Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
Amended patent claim 1, original claims 2-12, and new claims 13-16 are
pending.
Improper Amendment in Reissue
The amendment filed 12 September 2025 proposes amendments to claim 1 and the specification that does not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
Specifically, claim 1 has been amended using strikethrough to indicate deleted subject matter. See line 8 of the amended claim. Only single brackets are permitted.
In the amendment to the specification, double bracketing is used in the penultimate line of the first page of amendment, in the amendment to column 7, and in the amendment to column 13.
Election/Restrictions
Newly submitted claims 13-16 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 1-11 (Invention I) are drawn to a vaporizer system and method of using, classified in class H05B 3/146. Claims 13-16 (Invention II) are drawn to a system to vaporize a material in a disposable cartridge, classified in class A24F 40/42.
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process of Invention I does not require the apparatus of Invention II. Specifically, Invention I does not require a frangible section, an air permeable divider, a battery, an actuator configured to deform the frangible section, or a cartridge sensor.
Additionally, Inventions I and II are directed to related apparatuses. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design. For example, the apparatus of Invention I recites a removable carriage, a chamber with an annular wall and an open side, at least two heating elements oriented to cover the open side of the chamber, an insulator separating the two heating elements, and a temperature sensor in thermal contact with a heating element. These limitations are not recited by Invention II. Invention II recites a frangible section, an air permeable divider, a battery, an actuator configured to deform the frangible section, and a cartridge sensor, none of which are required by Invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
a) the inventions have acquired a separate status in the art in view of their different classification;
b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
d) the prior art applicable to one invention would not likely be applicable to another invention;
e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13-16 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
A divisional reissue application directed to the constructively non-elected invention may be filed. See MPEP 1450.
New Matter
The amendment filed 12 September 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In Figure 2, the change of tab 7 from a small component on second end 3 to extended sections on both sides of second end 3 constitutes new matter as this structure is not described by the original disclosure;
Further, the change in position of actuator 29 from the receiver interface (outside of the cartridge guide) to inside cartridge guide 24 constitutes new matter as this new position was not described in the original disclosure;
In Figure 5, the addition of two tabs 7 constitutes new matter Original Figure 1 shows only a single tab;
In Figure 6, the addition of an elongated tab 7 constitutes new matter. Original Figure 1 shows only a small tab located on second end 3. No tab is disclosed on inhalation end 2;
In Figures 16A and 16C, the change in shape of cartridge interface 444 constitutes new matter as the original interface is substantially rectangular with only two key guides 445;
The amendment to the paragraph starting at col.13, line 30, adding “During use key guides 445 which can be protrusions extend into the cartridge interface 444 can deform frangible sections of the cartridge” constitutes new matter as no such interaction was described in the original patent.
Applicant is required to cancel the new matter in the reply to this Office Action.
It is further noted that if applicant files a divisional reissue directed to non-elected claims 13-16 these claims will be subject to a new matter rejection under 35 USC §112 and Original Patent rejection under 35 USC §251.
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 1-8 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.
As to claim 1, the use of a single colon in line 1 followed by a series of semi-colons associated with each subsequent limitation renders the claim vague and indefinite as it is unclear which claim elements are related to the overall system, which are related to the removable carriage, and which are related to the base. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i) and MPEP 608.01(m).
Claims 2-6 are rejected as depending from claim 1 and requiring all the limitations thereof.
In claims 7 and 8, “the PWM heating” and “the duty cycle of the PWM heating” each lack positive antecedent basis as no pulse-width modulated heating was recited in claim 1 from which these claims depend.
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.
Claim(s) 1, 3, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0345629 to Mironov (hereinafter Mironov) in view of US 2017/0215478 to Harrison et al. (hereinafter Harrison).
With respect to claim 1, Mironov teaches a vaporizer system comprising: a removable carriage 24 comprising a chamber 20 having an annular wall with and an
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open side (facing the heater unit 30) within the removable carriage, at least one intake inlet 13 (para [0008]) fluidly connected with the chamber, a tributary pathway 17 configured to connect the chamber to an inhalation opening 15, a base 11 comprising a receiver interface (opening of 19) which opens into a cartridge guide 19 to receive a carriage 24, a controller 16 and power supply 14 within the base, at least two heating elements 37 (Figure 7) oriented to cover the open side of the chamber when the carriage is fully inserted (para [0070; Figures 1d, 6b, and 16), and an insulator 34 separating the two heating elements (Figure 8; para [0082]). Note that Mironov discloses that the filaments 37 are bonded directly to the insulating substrate 34. Because the filaments are spaced from each other, the insulator 34 separates each filament from its neighbor. Finally, Mironov teaches that “[o]ne or more of the filaments may be dedicated temperature sensors” (para [0090]) and are “used to detect a change in the temperature of the heater element” which signal “can be used to regulate the power supplied to the heater element to ensure that it remains within a desired temperature range.” See para [0090].
Although Mironov discloses the heater is activated “while the device is in an “on” state” (para [0088]), Mironov does not expressly teach an on/off switch. Harrison, like Mironov, teaches a vaporizing device 10. A depressible button is disclosed to initiate the heater 30 for vaporizing a material. See para [0040]. As an on/off switch, like that disclosed by Harrison, would have been a reliable means of permitting the user to initiate vaporization it would have been an obvious modification to the device of Mironov.
As to claim 3, the chamber 20 is formed of fiberglass and either HDPE or PET (para [0072]), all of which are electrical insulators.
As to claim 5, the last two lines of the claim are considered to be an intended use of the device which does not further limit the structure of the device. Mironov teaches that the filaments are heated to “a desired temperature range” (para 0088]) and the temperature measurements “regulate the power supplied to the heater element to ensure that it remains within a desired temperature range” (para [0090]).
With respect to claim 6, Mironov is silent to an illumination communications system. However, this is disclosed by Harrison in a similar vaporization device. Harrison teaches the use of an LED indicator to give visual feedback to the user that vapor is being produced. See para [0056]. It would have been obvious to modify the apparatus of Mironov to include an LED indicator as Harrison teaches that it is often “difficult for users to tell if they are receiving vapor.”
As to claim 7, Mironov teaches “heat is generated in short bursts using high current pulses” (para [0088]).
Claim Objections
Claims 1, 5, and 7-12 are objected to because of the following informalities:
In claim 1: line 2, delete “and”; line 6, insert –the—before “base”.
In claims 5 and 9-12, change the abbreviation “SET” to –selected exposure temperatures--.
In claims 7 and 8, change the abbreviation “PWM” to --pulse width modulation--.Appropriate correction is required.
Allowable Subject Matter
Claims 3, 4 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 112, 2nd (pre-AIA ) and rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claims 3 and 4, Mironov does not teach that the chamber is formed of quartz glass or high alumina ceramic or comprises an additional insulative layer. As the chamber of Mironov must have a capillary capacity, there is no teaching or suggestion of substituting a non-capillary material for that disclosed by Mironov.
With respect to claim 8, Mironov discloses activating all heating elements 37 simultaneously and there is no teaching or suggestion to activate them sequentially or any apparent benefit in doing so.
Claims 9-11 would be allowable if rewritten or amended to overcome the objection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Mironov discloses activating all heating elements 37 simultaneously and there is no teaching or suggestion to activate them separately or any apparent benefit in doing so.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,647,566 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH MCKANE whose telephone number is
(571) 272-1275. The examiner can normally be reached on Mon-Thurs; 6:30 am -
4:30 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, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH L MCKANE/ Conferees: /LEE E SANDERSON/, SpecialistSpecialist, Art Unit 3991 Conferees: /Patricia L Engle/, SPRS AU3991
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