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 .
Status of the Claims
Claims 1-20 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0071] recites the MAC insert as element 37 when it should be element 32.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 9 should read: “a mechanical aerosol converter (MAC) portion upstream of the downstream end wall, the”
Appropriate correction is required.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-19 of U.S. Patent No. 10905159. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to electronic vaping devices comprising an outer tube/housing extending in a longitudinal direction; the heater configured to heat a formulation; and a mouth-end insert including, a downstream end wall having at least one outlet extending therethrough, the downstream end wall being planar at a first end, a cylindrical side wall extending from the downstream end wall in the longitudinal direction, at least a portion of the cylindrical side wall in the outer housing, a mechanical aerosol converter (MAC) portion upstream of the end wall, the MAC portion including at least one air passage extending therethrough, the MAC portion being disc shaped and contacting the cylindrical side wall on an inner surface thereof, and an internal cavity between the downstream end wall and the MAC portion, the downstream end wall having an inner surface shaped such that the internal cavity has a domed shape adjacent the downstream end wall.
The rejected claims differ from the conflicting claims in that the rejected claim 1 recites an “outer house” wherein the patent recites an “outer tube” and the rejected claim 1 recites “a heater in the outer housing”. However, the outer housing and outer tube clearly are the same items in accordance with each Applications disclosure and a dependent claim in U.S. Patent No. 10905159 recites the heater located within the outer tube, therefore each of the elements recited in rejected claim 1 are obvious over the conflicting claims.
Claim 1 is obvious over claims 1, 4, and 10.
Claim 2 is obvious over claim 2.
Claim 3 is obvious over claim 3.
Claim 4 is obvious over claim 4.
Claim 5 is obvious over claim 4 and 11-12.
Claim 6 is obvious over claim 4.
Claim 7 is obvious over claims 5.
Claim 8 is obvious over claims 1 and 10.
Claim 9 is obvious over claims 1 and 9-10.
Claim 10 is obvious over claim 10.
Claim 11 is obvious over claim 11.
Claim 12 is obvious over claim 12.
Claim 13 is obvious over claim 13.
Claim 14 is obvious over claim 14.
Claim 15 is obvious over claim 15.
Claim 16 is obvious over claim 16.
Claim 17 is obvious over claim 17.
Claim 18 is obvious over claim 18.
Claim 19 is obvious over claim 19.
Claim 20 is obvious over claim 20.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12011534. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to electronic vaping devices comprising an outer tube/housing extending in a longitudinal direction; the heater configured to heat a formulation; and a mouth-end insert including, a downstream end wall having at least one outlet extending therethrough, the downstream end wall being planar at a first end, a cylindrical side wall extending from the downstream end wall in the longitudinal direction, at least a portion of the cylindrical side wall in the outer housing, a mechanical aerosol converter (MAC) portion upstream of the end wall, the MAC portion including at least one air passage extending therethrough, the MAC portion being disc shaped and contacting the cylindrical side wall on an inner surface thereof, and an internal cavity between the downstream end wall and the MAC portion, the downstream end wall having an inner surface shaped such that the internal cavity has a domed shape adjacent the downstream end wall.
The rejected claims differ from the conflicting claims in that the rejected claim 1 recites an “outer house” wherein the conflicting claim recites an “outer tube” and the rejected claim 1 recites “a heater in the outer housing”. However, the outer housing and outer tube clearly are the same items in accordance with each Applications disclosure and a dependent claim in U.S. Patent No. 12011534 recites the heater located within the outer tube, therefore each of the elements recited in rejected claim 1 are obvious over the conflicting claims.
Claim 1 is obvious over claim 1.
Claim 2 is obvious over claim 3.
Claim 3 is obvious over claim 4.
Claim 4 is obvious over claim 5.
Claim 5 is obvious over claims 1 and 5.
Claim 6 is obvious over claim 5.
Claim 7 is obvious over claim 6.
Claim 8 is obvious over claim 1.
Claim 9 is obvious over claims 1 and 7.
Claim 10 is obvious over claim 8.
Claim 11 is obvious over claim 9.
Claim 12 is obvious over claim 1.
Claim 19 is obvious over claim 1.
Allowable Subject Matter
Claims 1-20 are rejected under non-statutory double patenting but would be allowable if the double-patenting rejection is overcome. The following is an examiner’s statement of reasons for indicating allowable subject matter:
No prior art alone or in combination with references discloses a limitation as recited in claim 1. Specifically, no prior art appears to disclose a MAC portion contacting the cylindrical side wall on an inner surface thereof, wherein the cylindrical side wall extends from the downstream end wall in the longitudinal direction, and an internal cavity located between the downstream end wall and the MAC portion comprising an inner surface shaped such that the internal cavity has a domed shape adjacent the downstream end wall.
