DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 12/23/2025.
Claims 5, 8, and 15 are amended.
Claims 2-4, 7, 9, 11-12 are cancelled.
Claims 1, 5-6, 8, 10, and 13-32 are pending. Claims 19-31 have been withdrawn.
Applicant has overcome the rejection of claims 8-9 under 35 U.S.C. 112(a) as failing to comply with the written description requirement by amending the claims in the reply filed 12/23/2025.
Applicant has overcome the rejection of claims 5-6 under 35 U.S.C. 112(b) as being indefinite by amending the claims in the reply filed 12/23/2025.
Response to Arguments
Applicant' s arguments, see p. 16-17, filed 12/23/2025, with respect to the rejection(s) of claim 15 under 35 U.S.C. 103 as being unpatentable over Liu in view of Bennett and further in view of Maas ‘202 have been fully considered and are persuasive. Applicant has amended claim 15 to include the limitation “wherein the body comprises an inlet disk near the second surface,” “a plurality of ribs extending from the first surface to the inlet disk,” and “wherein the inlet disk extends from the through-hole to the outer surface of the flow discharge device and is configured to fit tightly within the housing of the electronic smoking device.” The prior art of record fails to disclose such a limitation. Therefore, the rejection has been withdrawn. The Examiner notes that Applicant’s arguments regarding Maas ‘202 are unpersuasive (see below).
Applicant's arguments filed 12/23/2025 regarding Liu and Bennet have been fully considered but they are not persuasive.
Claim 1
Applicant argues that neither Liu nor Bennett teaches that the axial lengths of distinct regions of a through-hole are result-effective variables for controlling nanoparticle plume size (p. 7). Applicant argues that while Liu’s structure may incidentally have first and second lengths, they are not configured for the purpose of achieving 10-100 nm particles (p. 7-8; p. 11).
The Examiner finds Applicant's argument unpersuasive. "One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." MPEP 2145(IV). Here, Applicant again attacks Liu individually whereas the rejection of claim 1 is dependent on the combination of Liu and Bennett. Rather, Liu as modified by Bennett includes a through hole having first and second lengths as well as first and second cross-sectional shapes that achieve particles having a 10 to 100 nm size.
Applicant argues that the Examiner’s assertion, that the combination of Liu’s cover body already having first and second lengths with Bennett’s teaching of modifying the cross-section of the through hole to achieve a MMAD of 10-100 nm would result in a configuration where the shape of the through-hole and the first and second lengths are configured such that the flow discharge device generates a plume of aerosol with particle sizes between 10 and 100 nm, is conclusory and relies on impermissible hindsight (p. 8; p. 12). Applicant also argues that the Office action has failed to establish that the axial length is recognized as a result-effective variable for controlling nanoparticle size or that one of skill in the art would manipulate this specific dimension to achieve the recited plume characteristics (p. 8).
The Examiner finds Applicant’s argument unpersuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, the combination of Liu and Bennett cannot be considered hindsight because Bennett teaches adjusting the cross section of the chamber to achieve particle sizes between 10 and 100 nm ([0097], [0134]).
Moreover, the Examiner again points out that claim 1 requires "wherein the shape of the through-hole and the first and second lengths are configured such that the flow discharge device generates a plume of aerosol with particle sizes between 10 and 100 nm.” By optimizing the cross section of the chamber in Liu, one of skill in the art would modify the shape of the through-hole already having first and second lengths to achieve the claimed particle size.
Lastly, the Examiner notes that there is no burden to establish that the axial length is recognized as a result-effective variable as Applicant suggests. Rather, because one of skill in the art is modifying the cross section of the chamber while keeping the lengths of the chamber the same, such a modification is sufficient to read on the claim limitation.
Applicant argues that the Advisory Action fails to explain how one of ordinary skill in the art would be motivated to modify Liu’s existing lengths based on Bennetts’ cross-sectional teachings (p. 8).
