DOCKET NO: 437393US1 l 8PCT
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`IN THE lJNITED STATES PATENT & TRADEMARK OFFICE
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`IN RE APPLICATION OF
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`JULIEN PLOJOUX, ET AL.
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`EXAMINER: FELTON, MICHAEL J.
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`SERIAL NO: 14/370,410
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`FILED: JULY 2, 2014
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`GROUP ART UNIT: 1747
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`FOR: AN AEROSOL GENERATING
`DEVICE AND SYSTEM WITH
`IMPROVED AIRFLOW
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`REQUEST FOR RECONSIDERATION
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`COMMISSIONER FOR PATENTS
`ALEXANDRIA, VIRGIN[A 22313
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`Commissioner:
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`In response to the Office Action dated April 5, 2016, Applicant respectfully requests
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`the Examiner's reconsideration in view of the following remarks.
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`Remarks begin on page 2 of this paper.
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`Ex. 2035-0001
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`

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`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`Regarding the Office Action and the Claims:
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`REMARKS
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`Claims 16-29 are pending and under examination. Applicant respectfully requests
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`favorable reconsideration of this application, and traverses the Examiner's rejection of
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`claims 16-29 under 35 U.S.C. § 103(a) as allegedly being unpatentable over U.S. Patent
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`No. 5,954,979 ("Counts") in view of U.S. Patent No. 5,505,214 ("Collins").
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`Rejection under 35 U.S.C. § 103(a):
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`The Office cannot properly ascertain the differences between the claimed invention
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`and the prior art ,~·ithout consideration of both the claimed invention and the prior art as a
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`whole. See M.P.E.P. § 2141(II); see also§ 2142.02. Even in view of such consideration,
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`C0tmts in view of Collins would not have put the public in possession of the claimed
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`invention. And, a person of ordinary skill in the art would not have looked to either of these
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`references if attempting to produce the claimed invention. Here, a review of the cited
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`references as a whole, including the cited portions therein, reveals that they fail to support the
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`Office Action"s allegations of obviousness.
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`The Office Action admitted that "Counts et a1. do not disclose the heater element is in
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`the form of a pin or blade that extends into the substrate"-a feature recited in independent
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`claims 16 and 28. Office Action, p. 4. It then asserted that it would have been obvious to use
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`the alternate arrangement of Collins to cure these deficiencies. See id.
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`\Vithout conceding to any of these assertions, Applicant respectfully submits that
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`Counts and Collins, taken separately or in combination, still do not disclose or suggest at
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`least "wherein a distal end of the first air flow channel and a distal end of the second air flow
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`channel meet at an air outlet positioned around a base of the heater element" -a feature also
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`recited in independent claims 16 and 28.
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`2
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`Ex. 2035-0002
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`First, this feature is not addressed anywhere in the Office Action. For example, the
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`claim terms "meet/' "an air outlet," and "a base" do not appear in the Office Action. The
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`Office Action is therefore not "complete as to all matters," including "the patentahility of the
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`invention as claimed." Rule l.104(b) and Ll04(a), respectively. So, the next action-if not
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`a Notice of Allowability-cannot be made final. Nevertheless, this paper constitutes a
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`complete reply in compliance with each of Rule 1.1 l l(a), (b), and (c).
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`Second, a combination of Counts and Collins would not meet the above-quoted claim
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`element. This is true even in consideration of the Office Action's asse11ed obviousness of
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`using the "alternate arrangement of [the] heating element and substrate as disclosed by
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`Collins" in an attempt to remedy Counts' deficiency of failing to disclose the heater element
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`is in the form of a pin or blade that extends into the substrate. Office Action, p. 4.
