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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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. This is a broadening reissue application of U.S. Patent No. 10,299,513 to Perez et al. (hereafter “the ‘513 patent”).
Ongoing Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding(s) in which the ‘513 patent is or was involved in. These proceedings would include interferences, reissues, reexaminations, 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 the patentability of the claims under consideration in this reissue application.
The 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.
Status of Claims
New claims 27-50 of the instant reissue application are pending.
Specification
The amended specification filed 14 July 2025 fails to comply with 37 CFR 1.173 because in the proposed amendment to the first paragraph of page 1 omitted subject matter is indicated by way of strike through not single brackets. It is noted that MPEP 1453 establishes that matter to be omitted by reissue must be enclosed in brackets. Appropriate action is required.
Additionally, the disclosure is objected to because of the following informalities: line 48 of column 8 of the specification recites the word “intergrated” which should be “integrated”. Appropriate correction is required.
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 27-50 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 27 recites the limitation "the atomization chamber" in line 16. There is insufficient antecedent basis for this limitation in the claim as an atomization chamber is never introduced in the claim. It is noted that claim 27 introduces an atomizer chamber in line 11, however it is unclear if the claimed atomizer chamber is the same as the claimed atomization chamber recited at line 16. For the purpose of examination, the examiner will interpret the atomization chamber as being the same as the atomizer chamber. Appropriate action is required.
Line 9 of Claim 27 recites “ a cavity having a top surface and a bottom surface” which introduces the limitation of a cavity having a bottom surface. Claim 27 also recites “an atomizer chamber sealed to a bottom surface of the cavity” which reintroduces the limitation of cavity having a bottom surface. It is unclear whether the later introduced bottom surface of the cavity is the same as the earlier introduced bottom surface. As such, claim 27 are indefinite. For the purpose of examination, the examiner will interpret claim 27 as if it recites “an atomizer chamber sealed to a bottom surface of the cavity”. Appropriate action is required. Claims 28-50 are rejected for inheriting the deficiency of claim 27 from which they depend.
Claim 47 recites the term “polycarbonate-like material” which renders the claim indefinite as it is unclear which materials are encompassed by the term “polycarbonate-like material”. It is noted that the ‘513 patent does not define the term “polycarbonate-like material” in such a way that one of ordinary skill in the art would be reasonably apprised of which materials would be considered as being polycarbonate-like and which would not. Further, the term “polycarbonate-like material” does not appear to have a well-defined meaning in the art. As such, one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the claim. For the purpose of examination, any plastic material will be interpreted as being a polycarbonate-like. Appropriate action is required.
Claim 48 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 48 recites that at least a portion of the tank apparatus is made of a metallic material. However, claim 27 from which claim 48 depends, recites that the tank apparatus comprises a metallic strip. Since the metallic strip of claim 27 is a portion of the claimed tank apparatus, claim 48 fails to further narrow the scope of the claim 27. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Impermissible Recapture
Claims 27-50 are rejected under 35 U.S.C. §251 as being an improper recapture of broadened claimed subject matter surrendered during the prosecution of the original application upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed.Cir.). 1984); MBO Laboratories, Inc. v. Becton, Dickenson, & Co., 602 F.3d 1306, 1316-1317, 94 USPQ2d 1598 (Fed. Cir. 2010).
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the original application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that Applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. §251, and the broader scope of claimed subject matter surrendered in the original application for the patent cannot be recaptured by the filing of the present reissue application.
Three Step Test for Recapture per MPEP §1412.02
MPEP §1412.02 reads, in part:
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
When applied to the instantly pending claims the three-step process is as follows:
Step 1: instantly pending claim 27 is broader than claims 1 and 23 of the original patent (U.S. Patent No. 10,299,513) by excluding the limitation “wherein the mouthpiece extends along the first side and is laterally spaced away from the second side of the cavity”.
Step 2: during prosecution of application 15/516,005 which matured into the original patent, on 14 December 2018, claims 1 and 12 were amended so as to require the removable tank to comprise:
“a mouthpiece that forms an air outlet, the mouthpiece formed on the top side of the removable tank, wherein the mouthpiece extends along the first side and is laterally spaced away from the second side and the cavity”.
