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 (IDS) submitted on 06/28/2024, 10/23/2024, 06/30/2025 and 01/28/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of the Claims
In the amendment dated 06/28/2024, claims 1-20 are pending.
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 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-14 of U.S. Patent No. 15340032. Although the claims at issue are not identical, they are not patentably distinct from each other because
Current application 18757732
U.S. Patent No 15340032
1. An aerosol-generating system comprising:
a storage portion including, a housing configured to store an aerosol-forming substrate;
a housing including,
an upper wall, and
a lower wall opposite the upper wall and defining an inlet opening,
a vibratable element including,
a plurality of passages through which heated aerosol-forming substrate passes, each of the plurality of passages having an inlet and an outlet,
an actuator configured to vibrate the vibratable element and generate an aerosol, the vibratable element being planar and the actuator being in contact with the vibratable element such that the vibratable element, and
a piercing element extending from the inlet opening in the lower wall adjacent an inlet side of the vibratable element to the storage portion, the piercing element configured to pierce the storage portion and guide the aerosol-forming substrate from the storage portion to the vibratable element and the piercing element directly attached to the lower wall; and
a control system including a power source electrically coupled to the vibratable element, the vibratable element forming a resistive heating element in response to receiving power from the power source.
1.An aerosol-generating system comprising:
a liquid-storage portion including,
a housing configured to store a liquid aerosol-forming substrate;
…an atomizer housing including,
an upper wall,
a lower wall opposite the upper wall and defining an inlet opening,
…the vibratable element including,
a plurality of passages through which heated liquid aerosol-forming substrate passes, each of the plurality of passages having an inlet and an outlet, …,
an actuator configured to vibrate the vibratable element and generate an aerosol, the vibratable element being planar and … the actuator being a circular annular disc having an inner disc diameter, the inner disc diameter of the circular annular disc circumscribes the vibratable element,…
a piercing element extending from the inlet opening in the lower wall adjacent an inlet side of the vibratable element to the liquid-storage portion, the piercing element configured to pierce the liquid-storage portion and guide the liquid aerosol-forming substrate from the liquid-storage portion to the vibratable element and the piercing element directly attached to the lower wall; and
a control system including a power source electrically coupled to the vibratable element …, the vibratable element forming a resistive heating element in response to receiving power from the power source and heating the liquid aerosol-forming substrate.
2. the control system is configured to operate the resistive heating element so as to heat the aerosol-forming substrate to a desired temperature.
3. the vibratable element comprises: an outlet side opposing the inlet side.
4. each passage of the plurality of passages extend from the inlet side to the outlet side.
5. the actuator is configured to transmit vibrations to the vibratable element to the inlet side or the outlet side of the vibratable element.
6. the actuator comprises: a piezoelectric transducer.
7. the aerosol-generating system further comprises: a cartridge including the storage portion.
8. the aerosol-generating system is an electrically operated vaping system.
9. the vibratable element comprises a circular disc, and the circular disc defines the plurality of passages.
11. a capillary body extending from the storage portion.
12. wherein the inlet opening is configured to fluidly couple the storage portion to the vibratable element.
13. wherein the aerosol-forming substrate is drawn from the storage portion through the piercing element to the inlet side of the vibratable element by vibrations of the vibratable element.
14. wherein the piercing element is a cylindrical tube, a distal end the piercing element including an angled end.
15. the housing includes at least two sidewalls between the upper wall and the lower wall.
16. the housing further comprises a washer, the vibratable element directly coupled to a first side of the washer with an adhesive.
17. the actuator includes a circular annular disc having an inner disc diameter.
18. the inner disc diameter circumscribes the vibratable element.
19. a pair of o-rings including a first o-ring in direct contact with a top surface of the actuator and a second o-ring in direct contact with a second side of the washer.
20. wherein the first o-ring and the second o-ring are arranged opposite each other to hold the washer, the actuator, and the vibratable element together by pressure.
2. the control system is configured to operate the resistive heating element so as to heat the liquid aerosol-forming substrate to a desired temperature.
3. the vibratable element comprises: an outlet side opposing the inlet side.
3. each passage of the plurality of passages extending from the inlet side to the outlet side.
4. the actuator is configured to transmit vibrations to the vibratable element to the inlet side or the opposing outlet side of the vibratable element.
