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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-17) in the reply filed on 7/6/2026 is acknowledged. The traversal is on the ground(s) that search and examination of both claim groups can be made without serious burden. This is not found persuasive because the groups have several distinctions as outlined in the restriction requirement. This is all in addition to the fact that the device of Group I may be used with other workpieces as stated in the restriction requirement. Applicant also points to common classification in A24F 40/70. However, this area alone produces thousands of search results. This number of references cannot reasonably be searched in its entirety and must be filtered with different search terms, which would be different for each group for the reasons cited above.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 16/856,291 and 18/400,287, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 11 recites “wherein the slide is configured to contact a finger of a support of the heater assembly”. There does not appear to be any disclosure of a “finger of a support of the heater”, let alone contact of the slide therewith. The examiner notes disclosure of “a finger of a heater on the support” (e.g. paragraph 15), which is not the same.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 11 recites “the slide is configured to contact a finger of a support of the heater assembly”. The specification lacks a description of a “finger of a support” of the heater. The examiner notes disclosure of “a finger of a heater on the support” (e.g. paragraph 15), which is not the same.
Claim Rejections - 35 USC § 102 and 103
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.
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 1-8 and 11-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Liu (WO2016065605, cited in IDS, with reference to translation).
Claim 1: Liu discloses an apparatus (4) for assembling a heater assembly for a non-nicotine pod assembly (intended use, see below), the apparatus comprising: a base (e.g. lowermost horizontal portion in addition to left-most vertical portion extending therefrom between 53 and 44, evident in Fig. 1); a wick feed (e.g. 41, 43, 431, 432) defining a channel (see Fig. 3, 8) configured to receive a wick (unlabeled dark horizontal line, the left end of which is in the channel evident in Figs. 1 and 4, referred to throughout Liu as an “oil guide rope”) structured to draw a nicotine pre-vapor formulation via capillary action (inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims - MPEP 2115), the channel having a longest dimension extending toward the base (e.g. if the “longest dimension” is taken to be the horizontal dimension of the channel in Fig. 1, then it extends toward the aforementioned vertical portion of the base); a slide (e.g. 45 with rails and screw mechanism - see Figs. 1, 2, 6; page 10, lines 399-405) configured to move along a plane on a top face of the base (evident as cited above); and a holder (e.g. clamp 46 - page 7, lines 256-258) disposed on the top face of the base (ultimately connected to the top face of the base along with all other components). Alternately the “holder” can be broadly construed as any of the unlabeled structural supports extending from the base which hold or support other components.
As noted above, “A claim is only limited by positively recited elements”, MPEP 2115. The claimed apparatus is not necessarily limited by the articles worked upon, e.g. “a heater assembly for a nicotine pod assembly” and “a wick structured to draw a nicotine pre-vapor formulation via capillary action”. It is further noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Alternatively, the extent of the “longest dimension” of the channel and whether or not that dimension extends toward the base essentially speaks to the relative dimensions and proportions of the channel and/or shape of the base, for example. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Liu device such that a longest dimension of the channel extends toward the base since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that the configuration of a claimed structure is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed structure was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for either the relative dimensions of the channel (e.g. paragraph 82) or the overall shape of the base.
Claim 2: Liu discloses a wick retainer (e.g. clamp 41/4121) extending parallel and adjacent to the wick feed for retaining the wick in the channel (page 7, lines 271-286).
Claim 3: Liu discloses a cutter (48) having a blade (481) configured to slide along a top surface of the slide (evident in Figs. 1 and 6) to cut the wick (see page 9, lines 342-351).
Claim 4: The wick feed (43, 431, 432) is configured to rotate relative to the base (page 10, lines 388-393).
Claim 5: Liu discloses a block fixed to the base (unlabeled support block beneath 43/44 evident in Fig. 1), wherein the wick feed is rotatably attached to and supported by the block (it is understood the aforementioned rotating parts would have to be supported with respect to the base somehow, such as by a bearing as implied in Fig. 8).
Claim 6: The holder (46) is configured to receive a support (e.g. heating wire, noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly) of the heater assembly therein, the holder being configured to fix the support relative to the base for inserting the wick (page 7, lines 256-258).
Claim 7: The channel (defined in 431/432) in the wick feed is configured to guide the wick into alignment with a heater on the support (neither the heater nor the support is positively recited. If a “heater” were hypothetically on the aforementioned support/wire, the channel would guide the wick into some alignment with it. As noted above, a claim is only limited by positively recited elements, and an apparatus is not necessarily limited by the articles worked upon).