Along with the claim amendments, the Patent Owner filed remarks in which they asserted that the cited prior art does not disclose a mouthpiece comprising all the features of the amended claims and thus the amended claims are in condition for allowance. It is noted that if an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by Applicant in the original application to make the claims allowable, the omitted limitation relates to subject matter previously surrendered by Applicant. See MPEP 1412.02(II)(B)(1).
Step 3: the recapture rule cannot be avoided since the retained portion of the surrender generating limitation is well known in the prior art. It is noted that the retained portion of the surrendered subject matter is “a mouthpiece that forms an air outlet, the mouthpiece located on the upper side of the tank” which is well known in the art. For example, Buchberger, US 2026/0249024 discloses an inhaler device comprising a removable tank wherein the tank comprises a mouthpiece located on the upper side of the tank wherein the mouthpiece comprises an air outlet [abstract, 0066, 0112, 0147, 0152, Figs. 1A-C, 9, 13A-B and 18]. As such, the recitation of “a mouthpiece that forms an air outlet, the mouthpiece located on the upper side of the tank” in instantly pending claim 27 does not materially narrow the claims relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Therefore, claim 27 and its dependent claims 28-50 violate the recapture rule.
Claim Rejections - 35 USC § 102
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 27-30, 42-46, and 48-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buchberger 2026/0249024 (“Buchberger ‘024”).
Regarding claim 27, Buchberger ‘024 discloses an apparatus for vaporizing a liquid wherein the apparatus comprises an inhaler part 1 and an inhaler component 2 [abstract, 0112, 0152, Figs. 1a-c].
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Figures 1 A-C of Buchberger illustrating the arrangement of
the disclosed apparatus.
The inhaler component 2 is separable (i.e., removable) from the inhaler part 1 and comprises a liquid container 4 [0112, Fig. 4]. Since the inhaler component 2 comprises a liquid container 4 it is reasonably interpreted as corresponding to the claimed removable tank apparatus.
The inhaler component 2 additionally comprises a first side and an opposite second side each of which extends from an upper side to a lower side as claimed [0153, Fig. 9]. The liquid container 4 of the inhaler component 2 corresponds to the claimed cavity having a top surface and a bottom surface wherein the cavity is capable of holding the liquid. The inhaler component 2 further comprises an air inlet 26 and a mouthpiece 5 located on its upper side wherein the mouthpiece forms an air outlet 66 [0066, 0121, 0147, Fig. 9, 13 A-B, and 18]. The inhaler component 2 also comprises a portion disposed below the liquid container 4 wherein the portion comprises an opening to permit wicking of the liquid in the liquid container 4 and a planar composite 22 consisting of a wick and a heating element [0120, 147, Fig. 10]. The portion of the inhaler component 2 comprising the planar composite 22 is defined, in part, by side walls and has an upper surface which is defined by the bottom surface of the liquid container 4 (i.e., the cavity) [0147, Fig. 9]. As such, the portion of the inhaler component 2 comprising the planar composite 22 is reasonably interpreted as being an atomization chamber sealed to the bottom surface of a cavity as claimed. The heating element and the wick of the planar composite 22 correspond to the claimed heater and
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wick.
Annotated Figure 9 of Buchberger ‘024 illustrating the portion of the inhaler component corresponding to the claimed atomization chamber
The inhaler component 2 is configured such that air arrives from the air inlet and travels down a first path to the planar composite comprising a heating element and then travels down a second path to the mouthpiece 5 as claimed [0060, 0061, 0074, 0121]
Secured to a lower side of the inhaler component 2 is a metallic plate-like contact 23a which is electrically connected to the planar composite 22 [0054, 0061, 0120, 0153, 0156, Figs. 9 and 29a]. The metallic plate-like contact 23a corresponds to the claimed metallic strip secured to the lower side of the tank.
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Figure 29B of Buchberger ‘024 illustrating the connection of the
planar composite to the plate-like contact.
Regarding claims 28 and 29, The metallic plate-like contact 23a which corresponds to the claimed metallic strip comprises an elbow-shaped configuration which is disposed on the lower side of the tank [0155, Fig. 29B].
Regarding claim 30, Buchberger ‘024 discloses that electrical energy for the heating element of the planar composite 22 is supplied by a battery and conveyed via two plug contacts 93 [0093, Figs. 6A-C, 9, and 29B]. Since the electrical energy is provided by a battery it would necessarily be direct current. As such, one of ordinary skill in the art would have understood that the one of the contact plugs is a negative electrical terminal and the other contact plug is a positive electrical terminal as claimed.
