Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 1 of 116 PageID# 15950
`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 1 of 116 Page|D# 15950
`
`EXHIBIT J
`EXHIBIT J
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 2 of 116 PageID# 15951
`
`,., 90& 1387
`1W
`8061367
`
`TbHtTiJJ Pt SEYIS S.JM 0M1
`
`11Q)A'lln, 'llQ) \VJ!! ~..l{'llll!E SE: ~~ SE~~ ~
`. ~ :lU(Dt;i
`UNITED STATES DEPARTMENT OF COMMERCE
`UNITED STATES DEPARTMENT 0F COMMERCE
`United States Patent a nd T rademar k Office
`United States Patent and Trademark Office
`
`Octobe r 16, 2020
`October 16 2020
`
`TRUE COPY FROM THE
`THIS IS TO CERTIFY THAT ANNEXED IS
`THIS IS TO CERTJFY THAT ANNEXED IS A TRUE COPY FROM THE
`RECORDS OF THIS OFFICE OF THE FILE WRAPPER AND CONTENTS
`RECORDS OF TffiS OFFICE OF THE FILE WRAPPER AND CONTENTS
`OF
`OF:
`
`APPLICATION NUMBER 13/990067
`APPUCATlON NUMBER: 13/990,067
`FILING DATE August 09 2013
`FILING DATE: August 09, 2013
`PATENT NUMBER 10104911
`PATENT NUMBER: 10,104,911
`ISSUE DATE October 23 2018
`ISSUE DA TE: October 23, 2018
`
`By Authority of the
`By Authority of the
`Under Secretary of Commerce fo r Intellectual P r operty
`Under Secretary of Commerce for Intellectual Property
`a nd Director of the United Sta tes Patent a nd T radema rk Of"fice
`and Director of the United States Patent and Trademark Office
`
`uuvC~
`
`CURTIS GO
`CURTlS GOFFE
`Certifying Officer
`Certifying Officer
`
`DEF _PUB_EDVA000015567
`5567
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 3 of 116 PageID# 15952
`
`TRADEMARK OFFICE
`IN THE UNITED STATES PATENT
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`U.S. National Phase App.
`U.S National
`Phase App
`App No
`oflntemational App. No.
`of International
`
`Inventors
`Inventors
`
`Filed
`Filed
`
`Title
`
`Title
`
`TC/AU.
`TC/A.U
`
`Examiner
`Examiner
`
`Confirmation No
`Confirmation No.
`
`Attorney Docket No
`Attorney Docket No.
`
`Customer No
`Customer No.
`
`Commissioner for Patents
`Commissioner for Patents
`P.O. Box 1450
`P.O Box 1450
`Alexandria VA 223 13-1450
`Alexandria, VA 22313-1450
`
`PCT/EP2011/006055
`PCT/EP2O1
`1/006055
`
`Michel Thorens et al.
`Michel Thorens et al
`
`Herewith
`Herewith
`
`AN AEROSOL GENERATING SYSTEM WITH
`AN AEROSOL GENERATING SYSTEM WITH
`PREVENTION OF CONDENSATE LEAKAGE
`PREVENTION OF CONDENSATE LEAKAGE
`
`Not yet assigned
`Not yet assigned
`
`Not yet assigned
`Not yet assigned
`
`Not yet assigned
`Not yet assigned
`
`89-1011
`89-1011
`
`36163
`36163
`
`PRELIMINARY AMENDMENT
`PRELIMINARY AMENDMENT
`
`Prior to examination please amend this application as follows
`Prior to examination, please amend this application as follows:
`
`Amendments to the Specification begin on page 2 of this paper.
`Amendments to the Specification begin on page
`of this paper
`
`Amendments to the Claims are reflected in the listing of claims beginning on page 3 of
`Amendments to the Claims are reflected
`of
`in the listing of claims beginning on page
`
`this paper.
`this paper
`
`A Replacement Abstract is provided on page 5 of this paper and as a separate page
`of this paper and as
`Replacement Abstract is provided on page
`separate page
`
`enclosed herewith.
`enclosed herewith
`
`Remarks begin on page 6 of this paper.
