UNITED STATES PATENT AND TRADEMARK OTTICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVIISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-I 450
`www 1\spLo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/244.376
`
`04/03/2014
`
`Lik Hon
`
`111971.8012iUS04
`
`2981
`
`us/20/2u15
`7590
`34055
`PERKINS COIE LLP - LOS General
`POST OFFICE BOX 1247
`SEATTLE, VVA 98111-1247
`
`EXAMINER
`
`MAYES~D101‘NE WALLS
`
`PAPER NIJVIBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/20/2015
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`patentprocnrement@perkinscoie.co1n
`
`PTOL—90A (Rev. 04/07)
`
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`

`
`Application No.
`14/244,376
`
`App|icant(s)
`HON, LIK
`
`Office Action Summary
`
`AIA (First lnventorto File)
`Art Unit
`Examiner
`§*g‘“S
`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 § MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.t36(a).
`after SIX (6) MONTHS from the mailing date of this 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 of this 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 of this communication. even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event. however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 7/21/15.
`I:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)IZ 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 Ex parte Quayle, 1935 C.D. 11,453 O.G. 213.
`
`Disposition of Claims*
`5)IZI Claim(s) is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`Z13/are allowed.
`-15 is/are rejected.
`j is/are objected to.
`j 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
`htto:/i’wirv'w.usnto. ‘ow atants/init events/'
`it./inclex.'s . or send an inquiry to PPl--lfeedbackfiusrgtocov.
`
`Application Papers
`10)|:| The specification is objected to by the Examiner.
`11)|:| The drawing(s) filed on j 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 t.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)|:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119( )—(d) or (1).
`Certified copies:
`a)|:l All
`b)I:l Some** c)I:l None of the:
`1.I:I Certified copies of the priority documents have been received.
`.
`2.I:I Certified copies of the priority documents have been received in Application No.
`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.
`
`Attachment(s)
`
`1) D Notice of References Cited (PTO-892)
`
`2) IE Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) D interview summary (pTo.4-13)
`Paper No(s)/Mail Date.
`4 D Om _
`)
`er‘ j‘
`
`Part of Paper No./Mail Date 2U150816—A
`
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`Application/Control Number: 14/244,376
`Art Unit: 1747
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Terminal Disclaimer
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`2.
`
`The terminal disclaimer filed on July 21, 2015 disclaiming the terminal portion of
`
`any patent granted on this application which would extend beyond the expiration date of
`
`Application No. 13/740,011 has been reviewed and is accepted. The terminal
`
`disclaimer has been recorded.
`
`Previous Indication of Allowable Subject Matter
`
`3.
`
`Upon further consideration of the pending claims, the Examiner has determined
`
`that the indicated allowability of the instant claims is withdrawn in view of prior art (EP
`
`845220) that has been brought to the Examiner‘s attention. Therefore, the FINALITY of
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`the rejection of the last Office Action, dated April 29, 2015 has been WITHDRAWN.
`
`However, a new rejection is being made based on the above—referenced prior art.
`
`Therefore, PROSECUTION IS HEREBY REOPENED as set forth below.
`
`Claim Rejections - 35 USC § 103
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`4.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
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`Application/Control Number: 14/244,376
`Art Unit: 1747
`
`Page 3
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`5.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`2. Ascertaining the differences between the prior art and the claims at issue.
`3. Resolving the level of ordinary skill in the pertinent art.
`4. Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`6.
`
`Claims 1-5 and 7-14 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over EP 845220.
`
`Regarding independent claim 1, EP 845 220 discloses an electronic cigarette
`
`contained in a casing (12) which is provided in two portions (12a, 12b) wherein a
`
`connecting portion (13) attaches the two. As clearly evident from Fig. 1, the casing
`
`houses a battery assembly (power supply (62)), an atomizer assembly (heater and
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`porous filament (42, 46)), and a liquid storage component (material container
`
`(32))(corresponding to the claimed “an electronic cigarette, comprising: a battery
`
`assembly having a battery assembly housing; an atomizer assembly housing, with the
`
`battery assembly electrically connected to the atomizer assembly; a liquid storage
`
`component in the atomizer assembly housing”).
`
`EP 845 220 discloses a plurality of air intake ports (24) for taking in air into the
`
`casing (12)(corresponding to the claimed “one or more through—air—in|ets in at least one
`
`of the battery assembly housing and the atomizer assembly housing”).
`
`EP 845 220 discloses that its heater (42) is disposed in a gas flow path
`
`(26)(corresponding to the claimed “run-through hole’’) to oppose the discharge ports
`
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 4
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`(35) leading from the material container (32). A liquid-absorbing porous layer (46) is
`
`formed on the surface of the ceramic heater (42) that receives the liquid splash of the
`
`material (corresponding to the claimed "the atomizer assembly including a porous
`
`component having a run-through hole...the porous component in contact with the liquid
`
`storage component").
`
`In the embodiment depicted in Fig. 1, as stated above, EP 845 220 discloses a
`
`“porous component” body (46) on the “heating” body (32). However, in a further
`
`embodiment, depicted in Fig. 13, EP 845 220 also discloses that a heating wire (coil
`
`heater) can be used instead of a ceramic heater. Hence, it would have been obvious to
`
`one having ordinary skill in the art at the time of the invention to combine the porous
`
`component disclosed in Fig.
