UNITED STATES PATENT AND TRADEMARK OTTICE
`
`UNITED STATES DEPART3/IENT OF COM1\/IERCE
`United States Patent and Trademark Office
`Addlthhi COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www 1\spto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`14/244,376
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`34055
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`04/03/2014
`
`Lik Hon
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`111971.8012.US04
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`2981
`
`7590
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`09/04/2014
`
`PERKINS Co1E LLP — LOS General
`POST OFFICE BOX 1247
`SEATTLE, VVA 98111-1247
`
`EMMINER
`MAYES»D101\NE WALLS
`ART UNIT
`PAPER NIJVIBER
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`1747
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/O4/2014
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`ELECTRONIC‘
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`patentprocnrement@perkinscoie.com
`
`PTOL—90A (Rev. 04/07)
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`Page 1 of 6
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`

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`Application No.
`14/244,376
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`App|icant(s)
`HON, LIK
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`rffgfus
`1747
`DIONNE WALLS MAYES
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE :_3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions oftime may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date ofthis communication.
`If NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date ofthis communication.
`—
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. §133).
`Any reply received by the Office later than three months after the mailing date cfthis communication. even iftimely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event. however, may a reply be timely filed
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`Status
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`1)|Z| Responsive to communication(s) filed on 4/3/2014.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b) This action is non—final.
`This action is FINAL.
`An election was made by the applicant in response to a restriction requirement set forth during the interview on
`j; the restriction requirement and election have been incorporated into this action.
`Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|Z| Claim(s) 1‘ is/are pending in the application.
`5a) Of the above claim(s) ? is/are withdrawn from consideration.
`is/are allowed.
`
`-15 is/are rejected.
`is/are objected to.
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`httfll/r’\’W‘N.’.l.lS")l0. ‘ow atents/init events/
`ft/'index.'s or send an inquiry to f-7Pl-ffeedbackfiustjtocov.
`
`Application Papers
`10)|Zl The specification is objected to by the Examiner.
`11)I:| The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)|Zl Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119( )—(d) or (f).
`Certified copies:
`a)|Z All
`b)|:| Some“ c)|:| None of the:
`1.I:I Certified copies of the priority documents have been received.
`2.IZI Certified copies of the priority documents have been received in Application No. 12/226 818.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2( )).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) D Notice of References Cited (PTO-892)
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`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Offloe
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`3) D jmerview summary (PTQ.4'13)
`Paper No(s)/Mail Date.
`4 El Om I
`)
`er‘ R‘
`
`Part of Paper No./Mail Date 20140827-A
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Specification
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`2.
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`The specification is objected to as failing to provide proper antecedent basis for
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`the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01( ).
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`Independent claims 1, 8 and 10 recite an atomizer assembly housing “plugged or
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`threaded into” the battery assembly housing (or similar words to that effect); however,
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`the specification does not appear to provide support for this recitation.
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`Correction/Amendment in the appropriate manner is requested.
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`Double Patenting
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`3.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 3
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`The USPTO internet Web site contains terminal disclaimer forms which may be
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`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form 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 eTermina| Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD—info—l.jsp.
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`4.
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`Claims 1, 4-8 and 15 are rejected on the ground of nonstatutory double patenting
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`as being unpatentable over claims 1-41 of Han (US. Pat. No. 8,156,944). Although the
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`claims at issue are not identical, they are not patentably distinct from each other
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`because the claims of Han fully encompass the above—referenced claims of the instant
`
`application.
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`5.
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`Claims 1-15 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-15 of copending Application No.
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 4
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`13/740,011. Although the claims at issue are not identical, they are not patentably
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`distinct from each other because the claimed of copending Application No. 13/740,011
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`fully encompass those of the instant application.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Presence of Allowable Subject Matter
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`6.
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`A reading of the claims indicates the presence of allowable subject matter.
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`Independent claims 1, 8 and 10 each disclose subject matter which does not appear to
`
`be taught or suggested by the prior art of record. Namely, the Brooks (US. Pat. No.
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`4,947,874) and Counts et al (US. Pat. No. 5,144,962) references fail to teach or suggest
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`an electronic cigarette having a battery assembly connected to/with an atomizer
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`assembly, wherein said atomizer assembly includes a porous component having a
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`through hole with a heating element in an airflow path in the through hole, and the
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`porous component being in contact with a liquid storage component.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DIONNE WALLS MAYES whose telephone number is
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`(571)272-5836. The examiner can normally be reached on Monday thru Friday, 8:OOA -
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`4:30P EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Richard Crispino can be reached on 571-272-1226. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 5
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/DIONNE WALLS MAYES/
`
`Examiner, Art Unit 1747
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