Zhu et al. (US-20130263869-A1, as cited in the IDS dated 06/14/2024), directed to an electronic cigarette (i.e., electronic vaporizing device), discloses the electronic vaping device comprising:
An atomizing stem 10 (i.e., outer housing) extending in a longitudinal direction (Figure 1; [0019]-[0020]);
A heating wire 102 (i.e., heater) within the outer housing ([0021]-[0023]); and
A cigarette holder 80 (i.e., mouth-end insert) arranged on top of the outer housing (Figure 4; [0019]) including,
A downstream end wall having at least one outlet extending therethrough (see annotated Figure 1 provided by the Examiner below), the end wall being planar at a first end (Figure 1),
A cylindrical side wall extending from the downstream end wall in the longitudinal direction, at least a portion of the cylindrical side wall in the outer housing (the bottom portion of the mouth insert is within the housing) (annotated Figure 1),
A liquid blocker 70 (i.e., MAC portion) upstream of the downstream end wall and provided with a longitudinal hole 76 (i.e., air passage extending therethrough) (Figure 1 [0024]),
And an internal cavity between the downstream end wall and the MAC portion (Figure 1).
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Zhu differs from the instant invention in that Zhu does not explicitly disclose the MAC portion being disc shaped and contacting the cylindrical side wall on an inner surface thereof and the internal cavity having a domed shape adjacent the downstream end wall.
Cyphert et al. (US-20130319431-A1), directed to an electronic vaping device, discloses a disc shaped heating element 45 (i.e., “MAC” portion) comprising an end-cap aperture (i.e., cavity) between the downstream end wall and the MAC portion (Figure ; [0012]-[0013];[0019]). Refer to Figure 1 annotated by the Examiner provided below.
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Cyphert further discloses an air inlet, in the form of a hole or aperture, may be located in the external wall of the casing 15 allowing passage of ambient air into the first chamber 20 ([0024]).
Cyphert further discloses the MAC portion atomizes and vaporizes the fluid on the “fiber material 65” of the capillary wick ([0025]).
Cyphert further discloses a planar end and the MAC portion contacting a portion of the inner housing (Figure 1), but Cyphert differs from the instant invention in that the portion of the inner housing is not a cylindrical side wall extending from the downstream end wall in the longitudinal direction.
Furthermore, while Cyphert discloses a cavity in the same location as claimed, Cyphert differs from the instant invention in that Cyphert does not disclose an internal cavity comprising a domed shape adjacent the downstream end of the wall and further does not explicitly disclose the MAC portion comprising at least one air passage extending therethrough.
Shan (US-2007267032-A1, as cited in the IDS Dated 06/14/2024), directed to an inhalation device similar to devices for smoking cigarettes, discloses a device comprising a filter 136 with a plurality of through holes 138 ([0070]) and a domed cavity (Refer to Figures 14-15 provided below).
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While Shan discloses an internal cavity with the domed shape at the location claimed, Shan discloses a filter and does not explicitly disclose a MAC portion, therefore does not teach the internal cavity comprising an inner surface shaped such that the internal cavity has a domed shape and there would be no reason obvious to one of ordinary skill in the art to modify the device of any of the previously cited prior art with the domed cavity above a filter (instead of a MAC portion) as taught by Shan.
Thorens (US-20130306064-A1, as cited in the IDS dated 06/14/2024), directed to an electronic vaping device, discloses a closure member (i.e., MAC portion) located within a mouth end portion of the device (Figure 9; [0103]).
Thorens further discloses the MAC portion has a disc shape (Figures 1-9), however, Thorens differs from the instant invention in that Thorens does not explicitly disclose a MAC portion contacting a cylindrical side wall on an inner surface thereof since Thorens discloses the MAC portion located within the middle of the device and further does not teach a cavity comprising a domed shape adjacent the downstream end wall.
As such, no prior art appears to disclose or reasonably suggest an electronic vaping device comprising a mouth-end insert including a MAC portion contacting the cylindrical side wall on an inner surface thereof, wherein the cylindrical side wall extends from a downstream end in the longitudinal direction, and an internal cavity located between the downstream end wall and the MAC portion comprising an inner surface shaped such that the internal cavity has a domed shape adjacent the downstream end wall, as recited in claim 1 and therefore claim 1 is indicated as having allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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