claim 16”. Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/ Examiner, Art Unit 1747
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