Regarding claim 42, Buchberger ‘024 teaches that the wick may be formed from quartz glass [0054]. It is noted that quartz glass comprises silicon dioxide (i.e., silica).
Regarding claim 43, Buchberger ‘024 teaches that the wick may be formed from a ceramic material [0054].
Regarding claim 44, given that essentially any material object can be disposed of, the apparatus taught by Buchberger ‘024 is reasonably interpreted as being disposable.
Regarding claim 45, Buchberger ‘024 teaches an inhaler component 2 having a hollow rectangular shape [0112, Fig. 1].
Regarding claim 46, Buchberger ‘024 teaches that the apparatus is preferably manufactured from plastic [0116].
Regarding claim 48, since the disclosed apparatus comprises metallic plate-like contact 23a at least a portion of the apparatus is made from a metallic material.
Regarding claims 49 and 50, Buchberger ‘024 teaches that the liquid to be vaporized comprises nicotine which reads on the claimed nicotine and flavoring ingredient [0063].
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.
Claims 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Buchberger ‘024 in view of Goodman et al., US 2013/0199528 (“Goodman”).
Regarding claim 35, as is described above, Buchberger ‘024 discloses an apparatus for vaporizing a liquid which meets the limitations of claim 27. Buchberger is silent regarding the apparatus comprising a heater element having a coil configuration.
Goodman discloses an apparatus for vaporizing a liquid wherein the apparatus comprises a wick and a heater element [abstract, 0002, 0010-0012, 0100, Fig. 22]. Goodman teaches that a heating element in the shape of a coil provides a large surface area for heat transfer and minimizes heating loss resulting from heating ancillary components [0085].
Buchberger ‘024 and Goodman are both directed towards apparatus for vaporizing a liquid wherein the apparatus comprises a wick and a heater element. In light of the teachings of Goodman, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have modified the planar composite 22 (comprising a heating element) of the apparatus of Buchberger ‘024 so as to be configured as a coil with the expectation of providing a heating means having a large surface area for heat transfer and minimizing heating loss resulting from heating ancillary components. The coiled planar composite 22 of the resulting apparatus would have comprised a coiled heater element.
Regarding claim 36-38, Buchberger ‘024 teaches that the planar composite 22 comprises a first end and second end which contact two plate-like contacts 23 [0152, Figs. 27 & 29B]. The first and second ends constitute electrodes. Thus, when the planar composite 22 is modified so as to have a coil configuration as taught by Goodman, the resulting planar composite would have a first end (i.e., a first electrode) coupled to the coil portion and a second end (i.e., a second electrode) coupled to the other end of the coil portion as recited in claim 36. Further, Buchberger ‘024 discloses plate-like contacts 23 which are connected to the ends of the planar composite 22 which correspond to the positive and negative electrical terminals recited in claims 36 and 37. Additionally, Buchberger ‘024 teaches that the heating element may be metallic and thus the ends of the planar composite 22 corresponding to the claimed electrodes would be metallic as recited in claim 38 [0054].
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Buchberger ‘024 in view of Monsees, US 2018/0070647 (“Monsees”).
Regarding claim 41, as is described above, Buchberger ‘024 discloses a system for vaporizing a liquid which meets the limitations of claim 27. Buchberger ‘024 further teaches that the planar composite 22 consists of a heating element and wick wherein the wick may be formed of, inter alia, a ceramic material [0054, 0120]. Buchberger ‘024 is silent regarding the wick comprising cotton.
Monsees discloses a system for vaporizing a liquid wherein the system comprises a wick [abstract, claims 165 and 176]. Monsees teaches that the wick may be formed from, inter alia, a ceramic material or cotton [0082].
Buchberger ‘024 and Monsees are both directed towards systems for vaporizing a liquid wherein the system comprises a wick. It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have modified the system of Buchberger ‘024 by forming the wick portion of the planar composite 22 from cotton as Monsees teaches that cotton is a suitable material for wicks in vaporizing systems and the ceramic materials and cotton are known to be equivalent for wicks (See MPEP 2144.06, 2144.07).
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Buchberger ‘024 in view of Sullivan, US 2015/0257447 (“Sullivan”).
Regarding claim 47, as is described above, Buchberger ‘024 discloses a system for vaporizing a liquid which meets the limitations of claim 27. Further, Buchberger ‘024 teaches forming the housing parts of the disclosed system from a plastic material.