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`For example, as depicted in Fig. 7 of Collins, the plurality of heaters 123 are arranged
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`to heat material 127 in disposable unit 121. See Collins, Fig. 7 and col. 11, 11. 9-17. Heater
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`elements 123, however, are isolated from airflow through the device. For example, plugs 137
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`and 47 "are air-tight," and plug 47 "includes an air-tight hole" for vvires 48 to pass from
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`control circuit 24 to heating elements 123. See id., col. 11, 11. 26-33. This is consistent with
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`Collins' teaching that "[t]he permanent heaters of the present invention are isolated from the
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`tobacco t1avor air passageway and aerosol cavity. This isolation minimizes condensation of
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`aerosol onto the heaters and therefore minimizes aerosol residue reheating and undesirable
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`flavor generation." Id., col. 4, 1. 66 to col. 5, 1. 3; see also col. 4, 11. 52-56. This is also
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`consistent with Collins' teaching that "it would therefore be desirable to be able to provide an
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`electrically-heated smoking article in which the heating elements are reusable, and of which
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`the volume of disposable portions is thus minimized." Id., col. 2, 11. 12-15.
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`This arrangement is entirely counter to that of C0tmts. Instead, Counts teaches
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`arrangements where airflow is specifically directed past, around, or near the heater elements.
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`3
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`Ex. 2035-0003
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`

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`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`See, e.g., Counts, Figs. 2, 3, 6, 7, and 10, and col. 4, 11. 25-28; col. 6, 11. 1-14; col. 12,
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`11. 14-16; and col. 16, 11. 25-31.
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`So, using the aITangement of heater and substrate as taught in Fig. 7 of Collins. in the
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`system of Counts, would not result in the claimed "distal end of the first air flow channel and
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`a distal end of the second air flow channel meet[ing] at an air outlet positioned around a base
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`of the heater element," as recited in independent claims 16 and 28.
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`This also indicates that the cited references cannot be combined as proposed in the
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`Office Action, because Counts and Collins essentially teach away from their proposed
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`combination. It is impermissible to combine cited references where the references teach
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`away from their combination. See M.P.E.P. § 2145(X)(D)(2). This is a significant factor to
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`be considered in an obviousness determination. See M.P.E.P. § 2145(X)(D)(l) ("The Nature
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`of the Teaching Is Highly Relevant"), which explains that "[a] prior art reference that
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`'"teaches away" from the claimed invention is a significant factor to be considered in
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`determining obviousness."
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`And, the proposed combination of Counts with Collins is improper, at least because it
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`would change the principle of operation of the cited references. "If the proposed
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`modification or combination of the prior art would change the principle of operation of the
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`prior art invention being modified, then the teachings of the references are not sufficient to
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`render the claimsprimafacie obvious." M.P.E.P. § 2143.0l(VI) (internal citation omitted).
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`Here, the system of Counts relies on the heater elements breaking the wrapper of the
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`cigarette 23 to allow air to be drawn transversally into the cigarette. See, e.g., Counts.
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`col. 16, 11. 38-41. The benefit of this arrangement is that it mimics the resistance to draw
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`characteristics of a conventional cigarette. See id., col. 2, 11. 44-48. So, with each successive
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`puff on the cigarette, another breach is formed in the wrapper and the resistance to draw
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`4
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`Ex. 2035-0004
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`reduces. This mimics a conventional cigarette, which has a resistance to draw that reduces as
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`the cigarettes get shorter/combust.
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`But if the heating element and substrate arrangement described in Counts were
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`replaced with the heating element and substrate arrangement described in Collins, the system
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`of Counts would no longer operate in the way it was designed and described. There would be
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`no breaching of a wrapper, and the resistance to draw would remain unchanged throughout
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`operation. This would change the principle of operation of Counts and render it unable to
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`operate as intended. So, the Office Action cannot rely on a combination of Counts and
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`Collins. See M.P.E.P. § 2143.0l(VI).
