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 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:
(A) 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;
(B) 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
(C) 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:
●thermal expansion element claims 16, 22, 29, 33
●resilient element claim 18
●heating element claim 22
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.
Claim(s) 19 is/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 19 appears incomplete in that a limitation does not follow the “and” in line 2.
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(s) 16-35 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-20 of U.S. Patent No. 11,998,054.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the instant claims and the claims of the patent are all directed to an electronic smoking device. Also, the following maps the instant claims with the claims of the patent:
Instant Claim Number Patent Claim Number
16 1 and 5
17 2
18 3
19 1
20 1 and 5
21 6
22 7
23 8
24 9
25 10
26 11
27 12
28 13
29 14 and 18
30 15
31 16
32 14
33 18
34 19
35 20
Claim(s) 16-18, 20, 22, 24, 27-30, and 33 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-20 of U.S. Patent No. 10,786,008.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the instant claims and the claims of the patent are all directed to an electronic smoking device. Also, the following maps the instant claims with the claims of the patent:
Instant Claim Number Patent Claim Number
16 1 and 5
17 2
18 3
20 1 and 5
22 7
24 9 and 10
27 13
28 14
29 15 and 19
30 16
19
Claim(s) 19, 21, 23, 25-26, 31-32, and 34-35 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,786,008 as applied to the claims 16-18, 20, 22, 24, 27-30, and 33 above – and further in view of claims 1-20 of U.S. Patent No. 11,998,054.
Claims 19 and 32, claims 1-20 of Patent’008 do not teach that the liquid flow passage is aligned with the longitudinal axis of the atomizer. However, claims 1-20 of Patent’054 (specifically, claims 1 and 14) teach that the liquid flow passage is aligned with the longitudinal axis of the atomizer. 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 claims 19 and 32 of Patent’008 that the liquid flow passage is aligned with the longitudinal axis of the atomizer as taught by claims 1 and 14 of Patent’054 to be conventional and well-known in the art – and for the benefits provided therein.
Claims 21 and 31, claims 1-20 of Patent’008 do not teach a third plate and a fourth plate having an adjustable spacing therebetween, wherein a second liquid flow passage is formed between the third and the fourth plates, the second liquid flow passage located between the first liquid reservoir opening and a second side end of the atomizer. However, claims 1-20 of Patent’054 (specifically, claims 6, 12, and 16) teach a third plate and a fourth plate having an adjustable spacing therebetween, wherein a second liquid flow passage is formed between the third and the fourth plates, the second liquid flow passage located between the first liquid reservoir opening and a second side end of the atomizer. 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 claims 21 and 31 of Patent’008 a third plate and a fourth plate having an adjustable spacing therebetween, wherein a second liquid flow passage is formed between the third and the fourth plates, the second liquid flow passage located between the first liquid reservoir opening and a second side end of the atomizer – as taught by claims 6, 12, and 16 of Patent’054 to be conventional and well-known in the art – and for the benefits provided therein.
Claims 23 and 34, claims 1-20 of Patent’008 do not teach that the liquid reservoir is a cylindrical sleeve, and wherein the first plate, the second plate, and the atomizer are located within the cylindrical sleeve of the reservoir. However, claims 1-20 of Patent’054 (specifically, claims 8 and 19) teach that the liquid reservoir is a cylindrical sleeve, and wherein the first plate, the second plate, and the atomizer are located within the cylindrical sleeve of the reservoir. 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 claims 23 and 34 of Patent’008 that the liquid reservoir is a cylindrical sleeve, and wherein the first plate, the second plate, and the atomizer are located within the cylindrical sleeve of the reservoir as taught by claims 8 and 19 of Patent’054 to be conventional and well-known in the art – and for the benefits provided therein.
Claims 25 and 35, claims 1-20 of Patent’008 do not teach that the atomizer is transverse to the longitudinal axis of the liquid reservoir. However, claims 1-20 of Patent’054 (specifically, claims 10 and 20) teach that the atomizer is transverse to the longitudinal axis of the liquid reservoir. 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 claims 25 and 35 of Patent’008 that the atomizer is transverse to the longitudinal axis of the liquid reservoir as taught by claims 10 and 20 of Patent’054 to be conventional and well-known in the art – and for the benefits provided therein.
Claim 26, claim 12 of Patent’008 teaches instant claim 26.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: (1) Borkovec US 11,202,471 teaches a smoking device having capsule reservoir 78; (2) Modine teaches a bimetal component of a smoking device related to air admission; and (3) Misra discusses electronic cigarettes having a battery, heating element, and liquid solution delivered from a reservoir – and toxicity risks.
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.
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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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