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 . 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.
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.
Claims 4-8 and 14-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 recites the limitation “aligning the housing in a seat groove of the seat in a channel of the one of the plurality of flutes.” Since the flute is itself a channel, it is unclear whether the claim is merely stating that the housing is aligned with a seat groove in the flute or is meant to introduce an additional and separate channel within the flute in which the housing is aligned. A review of the specification and figures shows that the housing is aligned in the flute itself with no separate or additional channel. Examiner notes that the only instance in which the term “channel” is recited in conjunction with the flutes is in paragraph [0041] of the instant specification, wherein the flute is defined as a groove or channel itself. For examination purposes, the claim has been construed as reciting “aligning the housing in a seat groove of the seat in
Claim 5 recites the limitation “the channel.” Three different channels are previously recited, so it is unclear which channel is being referred to in this limitation. For examination purposes, the claim has been construed as reciting “the flute.”
Claim 8 recites the limitation “the channel.” Three different channels are previously recited, so it is unclear which channel is being referred to in this limitation. For examination purposes, the claim has been construed as reciting “the flute.”
Claim 11 recites the limitation “aligning the housing in a seat groove of the seat in a channel of the one of the plurality of flutes.” This limitation is unclear for the same reasons detailed above with respect to claim 4, and claim 11 has been interpreted in the same manner for examination.
Claim 18 recites the limitation “the channel.” Three different channels are previously recited, so it is unclear which channel is being referred to in this limitation. For examination purposes, the claim has been construed as reciting “the flute.”
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 1-18 of U.S. Patent No. 12,082,622 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instantly claimed invention are present in the claims of the reference patent, with only minor changes in phrasing and order in which the limitations are presented.
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.
The factual inquiries 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Garthaffner (US 5,024,242).
Garthaffner teaches method of holding a subassembly (20) of a smoking article (10), the method comprising: receiving the subassembly (20) in a seat of one of a plurality of flutes (124) on a face of a rotatable drum (120), and extending a resilient plunger (144) against the subassembly to urge the subassembly into contact with a rigid stop (142) (See Figures; col. 5, line 39 to col. 7, line 33). The subassembly and the plunger read on the instantly claimed housing and pusher, respectively. Regarding the limitation “the seat connected to a post having a first channel communicating with an aperture of the seat and a second channel communicating with the drum,” Garthaffner teaches that vacuum is applied from a core of the drum to the seat of the plurality of flutes in order to hold the subassembly (See Fig. 7; col. 5, lines 55-61; col. 6, lines 37-39). Fig. 7 of Garthaffner shows a post comprising a channel in communication with both the core and the seat to apply the vacuum, as shown below:
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Garthaffner does not expressly disclose that the smoking article is an e-vapor device. Garthaffner teaches that the drum, system, and method disclosed are useful in the manufacture of cigarette-like smoking articles (See Abstract and Background). While Garthaffner does not expressly disclose e-vapor devices, such devices are ubiquitous in the art and known to be cigarette-like smoking articles. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing that the cigarette-like smoking articles generally disclosed by Garthaffner would include e-vapor devices.
Regarding claims 2-3, Garthaffner teaches a coil spring (170) which biases the plunger toward the subassembly (See Fig. 7 and its description).
Regarding claims 4-5 and 8, the seat of Garthaffner is formed on a radially-movable member (126) which is movable within a pocket of the drum, the radially-movable member being biased radially outward (See Figs.7-10 and their descriptions).
Regarding claims 6-7 and 9, Garthaffner teaches that vacuum is applied to the flutes via passageways (136) to retain the subassembly (See Fig. 7; col. 5, lines 55-61; col. 6, lines 37-39).
Regarding claim 10, the stop (142) is fixed relative to the members (126) as shown in Fig. 7.
Regarding claim 11, the claim has the same steps as claim 1 but also adds a tagging step. Garthaffner teaches a step of tagging an overwrap (42) on the subassembly while it is held on the drum (See Fig. 8; col. 7, lines 7-23).
Garthaffner does not expressly disclose that the overwrap is a label, however one of ordinary skill in the art would understand the term “overwrap” to include wraps with logos or other useful information, such wraps being considered labels as claimed.
Claims 12-19 include the same limitations as claims 2-9 and are taught by Garthaffner, as detailed above.
Regarding claim 20, reversing the steps of a prior art process is prima facie obvious unless new or unexpected results are obtained. In this case, the applicant claims wrapping the label before removing the housing from the drum, while the Garthaffner method performs wrapping downstream from the drum. In both cases, the overwrap is applied to a housing and wrapped around it. This is a predictable result. Therefore the reversal of the steps of Garthaffner would have been obvious to one of ordinary skill in the art at the time of filing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARSON GROSS/Primary Examiner, Art Unit 1746