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`Based on similar reasoning, Counts and Collins cannot be combined as proposed in
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`the Office Action, because the references teach away from their proposed combination. It is
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`also impem1issible to combine cited references where the references teach away from their
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`combination. See M.P.E.P. § 2145(X)(D)(2). This is a significant factor to be considered in
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`an obviousness determination. See M.P.E.P. § 2145(X)(D)(l) ("The Nature of the Teaching
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`Is Highly Relevant"), which explains that "[a] prior art reference that "leaches away" from
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`the claimed invention is a significant factor to be considered in determining obviousness."
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`The Office Action could not have reached an obviousness conclusion based on Counts
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`and Collins without the impermissible use of the hindsight benefit afforded by Applicant's
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`disclosure. See M.P.E.P. § 2142. The facts that may be gleaned from Counts and Collins
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`would not have put the public in possession of the claimed invention, and do not enable a
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`conclusion of obviousness. Modification of Counts and/or Collins also would not have been
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`predictable to a person of ordinary skill in the art in seeking to achieve the claimed features.
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`Applicanf s claims thus do not read on Counts and Collins, whether these references
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`are considered separately or in combination. The pending claims are therefore nonobvious
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`and should be allowable. Applicant respectfully requests withdrawal of the rejection.
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`5
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`Ex. 2035-0005
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`

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`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`Additional Remarks Regarding Case Law Citations in Office Action:
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`Ex varte Masham. 2 USPO2d 1647 (Bd. Pat. App. & Inter. 1987)
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`The Office Action also asserted that the language of dependent claim 18 includes
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`"functional language" and would not be given patentable weight, citing Ex parte Afashmn for
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`support. See Office Action, pp. 4-5. It alleged that "[i]n this case, RTD is based on flow rate,
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`and would change depending on the use of the device." See id., p. 5.
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`Applicant respectfully disagrees. First, functional limitations are permissible and
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`"must be evaluated and considered, just like any other limitation of the claim, for "vhat it
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`fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is
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`used." M.P.E.P. § 2173.0S(g). Second, the alleged "change depending on the use of the
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`device" is misplaced and contrary to Applicant's disclosure. See id., § 2114(II).
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`Here, the recitation in claim 18 that the aerosol generating device "provides greater
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`than l 0%i of the RTD through the first and second air flow channels" would have fairly
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`conveyed a particular configuration of the claimed first and second air flow channels in view
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`of the supporting disclosure in Applicant's Specification (without requiring any limitations to
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`be imported therefrom). For example, the Specification describes that
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`[r]esistance to draw is also known as draft resistance, draw resistance, puff
`resistance or puffability, and is the pressure required to force air through the
`fidl length ofthe obiect under test at the rate ofl 7.5 ml/sec at 22°C and 760
`Torr (J0JkPa). It is typically expressed in units of mmH20 and is measured
`in accordance with ISO 6565:2011. The aerosol-forming article and the
`aerosol generating device advantageouslv together provide an RTD of
`between 80 and 120 mmH'.'O through the first and second air flow channels.
`This approximates the RTD of a conventional cigarette. The aerosol-fonning
`device, without an aerosol-forming article coupled to it, may advantageously
`have an RTD of between 5 and 20 mmH20. The aerosol-forming article in
`isolation may have an RTD of between 40 and 80 mmH20. Specification,
`p. 3, 11. 17-26 (emphases added).
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`6
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`Ex. 2035-0006
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`The Specification also describes the advantages of the particular claimed device
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`configuration of providing "greater than 10% of the RTD through the first and second air
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`flow channels,"' and the reasons for providing such a configuration:
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`The aerosol generating device advantageously provides greater than 10% of
`the RTD through the first and second air flow channels. This allmvs the
`aerosol-fhrming article to be made 1-vith an RTD of significantlv lower than
`that of a conventional cigarette while the svstem as a whole provides an RTD
`that mimics a conventional cigarette. In electrically heated smoking systems
`less tobacco containing substrate is typically needed than in a conventional,
`combustible cigarette to provide the same length and number of puffs. This
`means that the smoking article can be made shorter, resulting in a lm·ver RTD
`than a conventional cigarette. By using a device that provides a significant
`RTD, no additional cornponents are required in the smoking article to
`increase the RTD of the smoking article. This keeps the cost of each smoking
`a11icle as low as possible. Specification, p. 3, 11. 27-36 (emphases added).