`Remarks begin on page
`of this paper
`
`Attachment: Clean copy of the Abstract, numbered page 23.
`numbered page 23
`Attachment
`Clean copy of the Abstract
`
`DEF _PUB_EDVA000015579
`5579
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 4 of 116 PageID# 15953
`
`U.S Natl Phase of Intl App No PCT/EP2O1 1/006055
`U.S. Nat'l Phase oflnt'l App. No. PCT/EP201 l/006055
`Attorney Docket No 89-1011
`Attorney Docket No. 89-1011
`
`AMENDMENTS TO THE SPECIFICATION
`AMENDMENTS TO THE SPECIFICATION:
`
`Please add the following new section heading and paragraph at page 1, after the title and
`Please add the following new section heading
`after the title and
`and paragraph at page
`
`before line 3, as follows:
`before line
`as follows
`
`TO RELATED APPLICATION
`CROSS REFERENCE
`CROSS REFERENCE TO RELATED APPLICATION
`
`This application is a national phase application based on PCT/EP2011/006055, filed
`national phase application based on PCT/EP2O1
`This application is
`1/006055
`
`filed
`
`2011
`December 2, 2011.
`December
`
`Page 2
`Page
`
`DEF _PUB_EDVA000015580
`5580
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 5 of 116 PageID# 15954
`
`U.S Natl Phase of Intl App No PCT/EP2O1 1/006055
`U.S. Nat'l Phase oflnt'l App. No. PCT/EP201 l/006055
`Attorney Docket No 89-1011
`Attorney Docket No. 89-1011
`
`AMENDMENTS TO THE CLAIMS
`AMENDMENTS TO THE CLAIMS:
`
`Please cancel claims 1-12 without prejudice or disclaimer of their subject matter, and
`Please cancel claims 1-12 without prejudice or disclaimer of their subject matter and
`
`substitute new claims 13-24 therefor as follows:
`new claims 13-24 therefor
`as follows
`
`substitute
`
`1.-12. (Cancelled)
`1-12 Cancelled
`
`13 New An aerosol generating system for heating
`13. (New) An aerosol generating system for heating a liquid aerosol-forming substrate,
`liquid aerosol-forming substrate
`
`the system comprising:
`the system comprising
`
`an aerosol-forming chamber; and
`and
`an aerosol-forming chamber
`
`leakage prevention means configured to prevent or reduce leakage of liquid aerosol
`leakage prevention means configured to prevent or reduce
`leakage of liquid aerosol
`
`condensate from the aerosol generating system,
`from the aerosol generating system
`condensate
`
`wherein, the leakage prevention means comprises at least one cavity in a wall of the
`least one cavity in wall of the
`wherein the leakage prevention means comprises at
`
`aerosol-forming chamber, for collecting liquid condensate formed from the aerosol-forming
`formed from the aerosol-forming
`liquid condensate
`aerosol-forming chamber
`for collecting
`
`is preferably 0.5 mm or mm
`substrate and the cavity has a cross-sectional dimension x, where xis preferably 0.5 mm or 1 mm
`where
`and the cavity has
`dimension
`
`cross-sectional
`
`substrate
`
`or between 0.5 mmand mm
`or between 0.5 mm and 1 mm.
`
`14 New The aerosol generating system according to claim 13 wherein the leakage
`14. (New) The aerosol generating system according to claim 13, wherein the leakage
`
`prevention means comprises at least one cavity in a wall of the aerosol-forming chamber, for
`least one cavity in wall of the aerosol-forming chamber
`prevention means comprises at
`
`for
`
`collecting liquid condensate formed from the aerosol-forming substrate.
`formed from the aerosol-forming substrate
`liquid condensate
`
`collecting
`
`15 New The aerosol generating system according to claim 14 wherein the at least one
`15. (New) The aerosol generating system according to claim 14, wherein the at least one
`
`cavity contains capillary material.
`cavity contains capillary material
`
`16 New The aerosol generating system according to claim 13 wherein the leakage
`16. (New) The aerosol generating system according to claim 13, wherein the leakage
`
`prevention means comprises at least one hooked member for collecting droplets of liquid
`least one hooked member for collecting
`of liquid
`prevention means comprises at
`
`droplets
`
`condensate formed from the aerosol-forming substrate.
