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 .
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 20 of U.S. Patent No. 12,108,792. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of an instant application is broader than and/or equivalent to claims 1,19, and 20 of Us Patent, as all the structural limitations of claim 1 of the instant application is disclosed, only difference in terminology, such as connecting member is equivalent to a biasing member of claim(s) 19 (and 20) of US Patent.
Claim 2 of the instant application is similar to claim 1, lines 20-23 of claim 7 of the US patent.
Claim 3 of the instant application are equivalent to claim 19 (resilient member is equivalent to biasing member) of the US patent (and it is to be noted that “short cord” is an optional limitation.).
Claim 4 of the instant application are equivalent to portion of claim 1 of the US Patent.
Claim 5 of the instant application is equivalent to claim 5 of the US patent.
Claim 6 of the instant application is equivalent to claims 25-27 of the US patent.
Claim 7 of the instant application is equivalent to claims 19, 20 of the US patent.
Claim 8 of the instant application is equivalent to claims 18, 22, 24 of the US patent.
Claim 9 of the instant application is equivalent to claim 18 of the US patent.
Claim 10 of the instant application are equivalent to claim 22 of the US patent.
Claims 11-15 of the instant application are equivalent to claims 28-30 of the US patent.
Claim Objections
Claims 2-8 are objected to because of the following informalities:
Claims 2-8, line 1, “An”, should be changed to -The-. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-5 and 7-106 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GUO et al. (US 2017/0049153) hereafter Guo.
Regarding claim 1, Guo discloses an aerosol provision cartridge 108/308 (figs. 40-41) for an aerosol provision system 100, 300, wherein the cartridge(see paragraph [0003] (atomizer) 100 (/300)comprises a refillable chamber 104 or 304 (figs. 40-41) for aerosol precursor material (see paragraph [0060], [0080], the chamber comprising an opening 310, 312 (a first opening 310 and a second opening 312), the opening allowing for access into the chamber 104 of 304, and for allowing the chamber to be refilled with aerosol precursor material, wherein the opening is covered by a cap (top tubular portion, and lower tubular portions) which is configured to be uncoupled from the chamber for allowing access to opening; (each opening is covered by a respective cap (top tubular portion, and lower tubular portions) which is configured to be uncoupled from the chamber for allowing access to the opening, wherein the cartridge is configured such that each cap, when coupled to the chamber, requires at least two different actions to be uncoupled from the chamber, see Paragraphs [0079]-[0081], especially, paragraph [0080] states that When the inhaler rotatably pivots away from the atomizer's center axis, the first opening 310 is exposed (see FIG. 41)), allowing a user to pour e-liquid into the chamber. The second opening 311 can be centrally located on the sheet of silicon, providing fluid communication and passage of vapor from inside of the base 306 upwards through the center channel of the inhaler 308 and then to the atmosphere. The inhaler can have a flat bottom surface that blocks this second opening 312 when the inhaler is rotatably pivoted open as shown in FIG. 41. In this way, air flow into the interior of the base is severely limited because the top ingress/egress is effectively sealed by the inhaler 308 disposed over on top of the second opening 311. The optional third opening 312 can be disposed on the sheet of silicon seal and allows passage of air from the chamber to the atmosphere. When the inhaler pivots open as shown in FIG. 41, the third opening 312 is exposed, so that when e-liquid is poured though the first opening 310, air exits from the chamber 304 through the third opening 312. In one general concept, the first opening can be disposed adjacent to the edge of the seal, such that when the user pivots the inhaler away from the chamber, the bottom of the inhaler covers over the vapor egress of the base and the first opening is on the visible side allowing the user to refill the chamber with liquid. The inhaler can be pivotably attached to the chamber 304 in various ways and paragraph [0081] states that the chamber has a top tubular portion rotatably engageable to a lower tubular portion; a plurality of engageable indents on said top tubular portion capable of engaging with the grooves of said inhaler; the top tubular portion comprises a strip hollowing with a first end and a second end; and the lower tubular portion comprises a protrusion engageable with said hollowing of said top tubular portion. When the inhaler is connected to the top tubular portion, and the user rotates the top tubular portion around the lower tubular portion and the protrusion from the lower tubular portion is aligned with the first end of the top tubular hollowing and pushes the inhaler on the lower tubular portion the top fill assembly is locked, and when and the protrusion from the lower tubular portion is aligned with said second end of said top tubular hollowing and rotates the inhaler the top fill assembly is opened allowing the user to fill the liquid container with liquid while preventing flooding, which means that rotation of the opening can be done by two (or more) actions),wherein the cartridge 108/308 is configured such that each cap (top tubular portion, and lower tubular portions), when coupled to the chamber 104 or 304 (figs. 40-41), requires at least two different actions to be uncoupled from the chamber);
wherein the cartridge further comprises: a connecting member (plurality of indents, which engage with grooves of the inhaler, see paragraph [0081]) connected between the cap and the chamber such that when the cap (top tubular portion, and lower tubular portions) is uncoupled from the chamber 104 of 304, the cap (top tubular portion, and lower tubular portions) is configured to remain attached to the chamber via the connecting member.