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`So, the recitation in claim 18 that the aerosol generating device "provides greater than
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`10<?-{, of the RTD through the first and second air flow channels" is not merely one with
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`respect to a "manner in which a claimed apparatus is intended to be employed." Office
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`Action, p. 5; see also M.P.E.P. § 2114(II). Rather, it is one that is directed to a particular
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`configuration of the claimed device-a configuration that ,vould have been conveyed to a
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`person of ordinary skill in the art in the context claimed and as described in the Specification.
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`See M.P.E.P. § 2173.0S(g). This also comports with the requirement that "'[d]uring patent
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`examination, the pending claims must be "given their broadest reasonable interpretation
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`consistent 1--vith the specification."" M.P.E.P. § 2111 (emphases added; internal citation to
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`Phillips v. A WH Cmp. omitted).
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`Applicant recognizes that an Examiner's typical response to this type of reasoning is
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`to assert that it is improper to import limitations from the Specification into the claims.
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`See id.,§ 2111.0l(II). But this does not give the Examiner license to simply posit that "[i]n
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`this case, RTD is based on tlow rate, and would change depending on the use of the device"
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`(Office Action, p 5), without regard to the context of the entire Specification. That is, the
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`7
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`Ex. 2035-0007
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`Examiner cannot strike the phrase "consistent with the specification" from the requirement
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`for a '·broadest reasonable interpretation consistent with the specification." See id., § 2111.
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`Instead, the Examiner's interpretation of a claim term "must be consistent with the use of the
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`claim term in the specification and drawings." Id. ( emphasis added).
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`In the context of the quoted portions from Applicant's Specification, and in the
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`context of the entirety of the features recited in the claims, one of ordinary skill in the art
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`would understand what Applicant has described and claimed. Such an understanding would
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`be reasonable. Such an understanding \.Vould not require any imported limitations from the
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`Specification into the claims. And, such an understanding would not permit dismissing the
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`claim recitations as "functional language."
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`Similar reasoning applies regarding the Office Action's assertion that the language of
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`dependent claim 26 includes "functional language," citing Ex parte 1'1asham for support.
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`Office Action, pp. 5-6.
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`So, the Office Action's assertions regarding "functional language" in reliance on
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`Ex parte lvfasham cannot be used to support the rejection.
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`St. Regis Paper Co. v. Bemis Co .. 549 F.2d 833 {7th Cir. 1977)
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`Regarding the recitation of ''a plurality of air inlets" in dependent claims 21 and 22,
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`the Office Action asserted that:
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`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 onlv routine skill in the art.
`St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Office Action, p. 5 (emphasis
`added).
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`Applicant again respectfully disagrees. The reliance on a «duplication of essential
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`\vorking parts" rationale is impermissible and cannot support the present rejection. And, the
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`assertion that a person of ordinary skin in the art would have simply duplicated air inlets "so
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`8
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`Ex. 2035-0008
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`they would be less likely to be blocked accidentally during use" is an unsubstantiated
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`allegation inapposite to the asserted rationale.
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`Here, the Office Action raised no more than a per se rule of obviousness as an
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`administratively convenient means to support the rejection of claims 21 and 22, without
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`providing a fact-specific analysis to support the allegations. See In re Ochiai, 71 F.3d 1565,
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`1572 (Fed. Cir. 1995). Such aper se rule is improper. See M.P.E.P. § 2116.01, noting "the
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`Federal Circuit held that the use of per se rules is improper in applying the test for
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`obviousness .... Rather, [§] 103 requires a highly fact-dependent analysis involving taking
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`the claimed subject matter as a whole and comparing it to the prior art."
