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 27-58 of the instant reissue application are pending.
Specification
The amended specification filed 13 February 2026 fails to comply with 37 CFR 1.173 because in the proposed amendment to the first paragraph of page 1 the added subject matter is not indicated by underlining and omitted subject matter is indicated by way of strike through not single brackets. It is noted that MPEP 1453 establishes that matter to be added must be underlined and 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.
Impermissible Recapture
Claims 27-58 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 28-58 violate the recapture rule.
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.
Claims 40-44 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 40 recites the limitation "the plurality of tank connector posts” in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim as a plurality of tank connector posts is never introduced either in claim 40 or any of the claims from which claim 40 depends. For the purpose of examination, the examiner will interpret a system which meets the limitations of claims 27 and 31 and which comprise a processor that activates the system by providing electrical energy to the coil via a metallic strip as meeting the limitations of claim 40. Claims 41-44 are rejected for inheriting the deficiency of claim 40. Appropriate action is required.
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 27-29, 39, 45-48, 52-54, and 56-58 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buchberger 2026/0249024 (“Buchberger”).
Regarding claim 27, Buchberger discloses a system for vaporizing a liquid containing nicotine wherein the system 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 system.
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 wick.
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Annotated Figure 9 of Buchberger 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 26 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]
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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.
Figure 29B of Buchberger illustrating the connection of the
planar composite to the plate-like contact.
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The inhaler part 1 is configured to removably receive the inhaler component 2 and comprises a battery 12 and an integrated switching circuit 104 coupled to the battery [0116, 0159]. The inhaler part 1 corresponds to the claimed housing comprising a receptacle and the battery 12 corresponds to the claimed battery. Buchberger teaches that the integrated switching circuit 104 processes a large part of all the electrical signals of the inhaler and carries out control operations [0159]. As such, the integrated switching circuit 104 corresponds to the claimed processor coupled to the battery.
Figure 8 of Buchberger illustrating an inhaler part comprising
metallic contact elements
Buchberger further teaches two metallic contact elements 20 which extend into the inhaler part 1 and which are electrically coupled to the battery [0119, 0153, Figs. 8 and 9]. The metallic contact elements 20 correspond to the claimed metallic post in the receptacle.
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 39, Buchberger teaches that the integrated switching circuit 104 may be a microprocessor [0159].
Regarding claims 45-47, Buchberger teaches a display coupled to the integrated switching circuit 104 wherein the display indicates the charge state of the battery [0162].
Regarding claim 48, Buchberger teaches a tube portion which connects that inhaler component 2 to the mouthpiece 5 [Figs. 1A-C]. Given that the inhaler component 2 comprises an air outlet in order for the air to exit the disclosed system, the tube portion of the system must couple the mouthpiece to an air outlet as claimed.
Regarding claim 52, Buchberger 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 53, Buchberger teaches that the wick may be formed from a ceramic material [0054].
Regarding claim 54, Buchberger teaches an inhaler component 2 having a hollow rectangular shape [0112, Fig. 1].
Regarding claims 56 and 57, Buchberger teaches recharging the battery 12 via a charging plug 107 which is arranged on the end side of the inhaler part 1 [0164].
Regarding claim 58, Buchberger teaches that the liquid to be vaporized comprises nicotine which reads on the claimed 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 31, 33-36, 38, and 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Buchberger in view of Goodman et al., US 2013/0199528 (“Goodman”).
Regarding claim 31, as is described above, Buchberger discloses a system for vaporizing a liquid containing nicotine which meets the limitations of claim 27. Buchberger is silent regarding the system comprising a heater element having a coil configuration.
Goodman discloses a system for vaporizing a liquid wherein the system 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 and Goodman are both directed towards system for vaporizing a liquid wherein the system 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 of the device of Buchberger 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 system would have comprised a coiled heater element.
Regarding claim 33, Buchberger teaches that the heater element of the planar composite has a resistance of approximately 310 mOhm (i.e., sub-ohm) [0128]
Regarding claim 34, Buchberger does not teach or suggest that the liquid to be vaporized is transferred to the planar composite 22 (which comprises the heater element) by any means other than the wick. As such, Buchberger reasonably teaches or suggests liquid transfer to the coil only via the wick as claimed.
Regarding claims 35-38, Buchberger 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 electrode couple to a first end of the coil portion and a second electrode coupled to a second end of the coil portion as recited in claim 35, Further, the plate-like contacts 23 which are connected to the ends of the planar composite 22 would correspond to the positive and negative electrical terminals recited in claims 36 and 37. Additionally, Buchberger 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].
Regarding claims 40 and 41, Buchberger teaches that the integrated switching circuit 104 processes the electrical signals control the operation of the disclosed system [0159]. Further, the metallic plate-like contact 23a (corresponding to the claimed metallic strip) supplies electrical energy to the planar composite [0156]. The control operations constitute the supply of electrical energy to the heating element of the planar composite 22 which corresponds to the claimed processor configured to execute instructions to activate the system by providing electrical energy from the battery to the coil via the metallic strip recited in claim 40. Additionally, Buchberger teaches that the supplying of electrical energy causes the heating element of the planar composite to heat [0061] which corresponds to the claimed coil is configured to vaporize the liquid upon activation by the electrical energy.
Regarding claim 42, Buchberger teaches that the microprocessor 104 can render the system unusable by certain means such that no further drawings or inhalations can be carried out [0163]. This prevents misuse of the inhaler, for example, a user attempting to continue to use the system beyond the changeover interval [0163]. In order for the microprocessor to make a determination regarding the changeover interval, it must necessarily store information regarding when the liquid container 4 was replaced (i.e., it must have memory coupled thereto). Further, in order for the microprocessor to render the system inoperable beyond the changeover interval, it must necessarily have memory to store software including instructions that execute the activation of the means which render the system unusable.
Regarding claims 43 and 44, Buchberger teaches that system may be configured to prevent inhalation until the identity of given user ascertained by means of a fingerprint or code which is input into the device via a touch screen [0163]. Such a configuration would necessarily comprise a processor configured to execute instruction in response to the inputting of a code or fingerprint information by a person.
Claim 51 is rejected under 35 U.S.C. 103 as being unpatentable over Buchberger in view of Monsees, US 2018/0070647 (“Monsees”).
Regarding claim 51, as is described above, Buchberger discloses a system for vaporizing a liquid containing nicotine which meets the limitations of claim 27. Buchberger 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 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 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 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 55 is rejected under 35 U.S.C. 103 as being unpatentable over Buchberger in view of Sullivan, US 2015/0257447 (“Sullivan”).
Regarding claim 55, as is described above, Buchberger discloses a system for vaporizing a liquid containing nicotine which meets the limitations of claim 27. Further, Buchberger teaches forming the housing parts of the disclosed system from a plastic material.
Buchberger 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 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.
Conclusion
Claims 27-58 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/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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