The Examiner fids Applicant’s argument unpersuasive. The Examiner again points out that there is nothing in the claim that requires adjusting the first and second lengths. Rather the first and second lengths merely need to be configured such that the flow discharge device generates a plume of aerosol with particle sizes between 10 and 100 nm.” Here, the Examiner is not modifying Liu’s existing lengths as Applicant argues.
Claim 15
Applicant argues the unribbed portion serves as a lead-in region that allows the filter tip to slide onto the tube body before engaging the friction-fit ribs, facilitating easier assembly (p. 9). Applicant argues that extending rbis 147 to the to the very end of the tube body 144 would not merely increase friction and adhesion in the vertical direction but also eliminate this lead-in region and impose friction at the moment of initial mating, increasing the difficulty of assembly, which is contrary to Maas ‘202’s objective that the simulated tip can be replaced at any time (citing p. 2, ll. 6-7; p. 3, ll. 12-20) (p. 9).
The Examiner finds Applicant argument unpersuasive. Applicant’s argument that increasing friction at the initial insertion being contrary to Maas ‘202’s objective that the tip can be replaced at any time is unsupported by objective evidence. While there may be more friction, there is nothing in Maas ‘202 that such a modification would not allow the tip to be easily replaced. Rather, such modification is consistent wholly consistent with Maas’ 202’s objective of increasing the adhesion between the two parts (Maas ‘202; p. 3, para. 4).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 15, the claim limitation “an inlet disk near the second surface” and “configured to fit tightly within the housing of the electronic smoking device” are indefinite because the terms “near” and “fit tightly” are relative/subjective terms. The terms “near” and “fit tightly” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, the claim limitations will be interpreted as “an inlet disk positioned on the second surface” and “configured to fit within the housing of the electronic smoking device” respectively.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1, 5, 8, 16, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2015/0296884) in view of Bennett et al. (US 2005/0034723; of record).
Regarding claim 1, Liu discloses a soft sucking rod for an electronic cigarette (abstract) comprising:
a cover body (40; Fig. 4; “body”) inserted into a sucking rod sleeve (1; “housing”) and having a first surface and a second surface (see annotated Fig. 4);
a nozzle vent (42; “through-hole”) extending from the first surface to the second surface (see Fig. 4) and defined by a contiguous wall extending from the surface to the second surface (see Fig. 4);
wherein the nozzle vent includes:
an exit region (see annotated Fig. 4) located in the first surface (see annotated Fig. 4), and
a throat region (see annotated Fig. 4) comprising a cylindrical shape (see Fig. 3) located in the second surface (see annotated Fig. 4) and extending to the exit region (see Fig. 4); wherein the through-hole is curved (see Figs. 3-4); wherein the nozzle vent (i.e., both the throat region and exit region) is configured to receive a combination of external air and heated liquid to generate a smog ([0046; “receive aerosol at the throat region, pass the aerosol through the through-hole, and exit the aerosol at the exit region”); wherein the exit region has a second length (see annotated Fig. 4) and the throat region has a first length (see annotated Fig. 4); wherein the shape of the through-hole and the first and second lengths generates a smog ([0046]; “plume of aerosol”);
wherein the cover body includes a nozzle (4; “mouthpiece”), and the exit region having a larger diameter than a diameter of the throat region (see annotated Fig. 4); and
wherein the exit region is a diverging exit region between the throat region and an exit and has a cone shape with an exit angle (see annotated Fig. 4).
Regarding the claim limitation “the through-hole is shaped and configured to adjust characteristics of flow between the first surface and the second surface,” and “wherein the through-hole is configured to control sheer forces acting on the aerosol as it moves from the throat region to the exit region,” the instant specification describes that the flow discharge device controls shear forces via their specific geometry and that a tighter throat region generates more velocity and shear (see para. 34-37). Given Liu’s nozzle vent shape having a throat region and an exit region, the flow velocity inside the nozzle vent would first increase as it enters the throat region (corresponding to an increase in shear force) followed by an decrease in flow velocity as it enters the exit region (corresponding to an decrease in shear force).
