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 1-10) 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 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.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Liu (WO2016065605, cited in IDS, with reference to translation).
Claim 1: Liu discloses an apparatus (4) for assembling a heater assembly for a nicotine pod assembly (intended use, see below), the apparatus comprising: 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); a holder (clamp 47) aligned with the channel (axially disposed to the right thereof), the holder configured to secure a support of the heater assembly (e.g. heating wire, page 6, lines 237-239, noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly); and a slide (e.g. 42 moves by 45 with rails and screw mechanism - see Figs. 1, 2, 6; page 10, lines 399-405) configured to move in a first direction (horizontally, left-right in Fig. 1) transverse to a second direction parallel to a longest dimension of the channel (a longest dimension of the channel could be a diagonal therethrough, such that the slide moves horizontally and thus transversely or non-parallel to that diagonal) such that the slide is configured to contact the heater assembly (the wire) supported by the holder and compress the wick (intended use).
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: Liu discloses a wick retainer (e.g. clamp 41/4121 or 432) 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 (e.g. portions 43, 431, 432) is configured to rotate (page 10, lines 388-393) about a fastener (“fastener” being broad and could be interpreted as any member that fastens the rotating parts to the remainder of the structure, such as unlabeled parts in Fig. 8 such as what appears to be a bearing).
Claim 5: Liu discloses a block fixed to the fastener (“block” being broad and could refer to any structure supporting the aforementioned fastener, see Fig. 8, or unlabeled support block beneath 43/44 evident in Fig. 1), wherein the wick feed is rotatably attached to and supported by the block (such as via the implicit bearing as discussed above).
Claim 6: Liu discloses a wick retainer (e.g. 432) extending parallel and adjacent to the wick feed for retaining the wick in the channel (Fig. 8), wherein the wick retainer is fixed to the wick feed such that the wick retainer is rotatably attached to the block (page 10, lines 375-376).
Claim 7: The wick feed is configured to rotate about an axis extending parallel to the first direction (i.e. the horizontal axis, Fig. 8).
Claim 8: 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 9: Liu discloses a guide at least partially defining a longitudinal channel through which the slide moves (e.g. channels formed by the rails on which the slide is supported – see Figs. 2 and 6).
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ward et al. (U.S. PGPub 2014/0157583, cited in the IDS).
Claim 1: Ward discloses an apparatus (200) for assembling a heater assembly for a nicotine pod assembly (intended use, see below), the apparatus comprising: 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); a holder (e.g. clamps 236, heating element feeder 226, and/or tracks 216) aligned with the channel (“aligned” being broad and each of these elements is in some form of alignment, e.g. coaxial, parallel, or otherwise intentionally oriented with respect to, the channel), the holder configured to secure a support of the heater assembly (noting that “support” is not positively recited and is not particularly defined other than as being part of the heater assembly); and a slide (212 or 232) configured to move in a first direction transverse to a second direction parallel to a longest dimension of the channel (a longest dimension of the channel could be a diagonal therethrough, such that the slide 212 moves along the wick axis and thus transversely or non-parallel to that diagonal, see paragraphs 45-46 and 49; alternatively, slide 232 moves perpendicular to the axial length of the channel along axis 230, see paragraph 49) such that the slide is configured to contact the heater assembly supported by the holder and compress the wick (to the extent that the heater assembly pertains to some non-positively recited aspect of the article worked upon, and, as noted below, “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 heater assembly with respect to the wick, since it is capable of sliding and thus applying force and moving another object).
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 268 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: 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 (paragraph 53) about a fastener (“fastener” being broad and could be interpreted as any member that fastens the rotating parts to the remainder of the structure, such as 270 or 272 or bearings thereof – paragraph 59)
Claim 5: Ward further discloses a block (270 or 272) fixed to the base, wherein the wick feed is rotatably attached to and supported by the block (paragraph 59).
Claim 6: 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), wherein the wick retainer is fixed to the wick feed such that the wick retainer is rotatably attached to the block (paragraphs 58-59).
Claim 7: The wick feed is configured to rotate about an axis extending parallel to the first direction (e.g. the slide axis of 212).
Claim 8: The channel 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. As noted above, a claim is only limited by positively recited elements, and an apparatus is not necessarily limited by the articles worked upon).