`formed from the aerosol-forming substrate
`condensate
`
`Page 3
`Page
`
`DEF _PUB_EDVA000015581
`5581
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 6 of 116 PageID# 15955
`
`U.S Natl Phase of Intl App No PCT/EP2O1 1/006055
`U.S. Nat'l Phase oflnt'l App. No. PCT/EP201 l/006055
`Attorney Docket No 89-1011
`Attorney Docket No. 89-1011
`
`17 New The aerosol generating system according to claim 16 wherein the at least one
`17. (New) The aerosol generating system according to claim 16, wherein the at least one
`
`hooked member comprises
`hooked member comprises a recycle path for recycling the collected droplets of the liquid
`of the liquid
`recycle path for recycling the collected
`
`droplets
`
`condensate formed from the aerosol-forming substrate.
`formed from the aerosol-forming substrate
`condensate
`
`18 New The aerosol generating system according to claim 16 wherein the at least one
`18. (New) The aerosol generating system according to claim 16, wherein the at least one
`
`hooked member includes capillary material.
`hooked member includes capillary material
`
`19 New The aerosol generating system according to claim 13 wherein the leakage
`19. (New) The aerosol generating system according to claim 13, wherein the leakage
`
`prevention means comprises an impactor for disrupting airflow in the aerosol-forming chamber
`for disrupting airflow in the aerosol-forming chamber
`prevention means comprises an impactor
`
`so as to collect droplets ofliquid being formed from the aerosol-forming substrate.
`of liquid being formed from the aerosol-forming substrate
`so as to collect droplets
`
`20 New The aerosol generating system according to claim 19 wherein the impactor
`20. (New) The aerosol generating system according to claim 19, wherein the impactor
`
`includes capillary material.
`includes capillary material
`
`21 New The aerosol generating system according to claim 13 wherein the leakage
`21. (New) The aerosol generating system according to claim 13, wherein the leakage
`
`prevention means comprises a closure member for substantially sealing the aerosol-forming
`closure member for substantially
`prevention means comprises
`the aerosol-forming
`
`seating
`
`chamber when the aerosol generating system is not in use.
`chamber when the aerosol generating system is not
`in use
`
`22 New The aerosol generating system according to claim 13 further comprising
`22. (New) The aerosol generating system according to claim 13, further comprising a
`
`liquid storage portion for storing the liquid aerosol-forming substrate.
`liquid storage portion for storing the liquid aerosol-forming substrate
`
`23 New The aerosol generating system according to claim 13 further comprising
`23. (New) The aerosol generating system according to claim 13, further comprising a
`
`capillary wick for conveying the liquid aerosol-forming substrate by capillary action.
`capillary wick for conveying
`action
`the liquid aerosol-forming substrate by capillary
`
`24 New The aerosol generating system according to claim 13 wherein the aerosol
`24. (New) The aerosol generating system according to claim 13, wherein the aerosol
`
`generating system is electrically operated and further comprises an electric heater for heating the
`operated and further comprises an electric heater for heating the
`generating system is electrically
`
`liquid aerosol-forming substrate.
`liquid aerosol-forming substrate
`
`Page 4
`Page
`
`DEF _PUB_EDVA000015582
`5582
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 7 of 116 PageID# 15956
`
`U.S Natl Phase of Intl App No PCT/EP2O1 1/006055
`U.S. Nat'l Phase oflnt'l App. No. PCT/EP201 l/006055
`Attorney Docket No 89-1011
`Attorney Docket No. 89-1011
`
`IN THE ABSTRACT
`IN THE ABSTRACT:
`
`Please replace the Abstract originally provided on the cover sheet of the PCT application
`Please replace the Abstract originally provided on the cover sheet of the PCT application
`
`with the following new Abstract. A clean copy of the new Abstract, numbered page 23, is also
`clean copy of the new Abstract
`with the following new Abstract
`numbered page 23 is also
`
`enclosed for the last page of the application following the claims.