Buchberger ‘024 is silent regarding the system comprising a plastic material to safely hold the liquid.
Sullivan discloses an electronic cigarette comprising a liquid storage chamber 140 which contains a liquid to be vaporized [abstract, 0064, 0065, 0072, 0074, 0123, Figs. 20-24]. Sullivan teaches that the liquid storage chamber 140 is preferably constructed so as to prevent or inhibit unintended liquid leakage [0124]. Sullivan further teaches that desirable properties of the liquid storage chamber include chemical resistance, transparency, and structural strength and thus one preferred material is polycarbonate [0124].
Buchberger ‘024 and Sullivan are both directed towards electronic cigarettes comprising a container for holding a liquid to be vaporized. In light of the teachings of Sullivan it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have formed the housing 2 and/or liquid container 12 from polycarbonate in order to take advantage of the material’s chemical resistance, transparency, and structural strength. Since polycarbonate has chemical resistance it is interpreted as being configured to safely hold the liquid.
Claims 27, 30, 40, 45, 49, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Buchberger, US 2013/0333700 (“Buchberger ‘700”) in view of Buchberger ‘024.
Regarding claim , Buchberger ‘700 discloses a discloses an electronic cigarette comprising a removable inhaler component comprising a housing 2 (i.e., a tank) [abstract, 0001-0004, 0029, Figs. 1 and 2]. The housing comprises a first and opposite second side which extend from an upper side to a lower side as claimed [0029, Fig. 1]. The housing further comprises an air intake opening (i.e., an inlet) and a mouthpiece 3 as claimed [0029, 0033, 0038, 0039, Figs. 1 and 2].
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Figure 2 of Buchberger ‘700 illustrating the arrangement of the disclosed
housing of the disclosed inhaler component.
The tank further comprises a liquid container 12 which contains a liquid 13 to be vaporized which corresponds to the claimed cavity having a top surface and bottom surface wherein the cavity is capable of holding the liquid. Connected to a bottom surface of the liquid container 12 is a region of the housing which contains laminar composite 5 comprising a heating element 6 and a wick 7 [0030, Fig 2] which corresponds to the claimed atomization chamber. The region of the housing containing the laminar composite 5 comprises an upper surface which is connected the walls of the housing 2 [0030, Fig. 2] which corresponds to the claimed upper surface sealed to a
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plurality of side walls.
Annotated Figure 2 of Buchberger highlighting the region of the disclosed
inhaler component which corresponds to an atomization chamber
Disposed between the liquid container 12 and the region of the housing which contains the laminar composite 5 is a valve-like, openable catch 19 which when open allows wicking of the liquid 13 into the laminar composite 5 which corresponds to the claimed opening configured to permit wicking of the liquid from the cavity into the atomization chamber [0037, Fig. 2].
The disclosed housing 2 (i.e., tank) is configured such that during use air is supplied from the environment through the air intake opening 15 wherein the air flows into the housing 2 where it passes over the laminar composite 5 comprising a heating element 6 and subsequently through the mouthpiece 3 [0033]. This teaching corresponds to the claimed tank apparatus configured so that air travels through a first path from the air inlet towards the heater element, and then past the heater element though a second path through the air outlet of the mouthpiece.
The disclosed housing 2 further comprises plug contacts 8a, 8b which are secured to a lower side of the housing wherein the plug contacts serve to introduce electrical energy to the heating element 6 [0031, Figs. 2-5]. Buchberger teaches that the plug contacts 8a, 8b having a flat elongated shape (i.e., a strip) [0029, 0031, Fig. 1].
Buchberger ‘700 is silent regarding the plug contacts being metallic.
Buchberger ‘024 discloses the apparatus for vaporizing a liquid described above. The disclosed apparatus comprise plug contacts 93 which serve the same purpose as the plug contacts 8a, 8b in the apparatus of Buchberger ‘700 [0153]. Buchberger ‘024 teaches that it is necessary for the plug contacts 93 to have adequate conductivity and teaches covering the plug contacts with a layer of gold, silver, palladium, and/or nickel [0153].
Buchberger ‘700 and Buchberger ‘024 are both directed towards apparatuses for vaporizing a liquid. In light of the teachings of Buchberger ‘024, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have covered the plug contacts 8a, 8b of the apparatus of Buchberger ‘700 with a layer of gold, silver, palladium, and/or nickel in order to ensure adequate conductivity. The resulting plug contacts would have read on the claimed metallic strip.