5. the actuator comprises: a piezoelectric transducer.
6. the aerosol-generating system further comprises: a cartridge including the storage portion.
7. the aerosol-generating system is an electrically operated vaping system.
8. the inner disc diameter of the circular annular disc circumscribes the plurality of passages.
9. a capillary body extending from the liquid-storage portion.
11. wherein the inlet opening is configured to fluidly couple the liquid-storage portion to the vibratable element.
12. wherein the aerosol-forming substrate is drawn from the storage portion through the piercing element to the inlet side of the vibratable element by vibrations of the vibratable element.
13. wherein the piercing element is a cylindrical tube, a distal end the piercing element including an angled end.
14. the atomizer housing includes at least two sidewalls between the upper wall and the lower wall.
1…. a washer,
a vibratable element directly coupled to a first side of the washer with an adhesive,
1. the actuator being a circular annular disc having an inner disc diameter.
1. the inner disc diameter circumscribes the vibratable element.
1. a pair of o-rings including a first o-ring in direct contact with a top surface of the actuator and a second o-ring in direct contact with a second side of the washer, the first o-ring and the second o-ring arranged opposite each other to hold the washer, the actuator, and the vibratable element together by pressure.
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 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 1 recites the limitation “the actuator being in contact with the vibratable element such that the vibratable element” in lines 12-13. The limitation is incomplete and does not recite the condition, function, or relationship that is intended to follow the phase “such that”. As a result, it is unclear what limitation is imposed on the vibratable element and the scope of the claim cannot be reasonably ascertained.
Claims 2-20 are rejected as being dependent on, and failing to cure the deficiencies of, rejected independent claim 1.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stedman US 20150352301 A1 in view of Watanabe US 20170050203 A1
Regarding claim 1, Stedman discloses
An aerosol-generating system (combo 310,40 and 44, see fig.12) comprising:
a storage portion (318, see fig.1) including, a housing (318, see fig.12) configured to store an aerosol-forming substrate (See para.0102 and abstract);
a housing (42, see fig.2) including, an upper wall (see upper wall in annotated fig. 12 below), and a lower wall (52, see fig.12) opposite the upper wall (see upper wall in annotated fig. 12 below), and defining an inlet opening (See inlet opening in annotated fig.12 below),
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Annotated fig.12 of Stedman
a vibratable element (vibratable membrane, see para.0068 and fig.12-13. See vibratable element in annotated fig.12 above) including,
a plurality of passages (apertures of the vibratable membrane, see para.0068 and fig.12) through which See para.0068, figs.12-13), each of the plurality of passages (each of the apertures of the vibratable membrane, see para.0068 and fig.12), having an inlet (inlet of the aperture on the rear face 58, see fig.2, 8, and 12-13) and an outlet (outlet of the aperture on the front face 54, see fig.2, 8 and 12-13),
an actuator (annular piezoelectric element, see para.0068 and fig.8 and 12. See actuator in annotated fig.12 above) configured to vibrate the vibratable element and generate an aerosol (See para.0068: “The membrane may be domed shaped and be vibrated by an annular piezoelectric element”), annular piezoelectric element, see para.0068 and fig.8) being in contact with the vibratable element (vibratable membrane, see para.0068 and fig.8, 12) such that the vibratable element (See 112(b) rejections above), and
a piercing element (314, see fig.12-13 and para.0103, 14 includes the hollow needle 316, a cap 324, a guide element 326, and a spring 328) extending from the inlet opening (see inlet opening in annotated fig.12 above) in the lower wall (52, see figs.12-13) adjacent an inlet side of the vibratable element (inlet side of the vibratable membrane, see para.0068) to the storage portion (318, see fig.12-13), the piercing element (314, see fig.12-13) configured to pierce the storage portion (318, see fig.12-13) and guide the aerosol-forming substrate from the storage portion (318) to the vibratable element (vibratable membrane) and the piercing element (314, see fig.12) directly attached to the lower wall (52, see fig.12-13, the guide element 326 of the needle assembly 314 directly attached to the lower wall 52); and
Stedman does not expressly disclose
heated aerosol-forming substrate;
the vibratable element being planar;
a control system including a power source electrically coupled to the vibratable element, the vibratable element forming a resistive heating element in response to receiving power from the power source.
