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 .
Claim Objection
Claim 9 is objected to because of the following informalities: the meaning of “duty ratio” is unclear. Appropriate correction is required.
Double Patent Rejections
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,974,608. Although the claims at issue are not identical, they are not patentably distinct from each other because any differences between the claim sets are deemed to be minor variations in wording not substantially affecting the claim scope.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,974,608. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reason given above.
Claims 3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,974,608. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reason given above.
Claims 4 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,974,608. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reason given above.
Claims 7-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,974,608 in view of Weigensberg et al 2015/0020831. Weigensberg et al (claim 24 thereof) discloses operation of an aerosol generating device in first and second modes, and to modify the apparatus of ‘608 in this way thus would have been obvious, for a more pleasurable vaping experience.
35 USC 102 Rejections
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.
Claim(s) 12, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al 2014/0278250.
Regarding claims 12 and 15, Smith et al (claim 3 thereof) discloses an article comprising: an aerosolisable medium; and one or more first elements and a one or more second elements, wherein the one or more first elements are configured to be sensed by a first sensor and the one or more second elements are configured to be sensed by a second sensor, wherein the first and second sensor are different types of sensor.
Regarding claim 14, Smith et al (claim 3 thereof) discloses the one or more second elements comprise electrically conductive features.
35 USC 103 Rejections
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.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al as applied to claim 12 above, and further in view of Cameron 2017/0135408.
Cameron (claim 4 thereof) discloses the one or more first elements comprise optical features, and to form one or more of the first elements of Smith et al in this way thus would have been obvious, for greater accuracy.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY F PAUMEN whose telephone number is (571)272-2013. The examiner can normally be reached M-Th.
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/GARY F PAUMEN/Primary Examiner, Art Unit 2834
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