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However, Liu does not explicitly teach the plume of aerosol has particle sizes between 10 and 100 nm. Specifically, while Liu discloses a flow discharge device that is identical in shape to the flow discharge device as claimed in claim 1, Liu does not explicitly teach as to the size of the smog the device produces.
Bennett teaches an assembly and method for producing a condensation aerosol (abstract) wherein it is known that particle sizes that fall in the range between 100 nm and 1 µm tend to have poor deposition in the deep lungs ([0132]). Bennet solves this problem by volatilizing of a drug ([0005]) such as nicotine ([0068]) and altering the particle size by modifying the cross-section of the chamber condensation region to increase or decrease linear gas velocity for a given volumetric flow rate, and/or the presence or absence of structures that produce turbulence within the chamber to produce condensation particles in the size range of 20-100 nm mass median aerosol diameter (MMAD) ([0097], [0134]; “small and uniform particle sizes between 10 and 100 nm”).
Thus, Bennett discloses that the cross-sectional shape of the condensation region is a result-effective variable for linear gas velocity which affects the condensation particle size.
It would have been obvious to said skilled artisan to have modified the cross section of Liu’s nozzle vent to obtain various amounts of linear gas velocity thus affecting the particle size of the condensation particles because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 II(B). Moreover, one of ordinary skill in the art would be further motivated to additionally or alternatively add structures that produce turbulence as in Bennett to the nozzle vent of Liu in order to obtain the predictable result of producing condensation particles in the size of 20-100 nm (Bennett; [0097] and [0134]) in order to provide more efficient uptake of aerosolized nicotine in the deep lungs due to diffusion of condensation particles in the range of 20-100 nm (Bennett; [0132]).
Regarding claim 5, modified Liu discloses the throat region has a smaller diameter than the exit region (see annotated Fig. 4).
Regarding claim 8, modified Liu discloses the length of the exit region is shorter than the length of the throat region (see annotated Fig. 4).
Regarding claim 16, modified Liu discloses the cover body is cylindrical ([0008]), which includes an outer cylindrical wall (see Fig. 3-4).
Regarding claim 32, modified Liu discloses the cover body further comprises the cylindrical wall (see annotated Fig. 4; “first annular portion”) and a positioning flange (43; “second annular portion” and “step structure”) for tightly engaging and end portion of the sucking rod sleeve ([0036]; “secured fit”).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Bennett et al. as applied to claim 5 above, and further in view of Stedman et al. (US 2011/0155129; of record).
Regarding claim 6, modified Liu discloses the flow discharge device as discussed above with respect to claim 5 above including the throat region.
However, modified Liu is silent as to the throat region has a diameter in the range of 1.0-2.8 mm. Specifically, modified Liu does not disclose the diameter of the throat.
Stedman teaches an enhanced educator element (abstract) comprising the educator (100; Fig. 1) comprising a constriction zone (125; “throat region”), and an outlet (120; “outlet region”), wherein the constriction zone has a diameter (Dt; Fig. 3) of 2.53 mm (Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the throat region of modified Liu to be 2.53 mm as in Stedman because (a) such a modification involves a mere change in the size of a component and (b) such a modification involves optimization within prior art conditions. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 (IV). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP 2144.05(II)(A).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Bennett et al. as applied to claim 1 above, and further in view of further evidenced by Princeton (Bernoulli’s Equation; of record).
Regarding claim 10, modified Liu discloses the exit region having an increasing cross-sectional area (see annotated Fig. 4).
As evidenced by Princeton, a decreasing cross-sectional area means that the velocity of the fluid is increasing or accelerating, and conversely an increasing cross-sectional area means that the velocity of the fluid is decreasing or decelerating (Page 2). Therefore, modified Liu implicitly discloses that the exit region having an increasing cross-sectional shape will cause decrease of flow velocity of the smog therethrough.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Bennett et al. as applied to claim 5 above, and further in view of Wissink et al. (US 2009/0050137; of record).
Regarding claim 13, modified Liu is silent as to the first surface includes a pattern indicative of the through-hole shape.