Claims 1-2 and 8-9 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 nicotine pod assembly (intended use), the apparatus comprising: a wick feed defining a channel (17) configured to receive a wick structured to draw a nicotine pre-vapor formulation via capillary action (the channel 17 would presumably be capable of this function); a holder (e.g. 18/19 or 20) aligned with the channel (“aligned” being broad and each of these elements is in some form of alignment, e.g. coaxial, parallel, or otherwise intentionally oriented with respect to, the channel), the holder configured to secure a support of the heater assembly (the holder is presumably capable of this function); and a slide (15) configured to move in a first direction (toward and away from 12 – column 3, 36-39) transverse to a second direction parallel to a longest dimension of the channel (the channel is angled relative to the first direction and thus transverse) such that the slide is configured to contact the heater assembly supported by the holder and compress the wick (it is presumed capable of this function).
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 8: The channel in the wick feed is configured to guide the wick into alignment with a heater on the support (it is presumed capable of this function).
Claim 9: Yoneda further discloses a guide at least partially defining a longitudinal channel (16) through which the slide moves (column 3, lines 36-39).
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 3 is 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.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12,439,974 (‘974).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The claims of ‘974 substantially anticipate or imply the limitations of instant claim 1, noting the preamble and wick feed limitations are verbatim.
The holder of ‘974 is implicitly “aligned with the channel” in that “aligned” is broad such that any alignment would apply, such as a common line extending between these two features. The holder is configured to secure a support of the heater assembly as implied by its locking finger to hold a loop thereof.
The slide of ‘974 is configured to move in a first direction transverse to a second direction parallel to a longest dimension of the channel in that the slide is configured to move along the horizontal surface of the base in a horizontal direction and the channel has a longest dimension (length) orthogonal to the horizontal surface of the base.
The slide of ‘974 is configured to contact the heater assembly (a finger thereof) supported by the holder and compress the wick as implied in claim 9.
Claims 2-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over ‘974 in view of Liu.
Claim 2: The claims of ‘974 do not further recite the limitations of instant claim 2. However, Liu teaches a wick retainer (e.g. clamp 41/4121 or 432) extending parallel and adjacent to the wick feed for retaining the wick in the channel (page 7, lines 271-286). 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 claims of ‘974 in view of Liu in order to have better secured the wick in the apparatus.
Claim 3: The claims of ‘974 do not further recite the limitations of instant claim 3. However, Liu teaches 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). 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 claims of ‘974 in view of Liu in order to have cut the wick to an appropriate length for use after assembly.
Claim 4: The claims of ‘974 do not further recite the limitations of instant claim 4. However, Liu teaches the wick feed (e.g. portions 43, 431, 432) is configured to rotate (page 10, lines 388-393) about a fastener (“fastener” being broad and could be interpreted as any member that fastens the rotating parts to the remainder of the structure, such as unlabeled parts in Fig. 8 such as what appears to be a bearing). 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 claims of ‘974 in view of Liu in order to have allowed for winding a heater wire for assembly with the wick.
Claim 5: Following from the above, Liu further discloses a block fixed to the fastener (“block” being broad and could refer to any structure supporting the aforementioned fastener, see Fig. 8, or unlabeled support block beneath 43/44 evident in Fig. 1), wherein the wick feed is rotatably attached to and supported by the block (such as via the implicit bearing as discussed above).
Claim 6: Liu further discloses a wick retainer (e.g. 432) extending parallel and adjacent to the wick feed for retaining the wick in the channel (Fig. 8), wherein the wick retainer is fixed to the wick feed such that the wick retainer is rotatably attached to the block (page 10, lines 375-376).
Claim 7: Liu further discloses that The wick feed is configured to rotate about an axis extending parallel to the first direction (i.e. the horizontal axis, Fig. 8).
Claim 8: The claims of ‘974 do not further recite the limitations of instant claim 8. However, Liu teaches 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). 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 claims of ‘974 in view of Liu in order to have arranged the apparatus components as necessary for assembly of the heater.
Claim 9: The claims of ‘974 do not further recite the limitations of instant claim 9. However, Liu teaches a guide at least partially defining a longitudinal channel through which the slide moves (e.g. channels formed by the rails on which the slide is supported – see Figs. 2 and 6). 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 claims of ‘974 in view of Liu in order to have provided structural guidance of the slide’s linear movement.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No.12,439,975 (‘975).
Claims 2-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over ‘975 in view of Liu.
The above assessments for ‘974 applies similarly here since the claims of ‘975 only differ by reciting a “non-nicotine” pod assembly rather than a “nicotine” pod assembly, and a wick structured to draw a non-nicotine pre-vapor formulation via capillary action rather than a 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.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if 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:
None of the prior art relied upon further recite that the guide defines a slot, and the slide includes a pin extending from a top surface of the slide through the slot, the pin extending through the slot in a direction orthogonal to the first direction.
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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