`enclosed
`for the last page of the application following the claims
`
`ABSTRACT OF THE DISCLOSURE
`ABSTRACT OF THE DISCLOSURE
`
`There is provided an aerosol generating system for heating a liquid aerosol-forming
`There
`an aerosol generating system for heating
`is provided
`liquid aerosol-forming
`
`substrate. The system includes an aerosol-forming chamber, and a leakage preventer for
`and
`substrate The system includes an aerosol-forming chamber
`leakage preventer
`
`for
`
`preventing or reducing leakage of liquid aerosol condensate from the aerosol generating system.
`from the aerosol generating system
`preventing or reducing leakage of liquid aerosol condensate
`
`The leakage preventer may include one or more of: at least one cavity in a wall of the
`The leakage preventer may include one or more of
`at least one cavity in wall of the
`
`aerosol-forming chamber, for collecting droplets of condensed liquid aerosol-forming substrate;
`droplets of condensed liquid aerosol-forming substrate
`for collecting
`aerosol-forming chamber
`
`at least one hooked member for collecting
`at least one hooked member for collecting droplets of condensed liquid aerosol-forming
`droplets of condensed liquid aerosol-forming
`
`substrate; an impactor for disrupting airflow in the aerosol-forming chamber so as to collect
`for disrupting airflow in the aerosol-forming chamber
`substrate an impactor
`
`so as to collect
`
`closure member for substantially
`liquid droplets; and a closure member for substantially sealing the aerosol-forming chamber
`the aerosol-forming chamber
`liquid droplets and
`
`sealing
`
`when the aerosol generating system is not in use.
`when the aerosol generating system is not
`in use
`
`Page 5
`Page
`
`DEF _PUB_EDVA000015583
`5583
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 8 of 116 PageID# 15957
`
`U.S Natl Phase of Intl App No PCT/EP2O1 1/006055
`U.S. Nat'l Phase oflnt'l App. No. PCT/EP201 l/006055
`Attorney Docket No 89-1011
`Attorney Docket No. 89-1011
`
`REMARKS
`REMARKS
`
`In this Preliminary Amendment, accompanying this national phase application, Applicant
`In this Preliminary Amendment accompanying
`this national phase application Applicant
`
`to add reference to PCT Application No PCT/EP2O11/006055
`amends the specification to add reference to PCT Application No. PCT/EP2011/006055.
`amends the specification
`
`Applicant also cancels claims 1-12, without prejudice or disclaimer of their subject matter, and
`also cancels claims 1-12 without prejudice or disclaimer of their subject matter and
`Applicant
`
`substitutes
`
`New claims 13-24 correspond to cancelled
`substitutes new claims 13-24 for prosecution. New claims 13-24 correspond to cancelled
`new claims 13-24 for prosecution
`
`in order to conform to U.S practice No new matter has
`claims 1-12, but have been amended in order to conform to U.S. practice. No new matter has
`claims 1-12 but have been amended
`
`been introduced by this Preliminary Amendment
`been introduced by this Preliminary Amendment.
`
`Applicant also replaces the Abstract as indicated herein, and adds an Abstract of the
`as indicated herein and adds an Abstract of the
`also replaces the Abstract
`Applicant
`
`Disclosure as the last page of the application page no 23 Applicant
`Disclosure as the last page of the application (page no. 23). Applicant encloses with this paper a
`encloses with this paper
`
`separate page for the Abstract of the Disclosure.
`separate page for the Abstract of the Disclosure
`
`Applicant requests entry of this Preliminary Amendment, and prompt and favorable
`requests entry of this Preliminary Amendment and prompt and favorable
`Applicant
`
`examination of this application. Should the Examiner have any questions, please contact the
`examination of this application Should the Examiner have any questions please contact
`
`the
`
`undersigned representative at the number listed below.
`listed below
`representative at the number
`undersigned
`
`Please grant any extensions of time required to enter this paper and charge any additional
`this paper and charge any additional
`Please grant any extensions of time required to enter
`
`required fees to our Deposit Account No 502846
`required fees to our Deposit Account No. 502846.