Wissink teaches a mixing channel for an inhaler (abstract) comprising: grooves (20) projection (21), saw teeth (23) or microfibers (24) along the inner surface of the channel wall (para. 66; see Fig. 11; “pattern”) which significantly reduces the airflow resistance of the inner surface of the mixing channel (para. 66; “indicative of the through-hole shape”).
It would have been obvious to said skilled artisan to have added the grooves, projections, saw teeth, or microfibers of Wissink to the first surface of modified Liu in order to significantly reduce the airflow resistance of the inner surface (Wissink; para. 66) thus giving a user a better feeling when he draws from the inhaler (Wissink; para. 20).
Regarding claim 14, modified Liu discloses the grooves, projection, and saw teeth have a depth (see Wissink; see Fig. 21) and can be positioned along the inner surface of the channel wall (see Wissink; para. 66; includes the first surface).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Bennett et al. as applied to claim 1 above, and further in view of Tucker et al. (US 2013/0192615; of record).
Regarding claim 17-18, modified Liu discloses the flow discharge device as discussed above with respect to claim 1.
However, modified Liu is silent as to a plurality of through-holes extending from the first surface to the second surface, the plurality of through-holes collectively being shaped to adjust the characteristics of flow between the first surface and the second surface; and a protrusion positioned to direct flow toward at least one of the plurality of through-holes.
Tucker teaches an electronic smoking article (abstract) comprising a mouthpiece end insert (8; Fig. 2, 4-7) comprising a first surface and a second surface (see Fig. 7) and at least two outlet passages (24; para. 56; “through-holes”) extending from the first surface to the second surface (see Fig. 7) and distributed uniformly about the perimeter to substantially uniformly distribute aerosol in the user’s mouth to create a greater perception of fullness (para. 56; “adjust characteristics of flow”), the annular surface (83’; “projection”) is frusto-conical (para. 61) which define the diverging outlet passages (para. 57; “direct flow toward the plurality of through-holes”).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Liu’s nozzle to includes a plurality of through holes with a frustoconical annular surface as in Tucker in order to (a) create greater perception of fullness of aerosol in a user’s mouth (Tucker; para. 56) and (b) substantially removing or breaking apart unaerosolized liquid droplets to enhance the aerosol (Tucker; para. 57).
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or reasonably suggest the particular structure of the flow discharge device as required by claim 15. Specifically, the prior art does not teach or suggest “a plurality of ribs extending from the first surface to the inlet disk along a length of the through-hole” and “wherein the inlet disk extends from the through-hole to the outer surface of the flow discharge device and is configured to fit tightly within the housing of the electronic smoking article as required by claim 15.
The closest prior art is Liu (US 2015/0296884). Liu discloses a flow discharge device for an electronic smoking device comprising: a body configured for assembly with a housing of the electronic smoking device, the body having a first surface and a second surface; a through-hole extending from the first surface to the second surface, wherein the through-hole is defined by a contiguous wall extending from the first surface to the second surface, the through- hole is shaped and configured to adjust characteristics of flow between the first surface and the second surface; wherein the through-hole includes: an exit region located in the first surface, and a throat region comprising a cylindrical shape located in the second surface and extending to the exit region, wherein the through-hole is curved and configured to receive an aerosol at the throat region, pass the aerosol through the through-hole and exit the aerosol at the exit region, wherein the through-hole is configured to control sheer forces acting on the aerosol as it moves from the throat region to the exit region, and wherein the exit region has a second length, the throat region has a first length, wherein the body includes a mouthpiece of an electronic cigarette and at least the exit region has a larger diameter than a diameter of the throat region; and wherein a diverging exit region of the through-hole between the throat region and an exit has a cone shape with an exit angle.