Regarding claim 2, Guo discloses, the cap top tubular portion, and lower tubular portions) is configured to dangle freely, yet remain attached to the chamber, in relation to the chamber when the cap is uncoupled therefrom (as discussed above. Regarding claim 3, Guo discloses, the connecting member (plurality of indents, which engage with grooves of the inhaler, see paragraph [0081]) connected between the cap and the chamber such that when the cap (top tubular portion, and lower tubular portions) comprises a resilient member (indents and grooves).
Regarding claim 4, Guo discloses, the cartridge 100 further comprises an aerosol generating component 202 and a retaining means (holder) 206 (within housing 206) for holding the aerosol generating component 202 inside the chamber 104 even when the cap has been uncoupled from the chamber.
Regarding claim 5, Guo discloses, the cartridge further comprises a mouthpiece 108.
Regarding claim 7, Guo discloses, the cartridge further comprises a biasing means discloses a biasing means (plurality of indents, which engage with grooves of the inhaler, see paragraph [0081]) for biasing one of the caps towards a position where the cap is coupled to the chamber) between the cap and the chamber for reducing the likelihood of the cap becoming uncoupled if momentarily knocked/touched by a user.
Regarding claim 8, Guo discloses, a body (of) 100/ 300 comprising an electrical power source (see paragraph [0010] and a circuit board (electric circuit connecting with heating element 102) for controlling the aerosol provision system; and the aerosol provision cartridge of claim 1, the body 100 is configured to be detachable from the cartridge.
Regarding claim 9, Guo, discloses the body 100/300 is configured to prevent the cap from being uncoupled from the chamber unless the cartridge is detached from the body.
Regarding claim 10, Guo, discloses the aerosol provision system comprises a body (of) 100, 300 to which the aerosol provision cartridge 108, 308 is attachable, wherein the cap for the first opening is configured to abut the body when the cartridge is attached to the body.
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 of this title, 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 6, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Guo in view of Foley et al. (2007/0096728 hereafter Foley.
Regarding claim 6, Guo discloses all the claimed limitations except for
the cartridge further comprises at least one viewing portion for allowing a user to observe the aerosol precursor material inside the chamber through the viewing portion.
Foley, paragraph [0020] discloses, the second chamber 3 also includes a flow indicator 36, formed as a thin flexible member disposed in a viewing portion 38 formed on the second chamber, or as part of a valve cap 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the cartridge further comprises at least one viewing portion for allowing a user to observe the aerosol precursor material inside the chamber through the viewing portion as taught by Foley in order to refill the fluid, before it empty out.
Regarding claims 11-15, Guo discloses all the structural limitations, as stated in claims 1-5 and 7-10 above, however, does not disclose the method steps of accessing a chamber for aerosol precursor material comprised in an aerosol provision cartridge for an aerosol provision system as stated in these claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow the method steps of accessing a chamber for aerosol precursor material comprised in an aerosol provision cartridge for an aerosol provision system as stated in these claims, in order to access a chamber for aerosol precursor material to operate the aerosol provision system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO 892.
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/HARSHAD C PATEL/Primary Examiner, Art Unit 2831
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