`
`Date: May 29, 2013
`Date May 29 2013
`
`Respectfully submitted,
`submitted
`Respectfully
`
`PLUMSEA LAW GROUP LLC
`PLUMSEA LAW GROUP, LLC
`
`By:
`/David M. Longo/
`By /David
`Longo/
`David M. Longo
`David
`Longo
`Reg No 53235
`Reg. No. 53,235
`Telephone: 301-365-9040
`301-365-9040
`Telephone
`
`Attachment: Abstract of the Disclosure
`Attachment Abstract of the Disclosure
`
`Page 6
`Page
`
`DEF _PUB_EDVA000015584
`5584
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 9 of 116 PageID# 15958
`
`UNITED STAms PAmNT AND TRADEMARK OrncE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`STATES DEPARTMENT OF COMMERCE
`UNITED
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Patent and Trademark Office
`United States
`COMMISSIONER
`FOR PATENTS
`Addmsc COMMISSIONER FOR PATENTS
`Address
`P.O Box
`P.O. Box 1450
`1450
`Alexandria, Virginia 22313-1450
`22313-1450
`Alexandria
`www .uspto.gov
`www.uspto.gov
`
`Virginia
`
`APPLICATION NO
`APPLICATION NO.
`
`13/990,067
`13/990067
`
`DATE
`FILING
`FILING DATE
`
`08/09/2013
`08/09/2013
`
`FIRST NAMED INVENTOR
`FIRST NAMED INVENTOR
`
`DOCKET NO
`ATTORNEY
`ATTORNEY DOCKET NO.
`
`NO
`CONFIRMATION
`CONFIRMATION NO.
`
`Michel Thorens
`MicheiThorens
`
`4173S9TJS118PCT
`417389USI 18PCT
`
`5463
`5463
`
`22850
`22850
`7590
`10/06/2015
`10/06/2015
`7590
`OBLON MCCLELLAND MAIER
`NEUSTADT
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`L.L.P
`1940 DUKE STREET
`1940 DUKE STREET
`ALEXANDRIA VA 22314
`ALEXANDRIA, VA 22314
`
`EXAMINER
`EXAMINER
`
`RUDDIE, ELLIOT S
`RLllIDffiELLIOTS
`
`ART UNIT
`ART UNIT
`
`3778
`3778
`
`PAPER NUMBER
`PAPER NUMBER
`
`NOTIFICATION DATE
`NOTIFICATION DATE
`
`DELIVERY MODE
`DELIVERY MODE
`
`10/06/2015
`10/06/20
`15
`
`ELECTRONIC
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`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.
`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
`Notification Date to the
`the Office communication was
`Notice of
`on above-indicated
`sent electronically
`following e-mail address(es):
`following e-mail addresses
`patentdocket@oblon.com
`patentdocket@oblon.com
`oblonpat@oblon.com
`oblon corn
`oblonpat@
`ahudgens@oblon.com
`ahudgens@oblon.com
`
`PTOL-90A (Rev. 04/07)
`PTOL-90A Rev 04/07
`
`DEF _PUB_EDVA000015834
`5834
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 10 of 116 PageID# 15959
`Application No
`Application No.
`Applicant(s)
`Applicants
`THORENS ETAL
`13/990,067
`THORENS ET AL.
`13/990067
`
`Office Action Summary
`Office Action Summary
`
`Examiner
`Examiner
`ELLIOT S. RUDDIE
`RUDDIE
`ELLIOT
`
`Art Unit
`Art Unit
`3778
`3778
`
`fhe
`
`provisions
`
`filed
`
`AIA (First Inventor to File)
`AlA First Inventor
`to File
`Status
`Status
`I
`No
`No
`-- The MAILING DATE of this communication
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`address --
`appears on the cover sheet with the correspondence
`Period for Reply
`Period for Reply
`MONTHS FROM THE MAILING DATE OF
`PERIOD FOR REPLY IS SET TO EXPIRE
`STATUTORY
`SHORTENED
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION
`THIS COMMUNICATION.
