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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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, 3,10-11,17, 18, 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6,7, 9, 12 of U.S. Patent No. 12/114,704. Although the claims at issue are not identical, they are not patentably distinct from each other because: the claims of the present case define obvious variant of the parent case claims with only minor difference in wording.
Claims 2, 4-9, 12, 13-16, 20 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
None of the references discloses an inner circumferential length of the holding unit is the same as an outer circumferential length of the consumable before being pressed by the pressing unit, the device includes a band-shaped electrode extending from the heating unit, and wherein the band-shaped electrode extends from the outer surface of the pressing unit to the outside of the outer surface of the pressing unit in a state with the heating unit disposed on the outer surface of the pressing unit, wherein the consumable includes a first portion having a first hardness and a second portion having a second hardness, wherein the second portion is a different portion from the first portion in the insertion direction of the consumable, and wherein the second hardness is higher than the first hardness, wherein when the consumable is positioned at a desired position in the chamber, the consumable is positioned such that at least a part of the first portion is pressed against the inner surface of the pressing unit, wherein when the consumable is positioned at a desired position in the chamber, the consumable is positioned such that at least a part of the second portion is pressed against the inner surface of the pressing unit, wherein a length of the first portion of the
consumable in a longitudinal direction is less than or equal to a length of the inner surface of the pressing unit in the longitudinal direction, and wherein when the consumable is positioned at a desired position in the chamber, the consumable is positioned in the chamber such that the first portion of the consumable does not stick out from the inner surface of the pressing unit and also such that at least a part of the second portion is pressed against the inner surface of the pressing unit, the holding unit includes two pressing units facing each other, and wherein at least a portion of a distance between the inner surfaces of the two pressing units is shorter than a width of the consumable inserted into the chamber at a location disposed between the pressing units, wherein the chamber includes a first guide unit provided with a tapered surface that connects the inner surface of the chamber forming the opening to the inner surface of the pressing unit, wherein the heating unit includes a heating element and an electrical insulation member that covers at least one surface of the heating element, and wherein the electrical insulation member is disposed so as not to stick out from the outer surface of the holding unit in the longitudinal direction of the chamber, wherein the chamber is provided with a cylindrical non-holding unit between the opening and the holding unit, and wherein in a state with the consumable positioned at a desired position in the chamber, a gap between an inner surface of the non-holding unit and the consumable is less than or equal to 3.0 mm, the heating unit includes a first portion positioned on the opposite side from the opening and a second portion positioned on the opening side, wherein a heater power density of the second portion is higher than a heater power density of the first portion, or wherein a rate of temperature increase in the second portion is higher than a rate of temperature increase in the first portion, or wherein a heating temperature of the second portion is higher than a heating temperature of the first portion over any equal time, wherein in a state in which the consumable is positioned at a desired position in the chamber, the second portion covers the outer surface of the holding unit corresponding to at least 1/2 of the smokable substance included in the consumable in the longitudinal direction of the smokable substance, further comprising: a first portion that is partially pressed by the chamber; a mouthpiece; and a second portion positioned between the first portion and the mouthpiece.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG K DINH whose telephone number is (571)272-2090. The examiner can normally be reached M-F from 8:30 am - 5:30 pm.
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, Riyami A Abdullah can be reached at 571-270-3119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHUONG K DINH/Primary Examiner, Art Unit 2831
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