www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/359,938
`
`03/20/2019
`
`Kyle D. Newton
`
`62210-492RI1US
`
`6916
`
`7590
`
`148514
`Mintz/JUUL
`One Financial Center
`
`Boston, MA 02111
`
`09/08/2021
`
`EXAMINER
`
`TORRES VELAZQUEZ, NORCALIZ
`
`ART UNIT
`
`3991
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/08/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`IPDocketingBOS @ mintz.com
`IPFileroombos @ mintz.com
`
`mintzdocketing @cpaglobal.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/359 938
`Newton, Kyle D.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NORCA L TORRES VELAZQUEZ| 3991
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 14 July 2021 and 15 July 2021.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-10 and 12-55 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Claim(s) 17-21 and 41-55 is/are allowed.
`6)
`Claim(s) 1-10 and 12-16 is/are rejected.
`)
`)
`Claim(s) 22-40 is/are objected to.
`)
`O Claim(s
`are subject to restriction and/or election requirement
`)
`)
`“ If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)CL) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)C] accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)C) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)LJ None of the:
`b)L) Some**
`a)LJ} All
`1.2 Certified copies of the priority documents have been received.
`2.1.) 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 receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210830
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Reissue Applications
`
`For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251
`
`and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012.
`
`Where specifically designated, these are “pre-AIA”provisions.
`
`For reissue applicationsfiled on or after September 16, 2012, all references to 35 U.S.C.
`
`251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
`
`The presentreissue application is a broadening reissue of US 9,596,887 Patent (the ‘887
`
`Patent herein), and it includes new claims 17-55. This Final action is in response to the
`
`amendment and remarksfiled July 14 and July 15, 2021.
`
`Invention of the ‘024 Patent
`
`The ‘887 Patent issued with sixteen (16) claims. The amendmentfiled 7/15/2021 amends
`claims 1, 3-10 and 12-16, cancels claim 11 and includes amendments to some of new claims 17-
`55. Claims 1-10 and 12-55 are pending in the present reissue. Independent claims 1 and 17 are
`representative as follows:
`
`1. (Twice, Amended) An electronic cigarette cartridge apparatus, comprising:
`
`ahousing having a mouthpiece with an aerosol outlet;
`
`an atomizer disposed within an atomizing chamber, and operable to selectively generate
`an aerosolof [the]_a liquid in response to electric current flowing therethrough;
`
`said atomizing chamber having an air inlet, an atomizer outlet coupled to said aerosol
`outlet, [and Ja first wick aperture, and a second wick aperture;
`
`aliquid reservoir disposed within said housing and sealably separated from said
`atomizing chamber[,]; and
`
`a wick in contact with the liquid in the liquid reservoir [disposed] through said first wick
`aperture[ betweensaid liquid reservoir and said atomizing chamber] and said second wick
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 3
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`aperture, the wick disposed between the liquid reservor and the atomizer_and configured to
`transfer the liquid by capillarity from said liquid reservoir to said atomizer;
`
`wherein said atomizer outlet and said aerosol outlet are coupled by a chimney.
`
`17. (New, Amended) A method, comprising:
`
`transferring liquid from a liquid reservoir of an electronic cigarette cartridge to an
`atomizing chamberof the cartridge with a wick extending betweenthe liquid reservoir and
`the atomizing chamber, the liquid reservoir surrounds and is sealed from an interior of the
`atomizing chamber;
`
`generating an aerosol of the liquid in the atomizing chamber; and
`
`channeling the aerosol from an outlet of the atomizing chamber to an aerosol outlet_of the
`electronic cigarette cartridge with a chimney coupled to the outlet of the atomizing chamber
`and to the aerosol outlet.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
`the conflicting claims are not identical, but at least one examined application claim is not
`patentably distinct from the reference claim(s) because the examined application claim is either
`anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg,
`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
`Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`be used to overcome an actualor provisional rejection based on nonstatutory double patenting
`provided the reference application or patent either is shown to be commonly owned with the
`examined application, or claims an invention made asa result of activities undertaken within the
`scope of a jomt research agreement. See MPEP § 717.02 for applications subject to examination
`under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP
`$$ 706.02()(1) - 706.02(1)(3) for applications not subject to examination underthe first inventor
`to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`1.321(b).
`The USPTO Internet website contains terminal disclaimer forms which may be used.
`Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the
`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may befilled out completely
`online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 4
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`processed and approved immediately upon submission. For more information about eTerminal
`fey
`Disclaimers, refer to wwwus
`nt
`
`Claims 1-10 and 12-16 are rejected on the ground of nonstatutory double patenting
`as being unpatentable over claims 1-17 of U.S. Patent No. 8,528,569 in view of HON (CA
`2884987).