Regarding claim 30, Buchberger ‘700 discloses that electrical energy for the heating element 6 is supplied by a battery and conveyed via the contact plugs 8a and 8b [0031]. Since the electrical energy is provided by a battery it would necessarily be direct current. As such, one of ordinary skill in the art would have understood that the one of the contact plugs is a negative electrical terminal and the other contact plug is a positive electrical terminal as claimed.
Regarding claim 40, Buchberger ‘700 teaches that the laminar composite 5 consists of wick 7 and an electric heating element 6 which are connected to each other in a laminar manner [0030]. Buchberger ‘700 further teaches that the laminar composite 5 can be formed by a metal foil with metal fabric layers sintered on it [0030]. As such, Buchberger ‘700 reasonably teaches a laminate composite comprising a metal foil disposed between metal fabric layers. The metal foil corresponds to the claimed heater element disposed in the middle section of the wick.
Regarding claim 45, Buchberger ‘700 teaches that the housing 2 (i.e., a tank) has a hollow rectangular shape [0030, Fig. 2].
Regarding claims 49 and 50, Buchberger ‘700 teaches that the liquid material contains nicotine [0039] which reads on the nicotine of claim 49 as well as the flavoring recited in claim 50.
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 27-30, 35, 40-43, and 45-50 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 27, 34, 45, and 48-56 of copending Application No. 19/311,664 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claims 27-30, 35, 40-43, and 45-50 are recited in claims 27, 34, 45, and 48-56 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 27 is provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 27 and 38 of copending Application No. 19/311,656 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claim 27 is recited in claims 27 and 38 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 27 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27 and 37 of copending Application No. 19/316,966 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claim 27 is recited in claims 27 and 37 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29, 40-43, and 45-50 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 27, 34, 39, and 47-55 of copending Application No. 19/308,806 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claims 27-29, 40-43, and 45-50 are recited in claims 27, 34, 39, and 47-55 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29, 35, 40-42, 44-46, and 50 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of 27-29, 31, 32, 51-55, and 58 of copending Application No. 19/307,801 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation recited in claims 27-29, 35, 40-42, 44-46, and 50 are recited in claims 27-29, 31, 32, 51-55, and 58 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Prior Art
The following constitutes a list of prior art which has not been relied upon, but is considered pertinent to Applicant’s claims and/or written description.
- Tan et al., US 2016/0213866 (“Tan”) discloses an electronic cigarette device comprising a removable tank 72, a mouthpiece 14, a wick 76, and a vaporization chamber which houses a velocity transformer 30 [abstract, 0035-0062, 0069, Figs. 1-3]. The tank 72 forms a cavity which holds a liquid 74 to be vaporized and the wick 76 conveys the liquid from the cavity of the tank 72 to the vaporization chamber [0035-0062, 0069, Figs. 1-3].
- Buchberger, US 2011/0226236 (“Buchberger”) discloses an electronic cigarette comprising a removable inhaler component 2 consisting of a housing comprising a mouthpiece 5 and a liquid container 4 (i.e., a tank) which holds a liquid material 16 [0108, Fig. 1]. The mouthpiece 5 forms an air outlet 66 and is disposed adjacent an upper side of the liquid container 4 [0161, Fig. 21]. The inhaler component 2 also comprises an air admission opening (i.e., an air inlet) [0118]. The inhaler component 2 further comprises a planar composite 22 material passes through a chamber 21 (i.e., an atomization chamber) formed in the inhaler component 2 [0116-0118, Figs. 9 and 11]. The chamber 21 is sealed to a bottom surface of the liquid container 4 [0116-0118, 0139, Figs. 9, 11, and 18]. The planar composite 22 comprises both a wick and a heating element and which serves the vaporize the liquid material 16 which is supplied by the liquid container 4 [0116, Fig. 9]. Air passes from the air inlet through the chamber 21 and out though the mouthpiece 5 [0139, Fig. 18]. The planar composite 22 comprises two end sections which are electrically connected to contacts [0060].
Conclusion
Claims 27-50 are rejected.
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/LEE E SANDERSON/ Reexamination Specialist, Art Unit 3991
Conferees:
/Laura Davison/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3991
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