`of 37 CFR 1.136a
`Ex1ensions of 1ime may be available under 1he provisions of 37 CFR 1.136(a). In no even1, however, may a reply be 1imely filed
`under
`reply be timely
`In no evenf
`Extensions of
`time may be available
`however
`may
`MONTHS from the mailing
`after SIX (6) MONTHS from the mailing date of this communication.
`after SIX
`date of this communication
`MONTHS from the mailing
`If NO period
`the maximum statutory
`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 oommunication.
`expire SIX
`will apply and will
`date of this corrmunication
`for reply
`above
`is specified
`to become ABANDONED 35 U.S.C
`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).
`set or extended
`133
`for reply will
`by statute
`cause
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`three months
`this communication
`even ii
`filed may reduce
`the mailing date of
`later than
`by the Office
`Any reply
`any
`earned patent 1erm adjustment. See 37 CFR 1.704(b).
`See 37 CFR 1.704b
`lerm adjustment
`earned
`
`Failureto
`
`replywithin
`
`the
`
`period
`
`the
`
`application
`
`period
`
`after
`
`timely
`
`received
`
`patent
`
`Status
`Status
`to communications filed on May29 2013
`1 )IZI Responsive to communication(s) filed on Mav 29. 2013.
`Responsive
`under 37 CFR 1.130b was/were
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`filed on ______
`declarations/affidavits
`2b This action is non-final
`2a0 This action is FINAL
`2a)O This action is FINAL.
`2b)IZI This action is non-final.
`30 An election was made by the applicant
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`forth during the interview on
`requirement set
`in response to
`__ ; the restriction requirement and election have been incorporated into this action.
`been
`have
`requirement and election
`the restriction
`into this action
`incorporated
`______
`40 Since
`4)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`for allowance except for formal matters prosecution
`is in condition
`as to the merits is
`this application
`1935 0.0.11453 0G 213
`closed in accordance with the practice under Ex parte Quayle, 1935 G.D. 11, 453 O.G. 213.
`in accordance with the practice
`under Exparte Quayle
`closed
`
`restriction
`
`Disposition of Claims
`Disposition of Claims*
`5)1Zl Claim(s) 13-24 is/are pending in the application.
`Claims 13-24
`is/are pending in the application
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`5a Of
`the above claims _____ is/are withdrawn from consideration
`60 Claims _____ is/are allowed
`6)0 Claim(s) __ is/are allowed.
`7)1Zl Claim(s) 13-24 is/are rejected.
`Claims 13-24
`rejected
`80 Claims _____ is/are
`8)0 Claim(s) __ is/are objected to.
`to
`objected
`90 Claims _____ are subject
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`election requirement
`and/or
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`If any claims have
`allowable you may be eligible to benefit
`been determined
`from the Patent Prosecution
`Highway program at
`participating intellectual property office for the corresponding application. For more information, please see
`application For more information please see
`office for the corresponding
`http://\wm.usoto.gov/patents/!nit eventsiopi1iindex.iso or send an inquiry to PPHfeedback(wuspto.oov.
`to PPHfeedbackLJstoc1ov
`http//wvvwuspto.ov/atents/nt
`events/ph/Endex.sp
`or send
`an inquiry
`
`is/are
`
`to restriction
`
`participating
`
`intellectual
`
`property
`
`Application Papers
`Application Papers
`100 The specification
`10)0 The specification is objected to by the Examiner.
`to by the Examiner
`is objected
`or bE objected
`The drawings filed on May 29 2013 is/are
`11 )IZI The drawing(s) filed on Mav 29. 2013 is/are: a)IZI accepted or b)O objected to by the Examiner.
`to by the Examiner
`accepted
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`in abeyance See 37 CFR
`.85a
`to the drawings be held
`Applicant may not
`request that any objection
`to See 37 CFR 1.121d
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`if the drawings is objected
`drawing sheets including
`is required
`Replacement
`
`the correction
`
`Priority under 35 U.S.C. § 119
`35 U.S.C 119
`Priority under
`120 Acknowledgment
`119a-d or
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`is made of
`under 35 U.S.C
`claim for foreign priority
`Certified copies:
`Certified copies
`a0 All bE Some c0 None of
`a)O All b)O Some** c)O None of the:
`the
`1.0 Certified copies of the priority documents have been received.
