~YAND~
`
`. ,~~ UNITED STA TES p A TENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P,O, Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO,
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO,
`
`CONFIRMATION NO,
`
`14/370,410
`
`07/02/2014
`
`Julien Plojoux
`
`437393US118PCT
`
`3169
`
`22850
`7590
`04/05/2016
`0BL0N, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 DUKE STREET
`ALEXANDRIA, VA 22314
`
`EXAMINER
`
`FELTON, MICHAEL J
`
`ART UNIT
`
`PAPER NUMBER
`
`1747
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/05/2016
`
`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):
`patentdocket@oblon.com
`oblonpat@oblon.com
`ahudgens@oblon.com
`
`PTOL-90A (Rev. 04/07)
`
`Ex. 2034-0001
`
`

`

`Application No.
`14/370,410
`
`Applicant(s)
`PLOJOUX ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`I
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`MICHAEL J. FELTON
`
`Art Unit
`1747
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`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).
`
`Status
`1 )~ Responsive to communication(s) filed on 7/2/2014.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)O This action is FINAL.
`2b)~ This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)0 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)~ Claim(s) 16-29 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 16-29 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ 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
`http:i/\lvww.usoto.gov!patents/init events/pph/index.isp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11 )0 The drawing(s) filed on __ is/are: a)O accepted or b)O 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)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)O All b)O Some** c)O None of the:
`Certified copies of the priority documents have been received.
`1.0
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment{s)
`1) ~ Notice of References Cited (PTO-892)
`
`2) ~ Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date __ .
`
`3) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20160331
`
`Ex. 2034-0002
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 2
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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.
`
`3.
`
`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.
`
`4.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`Ex. 2034-0003
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 3
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
`
`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`5.
`
`Claims 16-29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Counts et al. (US 5,954,979) in view of Collins et al. (US 5,505,214).
`
`6.
`
`Regarding claims 16, 19, 20, 23, and 28, Counts et al. disclose an aerosol
`
`generating system 21 comprising an aerosol-forming article 23 comprising an aerosol(cid:173)
`
`forming substrate 80 and a mouthpiece portion 94 for allowing a user to draw air
`
`through the substrate and an aerosol generating device 25, the device comprising a
`
`housing 31 having proximal and distal ends and comprising at least one external
`
`surface and one internal surface, the internal surface defining an open ended cavity 27
`
`at the proximal end of the housing in which the aerosol-forming substrate is received
`
`(see figure 1 ), the cavity having a longitudinal extent between its proximal and distal
`
`ends (see figure 6)1 a heater element 37 within the cavity configured to heat an aerosol(cid:173)
`
`forming substrate received in t!1e cavity, and air inlets 324, wherein the system
`
`comprises a first air flow channel extending from the air inlets to a distal end of the
`
`cavity, wherein the first air flow channel 4 i 0 extends between the heater and the
`
`external surface of the housing along at least a portion of the longitudinal extent of the
`
`cavity (see figure 6), and a second air flow channel 420+466 extending from the distal
`
`end of the cavity to the mouthpiece portion (see figure 10).
`
`Ex. 2034-0004
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 4
`
`7.
`
`Counts et al. do not disclose the heater element is in the form of a pin or blade
`
`that extends into the substrate. However, Collins et al. disclose an analogous aerosol
`
`device and disclose that heating element and substrate may be arranged so that the
`
`heating element blade/pin enters into the substrate (see Figure 7, below and col. 10,
`
`line 65-col. 111 line 17) in addition to the arrangements where the heating elements
`
`are outside the substrate as shown in Counts et al. It would have been obvious to one
`
`of ordinary skill in the art at the time of invention to use this alternate arrangement of
`
`heating element and substrate as disclosed by Collins et al.
`
`8.
`
`Regarding claims 17 and 29, Counts et al. discloses that a frit in the air flow path,
`
`"renders a desired resistance to draw ("RTD") at a predetermined flow rate ... in the
`
`range of approximately 70 to 100 mm of water." (col. 13, 36-49).
`
`9.
`
`Regarding claim 18, because the frit is within the flow channel of Counts et al.
`
`and achieves the desired RTD, one of ordinary skill in the art would expect that the flow
`
`channel (and frit) would contribute greater than 10% of the entire RTD. In addition, the
`
`Ex. 2034-0005
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 5
`
`contribution of the channels to RTD is functional language. A claim containing a
`
`"recitation with respect to the manner in which a claimed apparatus is intended to be
`
`employed does not differentiate the claimed apparatus from a prior art apparatus" if the
`
`prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham,
`
`2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, RTD is based on flow rate,
`
`and would change depending on the use of the device.
`
`10.
`
`Regarding claims 21 and 22, Counts et al. do not disclose a plurality of air inlets.
`
`However, it would have been obvious to one of ordinary skill in the art at the time of
`
`invention to duplicate the air inlets so they would be less likely to be blocked
`
`accidentally during use, since it has been held that mere duplication of essential
`
`working parts of a device involves only routine skill in the art. St. Regis Paper Co. v.
`
`Bemis Co., 193 USPQ 8.
`
`11.
`
`Regarding claims 24 and 25, Counts et al. do not disclose that the substrate
`
`holder is removable. However, it would have been obvious to one of ordinary skill in the
`
`art at the time of invention to make the device in pieces that are separable, because it
`
`has been held that construction a formerly integral structure in various elements
`
`involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. It would
`
`have been obvious to one of ordinary skill in the art to make the device of Counts et al.
`
`and Collins et al. separable so that the device can be cleaned and parts such as the
`
`heaters replaced when necessary.
`
`12.
`
`Claim 26 recites the functional language "wherein the heater element is
`
`configured to heat the aerosol-forming substrate continuously during operation of the
`
`Ex. 2034-0006
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 6
`
`device. A claim containing a "recitation with respect to the manner in which a claimed
`
`apparatus is intended to be employed does not differentiate the claimed apparatus from
`
`a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the
`
`claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In particular,
`
`the device of Counts et al. can be used to smoke one puff, resulting in a continuous
`
`heating of the substrate for the entire puff.
`
`13.
`
`Regarding claim 27, Collins et al. disclose that the diameter of the flavor unit is 7-
`
`10 mm. Although the drawings are not to scale, one of ordinary skill in the art would
`
`have interpreted the device shown in figure 4 of Collins et al. to be only slightly larger in
`
`diameter than the flavor unit (i.e. 7-10 mm). It would have been notoriously obvious that
`
`the invention of Collins et al. would be sized to resemble conventional cigarettes which
`
`are typically 6-10 mm in diameter.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MICHAEL J. FELTON whose telephone number is
`
`(571 )272-4805. The examiner can normally be reached on Monday and Wednesday(cid:173)
`
`Friday, 7:30 AM to 4:30 PM EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Michael H. Wilson can be reached on 571-270-3882. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Ex. 2034-0007
`
`

`

`Application/Control Number: 14/370,410
`Art Unit: 1747
`
`Page 7
`
`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.
`
`/MICHAEL J FELTON/
`Primary Examiner, Art Unit 1747
`
`Ex. 2034-0008
`
`