Watanabe discloses a mist spraying device, comprising:
heated aerosol-forming substrate (See para.0030: “even when there is clogging attributable to an increase in viscosity due to drying of the cosmetic liquid remaining in the atomization part 8, warming by the heating element 12 decreases the viscosity of the cosmetic liquid and the clogging is resolved”);
the vibratable element (combo 6 and 12, see fig.3) being planar (See fig.3);
a control system (power source, see para.0030 and fig.3) including a power source (see para.0030) electrically coupled to the vibratable element (combo 6 and 12, see fig.3 and para.0030), the vibratable element forming a resistive heating element in response to receiving power from the power source (See para.0030-0031: “ The heating element 12 supplied with the electric power warms the atomization part 8 through the vibration plate 6”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shape of the “vibratable element being planar” and incorporate “the control system including a power source electrically coupled to the vibratable element, the vibratable element forming a resistive heating element in response to receiving power from the power source” as taught by Watanabe so as to have the “heated aerosol-forming substrate” as claimed. The planar vibratable element allows some of the atomized liquid to be expelled from the first nozzle apertures at a specific tilting angle and allow some of the atomized liquid to be expelled from the second nozzle apertures in a perpendicular direction when actuated by the actuator, so as to achieve a divergent spraying effect. In addition. The added control system allows “to control the particle size of the mist to be sprayed” (See para.0031 of Watanabe).
Regarding claim 2, Stedman in view of Watanabe further discloses the control system (power source of Watanabe, see para.0030 and fig.3) is configured to operate the resistive heating element (combo 6 and 12) so as to heat the aerosol-forming substrate to a desired temperature (See para.0030-0031of Watanabe).
Regarding claim 3, Stedman further discloses the vibratable element (vibratable membrane) comprises: an outlet side (54, see fig.2 and 13) opposing the inlet side (58, see fig.2 and 13).
Regarding claim 4, Stedman further discloses each passage of the plurality of passages (apertures of the vibratable membrane) extend from the inlet side (58, see fig.2 and 13) to the outlet side (54, see fig.2 and 13).
Regarding claim 5, Stedman further discloses the actuator (annular piezoelectric element, see para.0068) is configured to transmit vibrations to the vibratable element (vibratable membrane) to the inlet side or the outlet side of the vibratable element (inlet side of the vibratable membrane, see figs.12-13).
Regarding claim 6, Stedman further discloses the actuator comprises: a piezoelectric transducer (annular piezoelectric element, see para.0068).
Regarding claim 7, Stedman further discloses the aerosol-generating system further comprises: a cartridge (310, see para.107) including the storage portion (318, see para.0102: “the container assembly 312 includes a container 318”).
Regarding claim 8, Stedman further discloses the aerosol-generating system is an electrically operated vaping system (See abstract).
Regarding claim 9, Stedman further discloses the vibratable element (vibratable membrane) comprises a circular disc (see para.0068) and the circular disc (vibratable membrane) defines the plurality of passages (apertures of the vibratable membrane, see fig.13).
Regarding claim 12, Stedman further discloses the inlet opening (See inlet opening in annotated fig.12 above) is configured to fluidly couple the storage portion (318) to the vibratable element (vibratable membrane).
Regarding claim 13, Stedman further discloses the aerosol-forming substrate is drawn from the storage portion (318) through the piercing element (314) to the inlet side of the vibratable element (inlet side of the vibratable membrane) by vibrations of the vibratable element (see para.0068).
Regarding claim 14, Stedman further discloses the piercing element (314) is a cylindrical tube (314, see fig.12), a distal end the piercing element including an angled end (See fig.12-13).
Regarding claim 15, Stedman further discloses the housing (42) includes at least two sidewalls between the upper wall (See upper wall in annotated fig.12 below) and the lower wall (52, see fig.12).
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Annotated fig.12 of Stedman
Claims 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stedman in view of Watanabe as applied to claims 1 and 9, respectively, and further in view of Sasaki US20140151461A1
Regarding claim 10, the modification discloses the claimed limitations as set forth, except the circular disc is 2 mm thick and has a diameter of 15 mm.
