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 .
Information Disclosure Statement
The information disclosure statement filed 6/23/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Document EP 3416507 has not been provided.
The information disclosure statement filed 6/23/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. Documents CN 215501324, CN 211510580, CN 112369689 are not in English and have no concise explanation of relevance.
Claim Rejections - 35 USC § 102
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.
Claims 1-10 and 12-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 113558296, with English machine translation).
Regarding claim 1, Zhang discloses an aerosol provision device for generating an aerosol from aerosol-generating material (see smoke extracting element 6 with tobacco section 1) comprising:
an article receptacle defining a heating zone configured to receive at least a portion of an aerosol-generating article comprising aerosol-generating material, the article receptacle being disposed at a first end of the device (see cigarette containing cavity 3 with heating element 5, Fig. 3);
a filter cavity arranged to receive at least a portion of a filter element, the filter cavity disposed at a second end of the device, the second end being opposite to the first end (opposite end of device has cavity 6-2-4 for filter 2 [0032]); and
a flow passage between the article receptacle and the filter cavity (see passage 6-2-1, Figs. 1-4).
Regarding claims 2 and 3, the flow passage is elongate and a tubular member (see Figs. 1-4).
Regarding claims 4 and 5, the passage narrows ([0010], see Figs. 1-4).
Regarding claim 6, the filter cavity comprises a shoulder (see inner diameter expanding section in Fig. 1 which forms an inner corner).
Regarding claim 7, Zhang discloses a converging portion (tapered/expanding structures, [0010]).
Regarding claims 8 and 9, the flow passage extends from article receptacle to the filter cavity along the longitudinal axis of the device (see Figs. 1-4).
Regarding claim 10, Zhang discloses a heating element (heating element 5).
Regarding claim 12, the heating tube/element is construed as defining part of the heating zone
Regarding claim 13, the article receptacle comprises the heating element (Fig. 3).
Regarding claim 14, Zhang discloses an aerosol provision system comprising:
an aerosol provision device for generating an aerosol from aerosol-generating material (see smoke extracting element 6 with tobacco section 1) comprising:
a receptacle defining a heating zone configured to receive at least a portion of an aerosol generating element comprising aerosol-generating material, the receptacle being disposed at a first end of the device (see cigarette containing cavity 3 with heating element 5, Fig. 3);
a cavity arranged to receive at least a portion of a filter element, the cavity disposed at a second end of the device, the second end being opposite to the first end (opposite end of device has cavity 6-2-4 for filter 2 [0032]); and
a flow passage between the receptacle and the cavity (see passage 6-2-1, Figs. 1-4); and
a consumable (see tobacco section 1 and filter section 2) comprising:
an aerosol generating element (tobacco section 1), and
a filter element (filter section 2).
Regarding claim 15, Zhang an aerosol generating element comprising:
aerosol generating material (see tobacco section 1); and
a filter element (filter section 2); wherein the aerosol generating element and the filter element are arranged to be separably insertable into the aerosol provision device (see Fig. 4; [0025]).
Regarding claim 16 and 17, the aerosol generating element and filter element are separate and discrete elements.
Regarding claims 18 and 19, Zhang discloses a junction between the tobacco and filter sections where the sections are separated along the junction (see Figs. 5-6; [0022]). The junction is construed as a region of weakness for the combined structure--shapes are matched with exposed filter segment 2-1 inserted into unfilled segment 1-1 ([0022]) and held by friction.
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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 113558296, with English machine translation) as applied to claim 1 above, and further in view of Lim (US 20220142249).
Regarding claim 11, Zhang discloses a heating element disposed on the outside of the tobacco material and does not disclose the heating element as protruding in the heating zone. In the same field of endeavor of aerosol-generating devices, Lim discloses heating elements can be provided in different configurations. Lim discloses a heating element can be a tube-type heating element that heats the outside of the cigarette ([0042,0045], Fig. 2) or a plate/needle/rod-type heating element that heats the inside of the cigarette ([0044-0046], Fig. 1; said heating elements protruding in the heating zone). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date to have substituted an insertion-type heating element for the outer heating element in Zhang since Lim, similarly directed towards an aerosol provision device, teaches that a rod or needle-type heating element that is inserted inside the cigarette is an art recognized alternative to heating elements provided on the outside of the cigarette ([0042,0044-0046], Fig. 1, 2). One would have been motivated to employ a conventional heating element type known to be suitable for heating a cigarette, said heating element allowing for heat to directly contact the aerosol generating material contained within the cigarette.
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.
Claim 1-10, 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of copending Application No. 18723448 (reference application) in view of Zhang (CN 113558296) and/or Ding (CN 113439877), both of record. Although the claims at issue are not identical, they are not patentably distinct from each other because Application '448 similarly claims an aerosol provision device comprising a receptable defining a heating zone configured to receive a portion of an aerosol generating article, a flow passage extending from the receptacle, a filter cavity, and the flow passage member is between the filter cavity and the receptacle (see claim 18 and claim 1 upon which claim 18 depends). Application '448 does not disclose the filter cavity receives at least a portion of a filter element; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the filter cavity to comprise a filter element since the term "filter cavity" implies the cavity is intended for a filter. Application '448 does not expressly disclose first and second ends for the receptacle and filter cavity positions; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the device with first and second ends as claimed since (1) claims 1/17 of '448 recite a flow path between a receptacle and a filter cavity and (2) it is conventional to configure smoking devices with elongate structures wherein air enters one end and exits the opposite end--see Zhang (CN 113558296) or Ding (CN 113439877), both of record.
As to claims 2-10 and 11-13, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the device with structure as claimed since Zhang discloses providing an elongate air passage connecting aerosol generating material to a filter element, said passage having a narrowed shape to provide a Venturi effect ([0010], Figs. 1-4); a cavity with shoulder to accommodate the filter shape (see Figs.); and a heating element provided on the outside of the heating zone to heat the material (see Figs. 1-4).
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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