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`The M.P.E.P. cautions Examiners "against treating any line of reasoning as a per se
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`rule," and notes that legal precedent may be invoked "as a source of supporting rationale
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`when warranted and appropriatelv supported." M.P.E.P. § 2144 (emphasis added). The
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`Examiner may use a rationale used by a court only "if the facts in a prior legal decision are
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`sufficiently similar to those in an application under examination." Id.,§ 2144.04. Under
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`these limited circumstances,
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`such rationales should not be treated as per se rnles, but rather tnust he
`explained and shown to applv to the facts at hand. A similar caveat applies to
`any obviousness analysis. Simplv stating the principle (e.g., "art recognized
`equivalent," «structural similarity") 1vithout providing an explanation o(its
`applicabilitv to the facts ofthe case at hand is generallv not sufficient to
`establish a prima (acie case of obviousness. Id.,§ 2144 (emphases added).
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`These limited circumstances do not apply here. The facts in St. Regis Paper are not
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`sufficiently similar to that of the present application under examination. And, the simple
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`assertion of "duplication of essential working parts" absent an explanation of its applicability
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`to the facts of the case at hand cannot support a legal conclusion of obviousness.
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`St. Regis Paper concerned a particular bag, which differed from a prior art bag by
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`including '·multiple layers to achieve the effect of many bags within one." St. Regis Paper,
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`9
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`Ex. 2035-0009
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`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
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`549 F.2d at 838. The record showed, however, that multiwall bags were known for many
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`years. See id.
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`The comt held that a combination of the prior art bag and the known rnultiwall bags
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`was obvious, referring to the U.S. Supreme Court's decision in Sakraida v. Ag Pro, Inc., 425
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`U.S. 273,282 (1976) for the proposition that "[u]nless the combination is "synergistic, that is,
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`'result(ing) in an effect greater than the sum of the several effects taken separately,"' it cannot
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`be patented." The court reasoned that such synergism did not exist in S't. Regis Paper.
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`But this was not so much due to the actual "duplication" provided by having "multiple
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`layers." Rather, it was because the "duplication" did not produce a nonobvious bag. See
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`St. Regis Paper at 839. Curiously, there is no pennutation of the phrase "mere duplication of
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`essential working parts of a device involves only routine skill in the mi" an)".:vhere in
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`St. Regis Paper.
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`It appears that the closest authority to the Office Action's citation to St. Regis Paper
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`for "duplication of essential working parts,, is the "duplication of parts" rationale in IvLP.E.P.
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`§ 2144.04(VI)(B), although the M.P.E.P. does not cite to St. Regis Paper. Instead, the
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`M.P.E.P. cites to In re Harza, 274 F.2d 669 (CCPA 1960).
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`Yet the Office Action relies on the "duplication of [ essential working] parts" rationale
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`as aper se rule-without a comparison of the facts in St. Regis Paper vvith those in the
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`present application, without a comparison of the facts in In re Harza ("duplication of parts")
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`with those in the present application, and without an explanation of why, based on this
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`comparison, the legal conclusion in the present application should be the same.
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`The Patent Trial and Appeal Board ('-'the Board°') has rejected the "duplication of
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`parts" rationale ofM.P.E.P. § 2144.04(VI)(B) vis-a-vis In re Harza in such contexts as an
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`improperperse rule. For example, inExParte Granneman, 68 U.S.P.Q.2d 1219
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`(BPAI 2003) (nonprecedential), the Board reversed an Examiner's rejection, reasoning that:
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`10
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`Ex. 2035-0010
`
`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`The examiner does not compare the facts in Harza with those in the present
`case and explain why, based upon this comparison, the legal conclusion in the
`present case should be the same as that in Harza. Instead, the examiner relies
`upon Harza as establishing aper se rnle that duplication of parts is obvious.
`As stated bv the Federal Circuit inJn re Ochiai, 71 F.3d 1565, 1572. 37
`USP02d 1127, 1133 (Fed. Cir. 1995). "reliance onperse mles of obviousness
`is legallv incorrect and must cease." (Emphasis added.)