Claim 8: The holder (46) includes a locking finger (portions 461 can be broadly construed as “fingers” - see Fig. 10) configured to engage a support (e.g. wire) of the heater assembly and retain the support within the holder (page 10, lines 394-398).
Claim 11: To the extent that “a finger of a support of the heater assembly” pertains to some non-positively recited aspect of the article worked upon, and, as noted above, “A claim is only limited by positively recited elements” (MPEP 2115), then the slide is presumably “configured to” perform the claimed function, depending on the arrangement of the “support of the heater assembly” with respect to the wick, since it is capable of sliding and thus applying force and moving another object.
Claim 12: The wick feed includes a plate (431) and a retainer (e.g. 41/4131 or 432), the plate is disposed orthogonal to the base (e.g. the plate extends vertically relative to the horizontal direction of the base) and defines the channel (a hole therethrough, see Fig. 8), and the retainer is disposed orthogonal to the base (e.g. an axial direction of the retainer is orthogonal to a vertical dimension of the base) and adjacent to the plate (Fig. 8), the retainer and the plate defining a slot for guiding the wick (it is noted that the “channel” and “slot” seem to refer to the same feature - instant app at [0088]).
Claim 13: Liu further discloses a block fixed to the base (unlabeled support block beneath 43/44 evident in Fig. 1), wherein the plate (431) is rotatably attached to and supported by the block (it is understood the rotating parts would have to be supported with respect to the base somehow, such as by a bearing as implied in Fig. 8).
Claim 14: The retainer (e.g. 432) is fixed to the plate (page 10, line 379) such that the retainer and the plate are configured to rotate relative to the base and the block (page 10, lines 375-376).
Claim 15: The holder (46) is configured to secure a support (e.g. heating wire, noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly) of the heater assembly and to lock (clamp) a position of the support relative to the base (page 7, lines 256-258).
Claim 16: The holder includes a locking finger (portions 461 can be broadly construed as “fingers” - see Fig. 10) configured to engage the support (wire) and retain the support within the holder (page 10, lines 394-398).
Claim 17: Liu discloses a blade (481) configured to slide along a top surface of the slide (evident in Figs. 1 and 6; page 9, lines 342-351).
Claims 1-2, 4-7, 11-12, and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ward et al. (U.S. PGPub 2014/0157583, cited in the IDS).
Claim 1: Ward et al. discloses an apparatus (200) for assembling a heater assembly for a non-nicotine pod assembly (intended use, see below), the apparatus comprising: a base (e.g. 210 and 272); a wick feed (238) defining a channel (242) configured to receive a wick (204) structured to draw a nicotine pre-vapor formulation via capillary action (paragraph 32, noting that nicotine or non-nicotine does not limit the claimed apparatus), the channel having a longest dimension extending toward the base (e.g. if the “longest dimension” is taken to be the horizontal dimension of the channel in Fig. 3, then it extends toward portion 272); a slide (212 or 232) configured to move along a plane on a top face of the base (paragraphs 45 and 49); and a holder (e.g. clamps 236, heating element feeder 226, and/or tracks 216) disposed on the top face of the base (noting that “holder” is broad and could be any structure capable of “holding” something).
As noted above, “A claim is only limited by positively recited elements”, MPEP 2115. The claimed apparatus is not necessarily limited by the articles worked upon, e.g. “a heater assembly for a nicotine pod assembly” and “a wick structured to draw a nicotine pre-vapor formulation via capillary action”. It is further noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Alternatively, the extent of the “longest dimension” of the channel and whether or not that dimension extends toward the base essentially speaks to the relative dimensions and proportions of the channel and/or shape of the base, for example. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ward device such that a longest dimension of the channel extends toward the base since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that the configuration of a claimed structure is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed structure was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for either the relative dimensions of the channel (e.g. paragraph 82) or the overall shape of the base.
Claim 2: Ward et al. discloses a wick retainer (hollow shaft 264) extending parallel and adjacent to the wick feed for retaining the wick in the channel (paragraph 58).
Claim 4: The wick feed is configured to rotate relative to the base (paragraph 53).
Claim 5: Ward further discloses a block (270) fixed to the base, wherein the wick feed is rotatably attached to and supported by the block (via bearing 276 - paragraph 59).
Claim 6: The holder (226) is configured to receive a support (e.g. heating wire, noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly) of the heater assembly therein, the holder being configured to fix the support relative to the base for inserting the wick (paragraph 49).
Claim 7: The channel (242) in the wick feed is configured to guide the wick into alignment with a heater on the support (neither the heater nor the support is positively recited. If a “heater” were hypothetically on the aforementioned support/wire, the channel would guide the wick into some alignment with it. As noted above, a claim is only limited by positively recited elements, and an apparatus is not necessarily limited by the articles worked upon).
