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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 20 of U.S. Patent No. 12,127,588. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of an instant application is equivalent to claims 1, 10 and 12 of Us Patent, as all the structural limitations of claim 1 of the instant application is disclosed by the claims 1, 2, 10 and 12 of US Patent.
Claim 2 of the instant application is similar to claim 1, lines 20-23 of claim 1 of the US patent,
Claims 3-17 of the instant application are equivalent to claims 2-16 the US patent.
Claim 18 of the instant application are equivalent to claim 20 the US patent.
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 11-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Regarding claim 11, lines 1-2, recites, “a control member coupled to the at least one member of the mechanism”. It is not clear that this “a control member 105 coupled to the at least one member 103, 104 of the mechanism” is same or different that of defined in claim 1, line 15, therefore it is vague and indefinite.
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 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LI, Yonghai et al. (EP 3228199) hereafter LI.
Regarding claim 1, LI, discloses an aerosol-generating device 10 for heating an aerosol-generating article 20, the aerosol-generating device comprising: a housing 100 having an opening 101 (FIG. 1); a chamber 102 disposed within the housing 100, and configured to receive at least a portion of the aerosol-generating article 20 through the opening 101 in the housing 100; a heater assembly 103, 104 disposed within the housing 100, and comprising a heating element 103, 104 configured to heat at least a portion of the chamber 102; a mechanism 105, 106, 103, 104, 115, 117, 118 comprising at least one member 103, 104 disposed at or proximate to the opening 101 of the housing and configured to move between: a first position (fully open position), in which the aerosol-generating article 20 can be inserted into the chamber 102 via the opening 101, and a second position (intermediate position first and third positions, which is filly closed position), in which the at least one member 103, 104 has reduced a size of the opening relative to a size of the opening when the at least one member is in the first position; and a control member 105 coupled to the at least one member 103, 104 of the mechanism such that actuation of the control member 105 causes the at least one member 103, 104 of the mechanism to move between the first position and the second position, the at least one member is configured to move from the first position to the second position in a first direction, and wherein the control member is configured to move in a second direction to cause the at least one member to move from the first position to the second position, the second direction being different from the first direction.
Regarding claim 2, LI, discloses at least one guide track (of hook) 115 along which the at least one member 103, is configured to slide when the at least one member 103 moves between the first position and the second position.
Regarding claim 3, LI, discloses the at least one member 103, 104 underlies an inner surface of a wall of the housing 100.
Regarding claim 4, LI, discloses the mechanism 105, 106, 103, 104, 115, 117, 118 is separate from the heater assembly 103, 104 (being separate pieces of mechanism 105, 106, 103, 104, 115, 117, 118)
Regarding claim 5, LI, discloses the mechanism is not a same component as the heater assembly.
Regarding claim 6, LI, discloses the chamber has a longitudinal axis extending from the opening of the housing into the chamber.
Regarding claim 7, LI, discloses the at least one guide track (of hook) 115 extends substantially perpendicular to the longitudinal axis of the chamber.
Regarding claim 8, LI, discloses movement of the at least one member between the first position and the second position is substantially perpendicular to the longitudinal axis of the chamber.
Regarding claim 9, LI, discloses the heater assembly is disposed within the chamber and longitudinally spaced from the mechanism.
Regarding claim 10, LI, discloses the mechanism is disposed at or proximate the opening at a first longitudinal position, and the heater assembly is disposed within or around the chamber at a second longitudinal position.
Regarding claim 11, LI, discloses a control member 105 coupled to the at least one member 103, 104 of the mechanism such that actuation of the control member 105 causes the at least one member 103, 104 of the mechanism to move between the first position and the second position.
Regarding claim 12, LI, discloses the control member 105 is an element that is slidable by a user to cause the at least one member 103,104 to move between the first position and the second position.
Regarding claim 13, LI, discloses the at least one member is configured to move from the first position to the second position in a first direction, and wherein the control member is configured to move in a second direction to cause the at least one member to move from the first position to the second position, the second direction being different from the first direction.
Regarding claim 14, LI, discloses the at least one member 103, 104 comprises a plurality of blades 103, 104, each of the blades 103, 104 being configured to move from a first position (fully open position), in which the aerosol-generating article can be inserted into the chamber via the opening, and a second position (intermediate position), in which each blade has reduced the size of the opening relative to the size of the opening when the blades are in the first position.
Regarding claim 15, LI, discloses the at least one member 103, 104 is further configured to move to a third position 102, in which the at least one member completely closes the opening in the housing.
Regarding claim 16, LI, discloses at least one wall of the chamber is thermally coupled to the heater element 102, 104.
Regarding claim 17, LI, discloses, the heater assembly further comprises a heater element disposed around an outer surface of the at least one wall of the chamber (see fig. 2).
Regarding claim 18, LI, discloses an aerosol-generating system comprising an aerosol-generating device according to claim 1, and an aerosol-generating article configured to be inserted into the chamber of the aerosol-generating device (as discussed above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARSHAD C PATEL whose telephone number is (571)272-8289. The examiner can normally be reached Monday-Friday: 8:00 am - 5.00 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abdullah A Riyami 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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/HARSHAD C PATEL/Primary Examiner, Art Unit 2831
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