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`The Board has also rejected improper reliance on this rationale. Considered here, the
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`Examiner's reasoning "has not demonstrated that the prior art references relied upon would
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`have provided any reason or suggestion [that] would have prompted one of ordinary skill in
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`the arf' to modify the cited references in an attempt to achieve the claimed invention.
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`Ex Parle Efremova, Appeal No. 2010-003842, p. 6 (BPAI 2011). And, "[n]owhere has the
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`Examiner demonstrated that there is some reason or suggestion in the applied prior art
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`references to duplicate" the claimed air inlets. Id.
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`Likewise, the Board has rejected assertions that mere duplication of parts would have
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`been within the level of ordinary skill in the relevant art where, as here, advantages and
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`benefits of the claimed features are described in the Specification. See Ex Parle Lu, Appeal
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`No. 2011-008853, p. 5 (PTAB 2013). For example, Applicant's Specification describes
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`advantages of the claimed plurality of air inlets, in that they ·'provide a uniform thermal
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`profile for the housing and substrate" (p. 4, 1. 2); and "'provide[] an air flow that substantially
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`surrounds substrate, reducing the chances of an uneven temperature distribution on the
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`exterior of the housing°' (p. 4, 11. 23-25).
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`So, the Office Action's assertions regarding "duplication of [ essential working] parts"
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`in reliance on St. Regis Paper cannot be used to support the rejection.
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`Nen,vin v. Erlichman. 168 USPO 177. 179 (BPAI 1969)
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`Regarding the "the substrate holder portion [ of the housing] being removable from the
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`main body and comprising ... " in dependent claims 24 and 25, the Office Action asserted that:
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`11
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`Ex. 2035-0011
`
`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`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 constructfingl a fbrmerlv integral structure in various elements
`involves onlv routine skill in the art. Nenvin 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. Office Action,
`p. 5 ( emphasis added).
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`Applicant again respectfully disagrees. The assertion that a person of ordinary skill in
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`the art \-vould have simply duplicated air inlets "'so they would be less likely to be blocked
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`accidentally during use,, is an unsubstantiated allegation inapposite to the asserted rationale.
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`Also, the reliance on a "formerly integral strncture,, rationale is impermissible and does
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`support the present rejection. It too is no more than an improper per se rule of obviousness.
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`See i1?fi·a; see also In re Ochiai and M.P.E.P. § 2116.01. And, it is misplaced-the Board has
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`repeatedly rebuked Examiners for citing Nenvin v. Erlichman for this asserted "holding."
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`Nerwin v. Er!ichman concerned an interference, in which senior party Erlichman
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`sought to bring t\vo claim limitations into count 1 of the Interference. Junior party Nerwin
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`argued that Erlichman's two claim limitations ·'set forth two separate elements," that these
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`separate elements are supported only by a single structure 198 in Erlichman' s Fig. 10, and
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`that Erlichman "may not use this single element to meet two positively stated and separately
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`claimed elements of the count." Neri-vin v. Erlichman, as reported in the Official Gazette at
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`880 O.G. 1149-1152, 1150 (Board of Patent Interferences, Nov. 24, 1970), available at
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`https://archive.orglstreamlo.fficialgazette880unit#page/n746/mode/Jup. The Board
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`disagreed, and stated that "[t]he mere fact that a given structure is integral does not preclude
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`its consisting of various elements," to support a finding "that Erlichman supports the ...
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`limitations of count 1 without double reading on the same element or structure." Id. at 1151.
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`12
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`Ex. 2035-0012
`
`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`There is nothin2: in Nenvin v. Erlichman regarding what '"involves only routine skill
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`in the art." And, Nerwin v. Erlichman did not hold '"that construct[ing] a formerly integral
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`structure in various elements involves only routine skill in the art."' Office Action, p. 5.