Claim 11: To the extent that “a finger of a support of the heater assembly” pertains to some non-positively recited aspect of the article worked upon, and, as noted above, “A claim is only limited by positively recited elements” (MPEP 2115), then the slide is presumably “configured to” perform the claimed function, depending on the arrangement of the “support of the heater assembly” with respect to the wick, since it is capable of sliding and thus applying force and moving another object.
Claim 12: The wick feed includes a plate (270) and a retainer (264), the plate is disposed orthogonal to the base (a height of the plate is perpendicular to the horizontal base) and defines the channel (the channel is at least partially defined by a hole though the plate), and the retainer is disposed orthogonal to the base (e.g. a horizontal dimension of the retainer is orthogonal to a vertical dimension of the base) and adjacent to the plate (Fig. 6), the retainer and the plate defining a slot for guiding the wick (it is noted that the “channel” and “slot” seem to refer to the same feature - instant app at [0088]).
Claim 15: The holder (226) is configured to secure a support (e.g. heating wire, noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly) of the heater assembly and to lock a position of the support relative to the base (paragraph 49).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Shibuya et al. (U.S. PGPub 2021/0195955, cited in IDS).
Liu discloses an apparatus substantially as claimed except for wherein the locking finger is rotatably attached to the base. However, Shibuya teaches a similar locking finger (clamp 51/51a/51b) rotatably attached to a base (paragraph 35). It would have obvious to have made the locking finger of Liu rotatably attached to the base in order to have provided a level of adjustability thereto. Furthermore, it has been held that the provision of adjustability, where needed, involves routine sill in the art. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954).
Claims 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ward et al. in view of Liu.
Ward discloses an apparatus substantially as claimed, and alludes to cutting the wick manually or automatically (e.g. paragraph 70), but does not disclose a cutter having a blade configured to slide along a top surface of the slide to cut the wick. However, Liu teaches a similar device having a cutter (48) having a blade (481) configured to slide along a top surface of a slide (evident in Figs. 1 and 6) to cut the wick (see page 9, lines 342-351). It would have been obvious to have provided a cutter as taught by Liu in order to have automated the process of segmenting the continuous heater assemblies of Ward.
Claims 1-2, 6-8, 11-12, 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoneda et al. (U.S. Patent 5,031,307).
Claim 1: Yoneda et al. discloses an apparatus (Fig. 2) for assembling a heater assembly for a non-nicotine pod assembly (intended use), the apparatus comprising: a base (10); a wick feed defining a channel (17) configured to receive a wick structured to draw a non-nicotine pre-vapor formulation via capillary action (the channel 17 would presumably be capable of this function), the channel having a longest dimension extending toward the base (e.g. its length extends generally downward toward the base); a slide (15) configured to move along a plane on a top face of the base (column 3, lines 37-39); and a holder (e.g. 18/19 or 20, though “holder” is broad and could refer to any structure capable of holding something) disposed on the top face of the base.
Alternatively, Yoneda et al. discloses an apparatus (Fig. 2) for assembling a heater assembly for a non-nicotine pod assembly (intended use), the apparatus comprising: a base (11); a wick feed defining a channel (25) configured to receive a wick structured to draw a non-nicotine pre-vapor formulation via capillary action (the channel 25 would presumably be capable of this function), the channel having a longest dimension extending toward the base (e.g. its length extends perpendicularly downward toward the base); a slide (23) configured to move along a plane on a top face of the base (column 4, lines 10-13); and a holder disposed on the top face of the base (“holder” is broad and could refer to any structure on the top surface capable of holding something).
As noted above, “A claim is only limited by positively recited elements”, MPEP 2115. The claimed apparatus is not necessarily limited by the articles worked upon, e.g. “a heater assembly for a nicotine pod assembly” and “a wick structured to draw a nicotine pre-vapor formulation via capillary action”. It is further noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim 2: Yoneda further discloses a wick retainer (14) extending parallel and adjacent to the wick feed for retaining the wick in the channel.
Claim 6: The holder is configured to receive a support of the heater assembly therein, the holder being configured to fix the support relative to the base for inserting the wick (the holder is presumed capable of performing this function).
Claim 7: The channel in the wick feed is configured to guide the wick into alignment with a heater on the support (the channel is presumed capable of performing this function).
Claim 8: The holder includes a locking finger (e.g. 19 or 20) configured to engage a support of the heater assembly and retain the support within the holder (it is presumed capable of this function).