The Examiner notes that Liu’s mouthpiece and through-hole have an identical shape to the instant flow discharge device, but does not explicitly teach wherein the shape of the through-hole and the first and second lengths are configured such that the flow discharge device generates a plume of aerosol with particle sizes between 10 and 100 nm. Bennett (US 2005/0034723) teaches that aerosol that condensates into particle sizes between 100 nm and 1 micron tend to have poor deposition in the lungs, and solves this problem by modifying the cross-section of a through-hole to adjust linear gas velocity that produces turbulence in order to produce condensation particles in the size of 20-100 nm. Thus, one of skill in the art would be motivated to optimize the cross-sectional shape of Liu’s through-hole in order to adjust the gas velocity and turbulence to produce condensation particles in the range of 20-100 nm for better absorption into the deep lungs.
Moreover, modified Liu is silent as to a plurality of ribs extending from the first surface along a length of the through-hole and from the through-hole to an outer surface of the flow discharge device. Maas (WO 2009/043202) teaches two pairs of ribs located on the surface of a tube body extending from a first surface towards a second surface along the shaft hole and extending from the shaft hole to the outer surface of the tube body. It would have been obvious to said skilled artisan to have added Maas’ ribs to Liu’s flow discharge device in order to increase the adhesion of the flow discharge device in the electronic smoking device.
Lastly, modified Liu is silent as to the body comprises an inlet disk near the second surface, the plurality of ribs extending from the first surface to the inlet disk, wherein the inlet disk extends from the through-hole to the outer surface of the flow discharge device and is configured to fit tightly within the housing of the electronic smoking device.
While the prior art provides motivation for adding “an inlet disk near the second surface,” the prior art does not disclose or render obvious an inlet disk that “extends from the through-hole to the outer surface of the flow discharge device.” For example, Li (US 2014/0166030) teaches an electronic smoking article comprising a guiding wall (31; Fig. 2; “inlet disk”) that extends downward from a flange (3) that increases the contacting area of the ventilation member and the atomization sleeve (8) and thus the ventilation member and atomization sleeve can be assembled more conveniently ([0021]). However, the guiding wall cannot be considered as “extend[ing] from the through-hole to the outer surface of the flow discharge device,” because there is an annular space between the guide wall and the through-hole. Moreover, McDonald (US 2013/0167852) teaches a smoking device comprising a mouthpiece (310; Fig. 10A) comprising a first gasket (814a) and second gasket (814b) (i.e., “inlet disk”) that wraps around the mouthpiece in order to create a seal ([0051]). However, similar to Li, the gaskets do not “extend from the through hole to the outer surface of the of the flow discharge device” because the body of the mouthpiece is disposed therebetween.
In prior art that teach “an inlet disk that extends from the through-hole to the outer surface of the flow discharge device,” there appears to be no motivation to combine the inlet disk with the plurality of ribs such that the ribs “extend from the first surface to the inlet disk.” Smith (US 3780745) teaches a smoking device comprising a mouthpiece (B) with a shoulder (48; “first surface”) and a central portion (26; “inlet disk near the second surface”) including protuberances (54; similar to the “plurality of ribs”). While Smith teaches the protuberances and central portion prevent the rocking of the mouthpiece, this advantage would only be recognized when it is also combined with the o-ring (52), which creates the rocking (col. 3, ll. 1-11). However, one of skill in the art would appreciate that adding an o-ring would into modified Liu’s flow discharge device would physical interfere with the ability of the plurality of ribs to extend to the central portion. Moreover, Tarrant (US 3796223) teaches a flange (19) at a second end of the mouthpiece (11) which extends from the through-hole to the outer surface of the mouthpiece (see Fig. 6), wherein the flange allows the mouthpiece to retract into the smoking device. However, one of skill in the art would appreciate modifying the plurality of ribs to extend to the added flange in modified Liu creates more friction (as added by Maas) and interfere with the ability of the mouthpiece to retract.
Thus, claim 15 is deemed allowable over the prior art because, while inlet disks are known in the art and there is motivation to combine an inlet disk with Liu’s flow discharge device, there is no motivation or suggestion to configure the flow discharge device with both the inlet disk “extend[ing] from the through-hole to the outer surface of the flow discharge device” and “a plurality of ribs extending form the first surface to the inlet disk” absent the benefit of hindsight gleaned from Applicant’s disclosure.
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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