`received
`been
`have
`of the priority documents
`copies
`in Application No _____
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`been
`have
`of the priority documents
`received
`copies
`3.E Copies of the certified
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`have
`been
`of the priority documents
`in this National Stage
`received
`copies
`Bureau POT Rule 17.2a
`application from the International Bureau (PCT Rule 17.2(a)).
`from the International
`application
`•• See the attached detailed Office action for a list of the certified copies not received.
`See the attached
`received
`list of the certified copies
`
`detailed
`
`Office
`
`action
`
`for
`
`not
`
`Certified
`
`Certified
`
`Attachment(s)
`Altachments
`1) [8J Notice of References Cited (PTO-892)
`Cited P10-892
`
`Notice of References
`
`2) [8J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Information
`DIsclosure
`StatomGnts
`Paper No(s)/Mail Date attached.
`Date
`attached
`Paper Nos/Mail
`
`and/or PTO/SB/08b
`
`PTOISB/08a
`
`3) 0 lnteiview Summary (PTO-413)
`Intorview Summary P10-41
`Paper No(s)/Mail Date. __ .
`Date
`Paper Nos/Mail
`4) 0 Other __ .
`
`er
`
`U.S. Pa1en1 and Trademark Office
`U.S Patent
`and
`Trademark
`PTOL-326 (Rev. 11-13)
`PTOL-326 Rev 11-13
`
`Office
`
`Office Action Summary
`Office Action Summary
`
`Part of Paper No./Mail Date 20150927
`Date 20150927
`Part of Faper No/Mail
`
`DEF _PUB_EDVA000015835
`5835
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 11 of 116 PageID# 15960
`
`Application/Control Number 13/990067
`Application/Control Number: 13/990,067
`
`Art Unit: 3778
`Art Unit 3778
`
`Page2
`Page
`
`DETAILED ACTION
`DETAILED ACTION
`
`Notice of Pre-AL4 orAL4 Status
`Notice of Pre-AIA or AIA Status
`
`1.
`
`is being examined under
`The present application
`The present application is being examined under the pre-AIA first to invent provisions.
`the pre-AJA first
`to invent provisions
`
`Priority
`
`Priority
`
`2.
`
`35 U.S.C 119 a-d The
`Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). The
`is made of applicants
`claim for foreign priority under
`Acknowledgment
`
`has been filed in parent Application No 10252048.3 filed on December
`certified copy has been filed in parent Application No. 10252048.3, filed on December 3, 2010. Furthermore,
`2010
`Furthermore
`copy
`
`certified
`
`claim for priority to 371 Application No PCT/EP2O11/006055
`acknowledgment is made of applicant's claim for priority to 371 Application No. PCT/EP201 l/006055 on
`is made of applicants
`on
`acknowledgment
`
`December 2, 2011.
`2011
`December
`
`Status of Claims
`Status of Claims
`
`3.
`
`This Office Action is responsive to the preliminary amendment filed on May 29, 2013. As directed by the
`As directed
`amendment
`This Office Action is responsive
`filed on May 29 2013
`by the
`to the preliminary
`
`amendment: claims 1-12 have been cancelled; and 13-24 have been added. Thus, claims 13-24 are presently pending
`been added Thus
`amendment
`claims 1-12 have
`been
`cancelled
`and 13-24 have
`claims 13-24 are presently pending
`
`in this application.
`in this application
`
`Claim Rejections - 35 USC§ 112
`Claim Rejections -35 Usc
`112
`
`4.
`
`claims
`
`particularly
`
`pointing
`
`quotation of 35 U.S.C 112b
`The following is a quotation of 35 U.S.C. l 12(b):
`The following is
`CONCLUSION.The
`(b) CONCLUSION.-The specification shall conclude with one or more claims particularly pointing
`shall conclude with one or more
`specification
`out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the
`out and distinctly claiming the subject matter which the inventor
`as the
`invention.