`
`1 of EP 845220 with the coil heater disclosed in Fig. 13 so
`
`as to result in a heating wire wound on a porous component since, as evidenced by the
`
`EP 845 220, it envisions this arrangement as an option (corresponding to the claimed “a
`
`heating wire in an air flow path through the run-through hole”; the “wherein the porous
`
`component is cylindrical and has a central axis parallel to a longitudinal axis of the
`
`atomizer assembly housing" recitation of claim 4; the “with the heating wire wound in a
`
`spiral having a center axis parallel to the central axis of the porous component"
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`recitation of claim 5; the “an electronic cigarette, comprising: a battery in a first housing
`
`and a liquid storage component in a second housing plugged or threaded into the first
`
`housing; one or more through-air-inlets in one or both of the first housing and the
`
`second housing, and an outlet in the second housing; a cylindrical porous component in
`
`the second housing having a central axis parallel to a longitudinal axis of the second
`
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 5
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`housing, with the porous component in contact with the liquid storage component, and
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`the porous component having a through hole forming atomizing chamber; a heating wire
`
`wound in a spiral in the atomizing chamber and electrically linked to the battery via
`
`heating wire leads passing through a plate at a first end of the porous component, with
`
`the plate fixed in place in the second housing" recitation of claim 8; the “wherein the
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`porous component is cylindrical and has a central axis parallel to a longitudinal axis of
`
`the second housing” recitation of claim 13; the “ with the heating wire wound in a spiral
`
`having a center axis parallel to the central axis of the porous component" recitation of
`
`claim 14).
`
`Regarding claim 2, as evidenced by Fig. 1, EP 845 220 discloses that the
`
`ceramic heater is fixed on the inner surface of the casing main body through a support
`
`member (44)(corresponding to the claimed “atomizer assembly supported by a plate
`
`fixed in place within the atomizer assembly housing”).
`
`Regarding claims 3 and 11-12, while it is not clear that the heating coil (wire)
`
`leads extend through the support member (44) in the electronic cigarette of EP 845220,
`
`absent any evidence to the contrary, it appears that the placement of the wire leads in
`
`this nearby structure would merely be one of a few options, considered a design choice,
`
`to one having ordinary skill in the art (corresponding to the “with wire leads of the
`
`heating wire extending through the plate” recitation of claim 3; the “with heating wire
`
`supported by a plate fixed in place within the second housing” recitation of claim 11; the
`
`“further comprising wire leads extending through the plate and connecting to the heating
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`wire” recitation of claim 12).
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 6
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`Regarding claims 7 and 9, and independent claim 10, as evidenced by Fig. 1, EP
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`825 220 discloses an adjusting ring (55) having a plurality of openings can be disposed
`
`on the casing (12) around the outer air inlet holes (54) so that the amount of air flowing
`
`into the cooling chamber (52) can be adjusted (i.e., restricted) by adjusting the position
`
`of the ring (55) with respect to the holes (54)(corresponding to the claimed “a restriction
`
`component adjacent to a first end of the porous component with the restriction
`
`component having a restriction hole having an inner diameter less than an inner
`
`diameter of the run—through hole” (claims 7, 9); the “an electronic cigarette, comprising:
`
`a battery in a first housing and a liquid storage component in a second housing plugged
`
`into or threaded into the first housing; one or more through—air—inlets in one or both of
`
`the first housing and the second housing, and an outlet in the second housing; a porous
`
`component in the second housing with the porous component in contact with the liquid
`
`storage component, and with the porous component having a tubular run—through
`
`chamber; a heating wire in the run—through chamber and electrically linked to the
`
`battery; and a restriction component at a first end of the run—through chamber, with the
`
`restriction component having a restriction hole with an inner diameter less than an inner
`
`diameter of the run—through chamber” (claim 10)).
`
`7.
`
`Claims 6 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over EP 845220 in view of Brooks (US. Pat. No. 4,922,901).
`
`Regarding claims 6 and 15, there does not appear to be any disclosure regarding
`
`whether the material container (32) of EP 845 220 comprises a “perforated component”;
`
`however, the Brooks reference serves as evidence that liquid material to be aerosolized
`
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`Application/Control Number: 14/244,376
`Art Unit: 1747
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`Page 7
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`in an electronic cigarette-type device can be provided on a porous material (porous,
`
`meaning “containing ho|es")(col. 3, lines 47-49). Hence, it would have been obvious to
`
`one having ordinary skill in the art at the time of the invention to have fabricated the
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`material container (32) utilizing porous material as such is known to contain liquid for
`
`subsequent aerosolization (corresponding to the claimed “wherein the liquid storage
`
`component comprises a perforated component").
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DIONNE WALLS MAYES whose telephone number is
`
`(571)272-5836. The examiner can normally be reached on Tuesday and Thursday,
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`8:OOA - 6:30P EST.
`
`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 8
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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.
`
`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
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/DIONNE WALLS MAYES/
`
`Examiner, Art Unit 1747
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