UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STA TES 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.
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`FILING DATE
`
`FIRST NAMED INVEN10R
`
`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`12/954,701
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`11/26/2010
`
`1021238-001249
`
`5978
`
`06/28/2012
`7590
`21839
`BUCHANAN, INGERSOll & ROONEY PC
`POST OFFICE BOX 1404
`ALEXANDRIA, VA 22313-1404
`
`EXAMINER
`
`NGUYEN, PHU HOANG
`
`ART UNIT
`
`PAPER NUMBER
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`1747
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/28/2012
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`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.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`ADIPFDD@bipc.com
`offserv@bipc.com
`
`PTOL-90A (Rev. 04/07)
`
`Ex. 2042-0001
`
`

`

`Office Action Summary
`
`Application No.
`
`12/954,701
`
`Examiner
`
`Applicant(s)
`
`ZUBER ET AL.
`
`Art Unit
`
`I
`1747
`PHU NGUYEN
`- The MAILING DATE 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 J MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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 )IZI Responsive to communication(s) filed on 26 November 2010.
`2a)0 This action is FINAL.
`2b)IZI 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 G.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)1Zl Claim(s) 1-15is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)1Zl Claim(s) 1-15is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`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).
`12)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some * c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 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(a)).
`*Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) IZI Notice of References Cited (PTO-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) IZ! Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 2/11/2011.
`
`4) 0 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20120615
`
`Ex. 2042-0002
`
`

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`Application/Control Number: 12/954,701
`Art Unit: 1747
`
`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC§ 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`Claims 1-2 are rejected under 35 U.S.C. 102(b) as being anticipated by Baggett
`
`et al. (U.S Patent No. 5915387).
`
`Regarding claim 1, Baggett discloses an electrically heated smoking system
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`comprising:
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`an aerosol forming substrate (80, fig. 4A); and
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`a heater for heating the substrate to form the aerosol, the heater including a first
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`heating element (by reference sign 94, fig. 4A);
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`wherein the electrically heated system and the first heating element are arranged
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`such that, when the aerosol smoking substrate is received in the electrically heated
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`smoking system, the first heating element extends a distance only partially along a
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`length of the aerosol forming substrate, and the first heating element is positioned
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`towards a downstream end of the aerosol forming substrate (see fig. 4A).
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`Regarding claim 2, Baggett discloses the heating element extends substantially
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`fully around a circumference of the aerosol forming substrate (fig. 3).
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`Regarding claim 14, Baggett discloses the aerosol forming substrate is a solid
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`substrate (Abstract).
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`Ex. 2042-0003
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`

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`Application/Control Number: 12/954,701
`Art Unit: 1747
`
`Page 3
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`Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Deevi et al.
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`(U.S Patent No. 5093894).
`
`Regarding claim 1, Deevi discloses an electrically heated smoking system (8, fig.
`
`3) comprising:
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`an aerosol forming substrate (Abstract, page 1 and column 5, lines 5-29); and
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`a heater for heating the substrate to form the aerosol, the heater including a first
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`heating element (4 or 7, figs. 2b-3);
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`wherein the electrically heated smoking system and the first heating element are
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`arranged such that, when the aerosol forming substrate is received in the electrically
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`heated smoking system, the first heating element is capable of being extends a distance
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`only partially along a length of the aerosol forming substrate, and the first heating
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`element is positioned towards a downstream end of the aerosol forming substrate
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`(column 5, lines 5-29 and figs. 3-4).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(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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`Claims 3-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Baggett et al. (U.S Patent No. 5915387) in view of Adams et al. (U.S Pub. No.
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`20070102013).
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`Ex. 2042-0004
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`

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`Application/Control Number: 12/954,701
`Art Unit: 1747
`
`Page 4
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`Regarding claim 3, Baggett does not expressly disclose the heating element is
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`arranged to be inserted into the aerosol forming substrate. Adams discloses another
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`alternative is arranging the heating element to be inserted into the aerosol forming
`
`substrate (paragraph 45 and fig. 7). Therefore it would have been obvious to one of
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`ordinary skill in the art at the time the invention was made to modify the device of
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`Baggett to have the heating element be inserted into the aerosol forming substrate as
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`an obvious alternative arrangement as taught by Adams.
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`Regarding claims 4-6, Adams discloses the downstream end of the first heating
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`element is upstream of the downstream end of the aerosol forming substrate by a
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`distance as shown in fig. 7; it would have been obvious to one of ordinary skill in the art
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`to perform routine experimentation to arrive to the claimed range of length of the
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`distance.
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`Regarding claims 7-8, similar to the discussion above for claims 4-6, it would
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`have been obvious to one of ordinary skill in the art to perform routine experimentation
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`to arrive to the claimed range of the ratio of the distance that the first heating element
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`extends along the aerosol forming substrate to the length of the aerosol forming
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`stubstrate.
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`Claims 9-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Baggett et al. (U.S Patent No. 5915387) in view of Deevi et al. (U.S Patent No.
`
`5093894).
`
`Regarding claim 9, Baggett does not expressly discloses a second heating
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`element arranged upstream of the first heating element. Deevi discloses an electrically
`
`Ex. 2042-0005
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`

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`Application/Control Number: 12/954,701
`Art Unit: 1747
`
`Page 5
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`heated smoking system with heating elements 4 arranging along the upstream and
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`downstream with selectively controllability (column 4, line 65 to column 5, line 5 and
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`figs. 2b-3). Therefore it would have been obvious to one of ordinary skill in the art at the
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`time the invention was made to modify the device of Bagget to have a second heating
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`element arranged upstream of the first heating element and extend a distance only
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`partially along the length of the aerosol forming substrate.
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`Regarding claim 10, Deevi discloses a distance between the first and second
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`heating elements; therefore it would have been obvious to one of ordinary skill in the art
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`at the time the invention was made to perform routine experimentation to arrive to the
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`claimed range of the distance.
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`Regarding claims 11-12, since Deevi discloses the second heating element can
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`be arrange along the longitudinal direction of the electrical heated smoking system (figs.
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`2b-3), it would have been obvious to one of ordinary skill in the art to perform routine
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`experimentation to arrive to the claimed ranges of distance where the second heating
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`element is arranged within the device of Baggett.
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`Regarding claim 13, similar to the discussion above for claims 9-12, it would
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`have been obvious to one of ordinary skill in the art at the time the invention was made
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`to perform routine experimentation to arrive to the claimed ratio between the total length
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`of the first and second heating elements to that of the aerosol forming substrate.
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`Claim 15 is rejected under 35 U.S.C. 103(a) as being unpatentable over Baggett
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`et al. (U.S Patent No. 5915387) in view of Fernando et al. (U.S Pub. No. 20090230117).
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`Although Baggett does not expressly discloses aerosol forming substrate is a liquid
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`Ex. 2042-0006
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`

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`Application/Control Number: 12/954,701
`Art Unit: 1747
`
`Page 6
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`substrate, it would have been obvious to one of ordinary skill in art to use liquid as the
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`aerosol forming substrate in an electrical smoking system as taught by Fernando
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`(paragraph 6).
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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 PHU NGUYEN whose telephone number is (571 )272-
`
`5931. The examiner can normally be reached on M-F.
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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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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`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
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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.
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`P.N 6/16/2012
`
`/Richard Crispino/
`Supervisory Patent Examiner, Art Unit 1747
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`Ex. 2042-0007
`
`