Claim 11: The slide is configured to contact a finger of a support of the heater assembly to move the finger to a vertical position so as to compress the wick (it is presumed capable of this function).
Claim 12: The wick feed (in this case of base 11) includes a plate (wall structure defining 25) and a retainer (unlabeled back plate which appears to be bolted to the remaining structure), the plate is disposed orthogonal to the base and defines the channel (25), and the retainer is disposed orthogonal to the base and adjacent to the plate, the retainer and the plate defining a slot (25) for guiding the wick.
Claim 15: The holder is configured to secure a support of the heater assembly and to lock a position of the support relative to the base (it is presumed capable of this function)
Claim 16: The holder includes a locking finger (e.g. 19 or 20) configured to engage the support and retain the support within the holder (it is presumed capable of this function).
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.12,439,975).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 1 of ‘975 substantially anticipates instant claim 1, noting the length of the channel recited in ‘975 is the longest dimensions and extends toward (orthogonally to) the base.
The top face of the base and the horizontal surface as recited in ‘975 may be effectively the same.
Instant claims 2-7 are substantially identical to claims 2-7 of ‘975.
Instant claim 8 is substantially anticipated by independent claims 1 or 15 of ‘975.
Instant claim 9 is substantially anticipated by independent claim 15 of ‘975.
Instant claim 10 is substantially identical to claim 8 of ‘975.
Instant claim 11 is substantially identical to claim 9 of ‘975, except that ‘975 does not recite “a support of” with regard to the heater assembly. However, given that this refers to the article worked upon, it does not effectively narrow the claim scope.
Instant claims 12-15 are substantially identical to claims 10-13 of ‘975.
Instant claim 16 is implied by claim 1 of ‘975 in that the support is part of the heater supported by the holder.
Instant claim 17 is substantially identical to claim 14 of ‘975.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,439,974).
The above assessment for ‘975 applies similarly here since the claims of ‘974 only differ by reciting a “nicotine” pod assembly rather than a “non-nicotine” pod assembly, and a wick structured to draw a nicotine pre-vapor formulation via capillary action rather than a non-nicotine pre-vapor formulation. Because these differences only pertain to the article worked upon, and because "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963) (see MPEP 2115), then the claims of the conflicting applications are not patentably distinct.
Claims 1-8 and 11-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of U.S. Patent No. 11,882,883.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are substantially anticipated by those of ‘883, with the following exceptions:
Regarding claim 1, ‘883 does not recite “the channel having a longest dimension extending toward the base”. However, the extent of the “longest dimension” of the channel and whether or not that dimension extends toward the base essentially speaks to the relative dimensions and proportions of the channel and/or shape of the base, for example. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘883 claims such that a longest dimension of the channel extends toward the base since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that the configuration of a claimed structure is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed structure was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for either the relative dimensions of the channel (e.g. paragraph 82) or the overall shape of the base.
Regarding claim 11, in view of a similar limitation in claim 1, and to the extent that “a finger of a support of the heater assembly” pertains to some non-positively recited aspect of the article worked upon, and, as noted above, “A claim is only limited by positively recited elements” (MPEP 2115), then the slide is presumably “configured to” perform the claimed function, depending on the arrangement of the “support of the heater assembly” with respect to the wick, since it is capable of sliding and thus applying force and moving another object.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of ‘883 in view of Shibuya et al.
The claims of ‘883 recite an apparatus substantially as claimed except for wherein the locking finger is rotatably attached to the base. However, Shibuya teaches a locking finger (clamp 51/51a/51b) rotatably attached to a base (paragraph 35). It would have obvious to have made the locking finger of ‘883 rotatably attached to the base in order to have provided a level of adjustability thereto. Furthermore, it has been held that the provision of adjustability, where needed, involves routine sill in the art. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954).
Claims 1-8 and 11-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of U.S. Patent No. 11,882,884.
The analysis applied to ‘883 above applies similarly to the claims of ‘883 since the claims are identical, with the exception of ‘884 reciting “nicotine” rather than “non-nicotine”. However, as noted above, the intent to use the apparatus for nicotine vs. non-nicotine articles does not limit the scope of apparatus and thus does not result in any further patentable distinction.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of ‘884 in view of Shibuya et al.
The claims of ‘884 recite an apparatus substantially as claimed except for wherein the locking finger is rotatably attached to the base. However, Shibuya teaches a locking finger (clamp 51/51a/51b) rotatably attached to a base (paragraph 35). It would have obvious to have made the locking finger of ‘884 rotatably attached to the base in order to have provided a level of adjustability thereto. Furthermore, it has been held that the provision of adjustability, where needed, involves routine sill in the art. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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