`
`Claims 1, 5, 11 and 12 of the ‘569 Patent teach the limitations of claim 1 of the present
`
`reissue, except that they fail to claim that the atomizer generates an aerosol of the liquid “in
`
`response to electric current flowing therethrough.” HON discloses an atomizing electronic
`
`cigarette and teaches that when the user inhales, as the sensor 2 communicates with the air vent
`
`101, the through hole 51, the channel 31 and the air suction port “a” form an airflow loop with the
`
`auxiliary air inlet 4. When the gas flow is generated inside the electronic cigarette, the sensor 3
`
`switches the circuit on, the electric heater 5 starts heating to make cigarette liquid in the liquid
`
`permeating component 6 be gasified after reaching the boiling point.
`
`(Abstract; Page 7, last
`
`paragraph bridging to Page 8, first paragraph). Thus,
`
`it would have been obvious to a person
`
`having ordinary skill
`
`in the art to use an electric current in the claims of the “569 patent with the
`
`motivation of producing aerosol as disclosed by HON. (Page7, last paragraph bridging to Page 8,
`
`first paragraph) Claims 2-4 and 6-17 of the ‘569 Patent provide for the limitations in dependent
`
`claims 2-10 and 12-16 of the presentreissue.
`
`Rejections Overcome
`
`The prior art rejections set forth on pp. 5-19 of the Office Action mailed 01/14/2021 are
`
`expressly withdrawn in view of Applicant’s amendment and arguments.
`
`In particular, claims 1-10, 12-16 and 22-55 as amended on July 15, 2021 are free of prior
`
`art because the prior art of record fails to teach that the atomizing chamber comprisesafirst wick
`
`aperture and a second wick aperture each forming an opening between the atomizing chamber
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 5
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`and the liquid reservoir and a wick havingafirst wick end extending out of the atomizing
`
`chamber through the first wick aperture into the liquid reservoir and a second wick end
`
`extending out of the atomizing chamber through the second wick aperture into the liquid
`
`reservor.
`
`Claims 17-21 are free of prior art because the prior art of record fails to provide a method
`
`of the present invention wherein the liquid reservoir surrounds and is sealed from an interior of
`
`the atomizing chamberas claimed in independent claim 17. It is noted that the prior art of
`
`FANGteaches the use of a liquid reservoir butit fails to surround the interior of the atomizing
`
`chamber. HONprovidesaliquid storage component 3 that surrounds an atomizing chamber
`
`(Fig. 6), however, there is no rationale to substitute the liquid tank of FANG with the liquid
`
`storage of component of HONthat includes a porous material.
`
`Response to Arguments
`
`Applicant's arguments filed 07/15/2021 have been fully considered but they are not
`
`persuasive.
`
`With respect to the obviousness-type double patenting rejection, Applicant defers filng a
`
`terminal disclaimer until the claims of the present application are allowed (Remarks, p. 22). It is
`
`noted that a terminal disclaimer has not yet been filed, and thus, the obviousness-type double
`
`patenting rejection is maintained.
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 6
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`Claims 1-10 and 12-16 are rejected.
`
`Conclusion
`
`Claims 22-40 are objected to as being dependent upon a rejected base claim, but would
`
`be allowable if rewritten in independent form including all of the limitations of the base claim
`
`and any intervening claims.
`
`Claims 17-21 and 41-44 are allowed.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action.
`
`In the event a first reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
`
`the end of the THREE-MONTHshortenedstatutory period, then the shortened statutory period
`
`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
`
`In no event,
`
`however, will the statutory period for reply expire later than SIX MONTHSfrom the mailing
`
`date of this final action.
`
`Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely
`apprise the Office of any prior or concurrent proceeding in which Patent No. 9,596,887 is or was
`involved. These proceedings would include interferences, reissues, reexaminations, and
`litigation.
`Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely
`apprise the Office of any information which is material to patentability of the claims under
`consideration in this reissue application.
`These obligations rest with each individual associated with the filing and prosecution of
`this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to NORCA LIZ TORRES VELAZQUEZwhosetelephone number
`
`

`

`Application/Control Number: 16/359,938
`Art Unit: 3991
`
`Page 7
`
`is (571)272-1484. The examiner can normally be reached on M-Th 7:00 am - 4:30 pm and
`alternate Fridays-.
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`supervisor, Timothy Speer can be reached on (313) 446-4825. The fax phone numberfor the
`organization wherethis application or proceeding is assigned is 571-273-8300.
`Information regarding the status of an application may be obtained from the Patent
`Application Information Retrieval (PAIR) system. Status information for published applications
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`applications is available through Private PAIR only. For more information about the PAIR
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`like assistance from a USPTO Customer Service Representative or access to the automated
`information system, call 800-786-9199 (INUSA OR CANADA)or 571-272-1000.
`
`/Norca L. Torres Velazquez/
`Patent Reexamination Specialist
`Central Reexamination Unit 3991
`
`Conferees:
`
`/Alan Diamond/
`Patent Reexamination Specialist
`Central Reexamination Unit 3991
`
`/TIMOTHY M SPEER/
`Supervisory Patent Examiner, Art Unit 3991
`
`