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`The Board has repeatedly rebuked Examiners for citing Nerwin v. Erlichman for such
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`a "holding":
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`See, e.g., Exparte Cruden, Appeal No. 97-1147, pp. 7-8 (BPAI 1997), noting that
`"We find no such "holding" in Nerwin v. Erlichman"; and that the "integral"
`statement is merely '"a construction of the term "integral," and does not appear to
`stand for the proposition the examiner now urges" (emphases added);
`
`See, e.g., Ex parte Kmvcmo, Appeal No. 2011-002048, p. 6 (PTAB, Jan. 1, 2013),
`noting that Nerwin v. Erlichman concerned an interference count, which "differs
`from the current situation, where the Examiner attempts to convert this written
`description fact pattern into a per se rule that separating a single component into
`two components is obvious. vVe conclude that this readin2: of Nerwin is incorrect
`and does not establish that it is per se obvious to separate a single component into
`two components. \Ve decline to apply such aper se rule" (emphases added);
`
`See, e.g., Ex parte Crilliot, Appeal No. 2011-000164, p. 4 (PTAB, Mar. 11, 2013),
`agreeing with Appellants "that Nerwin is not good legal authority for the
`proposition relied on by the Examiner, i.e., that constructing a formerly integral
`structure in various elements involves only routine skill in the art" ( emphasis
`added), with citation to Ex parte Kawano and Ex parte Cruden: and
`
`See, e.g., Ex parte Van Oort, Appeal No. 2011-001632, p. 9 (PTAB,
`Mar. 27, 2013 ), agreeing with Appellants "'that Nen-vin is not competent legal
`authority for the proposition that constructing a fonnerly integral structure in
`various elements involves only routine skill in the art" (emphasis added), with
`citation to Ex parte Kavvano and Ex parte Cruden.
`
`The holding of Ne1win v. Erlichman has nothing to do with the principle the Office
`
`Action cites it for. The facts of Nen,vin v. Erlichman are not even remotely similar to that of
`
`the present application under examination. See M.P.E.P. § 2144.04. Yet the Office Action
`
`relies on it as a per se rule-without a comparison of the facts in Nerwin v. Erlichman with
`
`those in the present application, and without an explanation of why, based on such a
`
`comparison, the legal conclusion in the present application should be the same as that in
`
`Nen,vin v. Erlichman. Here, the Office Action's simple statement of the principle without
`
`13
`
`Ex. 2035-0013
`
`

`

`Application No. 14/370,410
`Reply to Office Action of April 5, 2016
`
`providing an explanation of its applicability to the facts of the case at hand is insufficient to
`
`establish aprimafacie case of obviousness. See M.P.E.P. § 2144.
`
`So, the Office Action's assertion that «construct[ing] a formerly integral structure in
`
`various elements involves only routine skill in the art" in reliance on Nerv.-·in v. Erlichman
`
`cannot be used to support the rejection.
`
`Conclusion:
`
`The Office Action contains a number of statements reflecting characterizations of the
`
`cited art and the claims, including generalized allegations of what "would have been
`
`notoriously obvious." Office Action, p. 6. Regardless of whether any such statements are
`
`identified herein, Applicant declines to automatically subscribe to any such statements or
`
`characterizations.
`
`Applicant requests that the Examiner telephone the undersigned representative to
`
`discuss any remaining issues or misunderstandings. Othenvise, Applicant respectfully
`
`requests an early and favorable action.
`
`Customer Number
`22850
`
`Tel. (703} 413-3000
`Fax. {703) 413-2220
`(OJ'vfMN 07!09}
`
`Respectfully Submitted,
`
`QB-LON, NloCLELLAND,
`/.•·i1AIER & J\TEUSTADT, LL.P.
`
`"· pl2tulltt/ i11'};:tf'D
`
`- - - - - - - - - - - - - - " -Q ' - - - - - - - - -
`David M. Longo, Ph.D.
`Attorney of Record
`Registration No. 53,235
`
`14
`
`Ex. 2035-0014
`
`