`invention
`
`or
`
`joint
`
`inventor
`
`regards
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`quotation of 35 U.S.C 112 pre-AIA second
`The following is
`paragraph
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`The specification
`shall conclude with one or more claims particularly
`out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`claiming the subject matter which the applicant
`as his invention
`
`pointing
`
`regards
`
`5.
`
`Claim 13 is rejected under 35 U.S.C. l 12(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being
`35 U.S.C 112b or 35 U.S.C 112 pre-AIA second
`Claim 13 is rejected
`under
`as being
`paragraph
`
`indefinite
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint
`point out and distinctly claim the subject matter which
`the inventor or
`for failing to particularly
`
`joint
`
`inventor, or for pre-AIA the applicant regards as the invention.
`the invention
`for pre-AJA the applicant
`inventor or
`regards as
`
`a.
`
`Claim 13 recites "a cross-sectional dimension x", ln 8; yet, does not specify the shape of the
`yet does not specify the shape of the
`Claim 13 recites
`dimension
`
`cross-sectional
`
`In
`
`"cavity" element (e.g. circular, rectangular, etc.); by giving only a single dimension and no corresponding
`cavity element e.g circular rectangular etc by giving only
`single dimension
`and no corresponding
`
`DEF _PUB_EDVA000015836
`5836
`DEF_PUB_EDVA00001
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 690-6 Filed 06/02/21 Page 12 of 116 PageID# 15961
`
`Application/Control Number 13/990067
`Application/Control Number: 13/990,067
`
`Art Unit: 3778
`Art Unit 3778
`
`Page 3
`Page
`
`shape one of ordinary skill in the art would not be able to ascertain the limitations of the claim and
`in the art would not be able to ascertain
`of the claim and
`one of ordinary skill
`shape
`
`the limitations
`
`therefore
`
`therefore renders Claim 13 indefinite.
`renders Claim 13 indefinite
`
`b.
`
`Further, regarding Claim 13, the phrase "preferably" renders the claim indefinite because it is
`because
`FUrther regarding Claitri 13 the phrase preferably renders the claim indefinite
`
`it is
`
`See MPEP
`unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP
`unclear whether
`invention
`following the phrase are part of the claimed
`the limitations
`
`§ 2173.05(d).
`2173.05d
`
`c.
`
`regarding Claim 13 the claim limitation leakage prevention means uses the phrase
`Still further, regarding Claim 13, the claim limitation "leakage prevention means" uses the phrase
`fUrther
`
`Still
`
`means for or step for or
`"means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by
`but it is modified by
`generic placeholder coupled with fhnctional
`language
`
`some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or
`some structure material or acts recited in the claim It
`is unclear whether
`the recited structure material or
`
`acts
`
`are sufficient
`
`is unclear if the modifying structure at
`acts are sufficient for performing the claimed function because it is unclear if the modifying structure "at
`function because
`for performing the claimed
`
`it
`
`in wall of the aerosol-forming chamber will sufficiently
`least one cavity in a wall of the aerosol-forming chamber" will sufficiently prevent leaking of liquid aerosol
`least one
`leaking of liquid aerosol
`prevent
`
`cavity
`
`condensate.
`condensate
`
`If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35
`the claim limitation
`under
`35 U.S.C 1120 or pre-AIA 35
`If applicant wishes to have
`
`treated
`
`U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or
`the phrase means for or step for or
`applicant may amend the claim so
`U.S .C 112 sixth paragraph
`
`that
`
`the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the
`is clearly not modified by sufficient
`the generic placeholder
`stmcture material or acts for performing the
`
`claimed function, or may present a sufficient showing that the claim limitation is written as a function to be
`claimed
`the claim limitation is written
`function to be
`or may present
`function
`showing
`
`sufficient
`
`that
`
`as
`
`performed and the claim does not recite sufficient structure, material, or acts for performing the claimed
`and
`the claim does not recite sufficient
`structure material or acts for performing the claimed
`performed
`
`function.
`function
`
`If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA
`under 35 U.S.C
`121 or pre-AJA
`the claim limitation treated
`If applicant does not wish to have
`
`35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C.
`35 U.S.C
`35 U.S.C 112 sixth paragraph
`applicant may amend the claim so tha