Sasaki discloses an ultrasonic atomizing unit, comprising:
the circular disc is 2 mm thick and has a diameter of 15 mm (See para.0026: “the vibrating plate has a thickness of 0.02 to 2.0 mm and an outer diameter of 6 to 60 mm”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the circular disc of Stedman in view of Watanabe to be “2 mm thick” and have “a diameter of 15 mm” as taught by Sasaki so that vibrating plate can vibrate easily by the appropriate thickness and diameter.
Regarding claim 11, the modification discloses the claimed limitations as set forth, except a capillary body extending from the storage portion.
Sasaki discloses an ultrasonic atomizing unit, comprising:
a capillary body (4, see fig.1) extending from the storage portion (See para.0039).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the invention of Stedman in view of Watanabe to incorporate the “capillary body extending from the storage portion” as taught by Sasaki, in order for supplying a liquid to the vibrating plate effectively.
Claims 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stedman in view of Watanabe as applied to claim 1 and further in view of Von Hollen US 20190001366 A1
Regarding claim 16, the modification discloses the claimed limitations as set forth, except the housing further comprises a washer, the vibratable element directly coupled to a first side of the washer with an adhesive.
Von Hollen discloses an aerosol generator device, comprising:
the housing (26, see fig.2) further comprises a washer (12, see fig.1-4 and para.0065), the vibratable element (14, see para.0065) directly coupled to a first side of the washer (upper side of 12) with an adhesive (see para.0065: “. the mesh 14 may be attached to the base structure 12 by the epoxy layer”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the housing of Stedman in view of Watanabe to comprise the “washer, the vibratable element directly coupled to a first side of the washer with an adhesive” as taught by Von Hollen. Doing so provides an improved way of protecting and sealing the vibrating element (See abstract of Von Hollen).
Regarding claim 17, Stedman further discloses the actuator includes a circular annular disc (annular piezoelectric element, see para.0068) having an inner disc diameter (See annotated fig.12 above).
Regarding claim 18, Stedman further discloses the inner disc diameter circumscribes the vibratable element (See para.0068: “an annular piezoelectric element that circumscribes the apertures”).
Claims 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stedman in view of Watanabe, Von Hollen as applied to claim 18 and further in view of Hogan US20120111970 A1
Regarding claim 19, the modification discloses the claimed limitations as set forth, except a pair of o-rings including a first o-ring in direct contact with a top surface of the actuator and a second o-ring in direct contact with a second side of the washer.
Hogan discloses an aerosol generator, comprising:
a pair of o-rings (25 and 28, see fig.4) including a first o-ring (28) in direct contact with a top surface of the actuator (2, see fig.4) and a second o-ring (25) in direct contact with a second side of the washer (lower side of 3, see fig.4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the invention of Stedman in view of Watanabe to incorporate the “pair of o-rings including a first o-ring in direct contact with a top surface of the actuator and a second o-ring in direct contact with a second side of the washer” of Hogan. Doing so allows to “achieve consistent operation of the aerosol generator, with reduced risk of fatigue in the seal between the plate and the support washer, and a predictable plate vibration response to the applied electrical drive” (see para.0066 of Hogan).
Regarding claim 20, the modification discloses the claimed limitations as set forth, except the first o-ring and the second o-ring are arranged opposite each other to hold the washer, the actuator, and the vibratable element together by pressure.
Hogan further discloses the first o-ring and the second o-ring (25 and 28, see fig.4) are arranged opposite each other to hold the washer (3), the actuator (2), and the vibratable element (1) together by pressure (see para.0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the invention of Stedman in view of Watanabe to have “the first o-ring and the second o-ring are arranged opposite each other to hold the washer, the actuator, and the vibratable element together by pressure” as taught by Hogan. Doing so allows to “achieve consistent operation of the aerosol generator, with reduced risk of fatigue in the seal between the plate and the support washer, and a predictable plate vibration response to the applied electrical drive” (see para.0066 of Hogan).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 5657926 A discloses an ultrasonic atomizing device which is vibrating device for atomizing a liquid by the acoustic vibration generated with a vibrating assembly.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIFFANY T TRAN whose telephone number is (571)272-3673. The examiner can normally be reached on Monday - Friday, 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward Landrum can be reached on (571) 272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIFFANY T TRAN/ Primary Examiner, Art Unit 3761
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