DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1-3, 7-10, 14-20, 22-25 and 30-32 are pending.
Claims 7-9, 17 and 20 remain withdrawn.
Claims 4-6, 11-13 and 26-29 have been cancelled.
Claims 30-32 are new.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
The claim requires that the "body" extends from a first end to an opposite end, whereby the opposite end is the mouthpiece and that the claim requires that the body defines an inhalant flow pathway from the inhalant-generating component to the mouthpiece. But, Herholdt, FIG. 1, the tipping paper 6 does not extend all the way to the mouthpiece 8, but rather only extends to the middle part 9 and there is no disclosure of the tipping paper 6 comprising an airflow pathway from the inhalant-generating component to the mouthpiece, as required by the claims. Applicant asserts that the disclosure of Herholdt contains a teaching away from extending the tipping paper 6 to cover the middle part 9, because if the tipping paper were to cover both components 9 and 10, this would rotationally couple these components. Relative rotation of components 9 and 10 is required for correct operation of the device of Herholdt, and so a person of ordinary skill in the art would not modify Herholdt such that the tipping paper extends from the inhalant-generating component to the mouthpiece.
Examiner Response A:
The Examiner respectfully disagrees. The claim does not state that the mouthpiece is on the second end of the body. Rather, the claim states that the mouthpiece at an opposite end of the body, which means the mouthpiece does not need to be on the body.
The claim also does not state that the passage through the body extends from the inhalant-generating component to the mouthpiece, only that the inhalant flow path extends from the inhalant-generating component to the mouthpiece.
Applicant Argument B:
Applicant points out that the Office Action incorrectly indicates that Herholdt teaches that the body is inserted into the interior space of the inhalant generating component, and that it would be obvious to provide the alternative whereby the inhalant generating component is inserted into a space within the body. Applicant believes the Examiner's rationale incorrectly states that the body is inserted into an interior space of the inhalant generating component, as the inhalant generating component does not comprise an interior space. By the nature of the tipping paper surrounding the inhalant generating component, it is clear that there is no interior space in the inhalant generating component which the tipping paper 6 is inserted into. Therefore, modification of Herholdt, as the Examiner suggests, is not a simple substitution or one that would be known by a person of ordinary skill in the art.
Examiner Response B:
Herholdt does not teach that the body comprises an interior space into which the inhalant generating component can be inserted and removed from (bottom of page 5). Thus, the examiner relies upon Tarora to teach this limitation. It would have been obvious for one of ordinary skill in the art at the time of filing to have made the body of Herholdt comprise an interior space into which the inhalant-generating component can be inserted and removed from, as suggested by Tarora, to be able to reuse the body and make it easy to replace the inhalant-generating component.
Applicant Argument C:
Applicant notes that when comparing Tarora to the current claims, the Examiner has construed the flavour generating element 32 as the claimed inhalant modifying mechanism. However, the claimed inhalant modifying mechanism is configured to selectively introduce an additive to the inhalant. Applicant points out that the Examiner does not explain how the flavour generating element 32 of Tarora is able to selectively introduce an additive. Accordingly, Tarora fails to disclose this subject matter, and a person of ordinary skill in the art would not be looking to the disclosure of Tarora, as the combination of Tarora and Herholdt is not straightforward due to the different mechanisms for providing additives.
Examiner Response C:
The Examiner respectfully disagrees. Tarora is only relied upon to teach an inhalation device wherein the body comprises an interior space into which the inhalant generating component can be inserted and removed from.
Applicant Argument D:
In the Office Action, the Examiner does not address Applicant's previous contentions that a person of ordinary skill in the art would not modify the tipping paper 6 of Herholdt to comprise an interior space, as a person of ordinary skill would appreciate that a tipping paper alone would lack the structural strength required for repeated insertion and removal of tobacco rods within. Applicant reasserts these contentions and additionally points out that the tipping paper of Herholdt would comprise an adhesive to adhere the tipping paper to the tobacco rod. As such, it would be highly illogical for the tipping paper to be removably attached to the tobacco rod.
Examiner Response D:
The Examiner respectfully disagrees. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant Argument E:
Additionally, for clarity with respect to the teachings of these references, Applicant also asserts that a person of ordinary skill in the art would not modify the device of Herholdt to incorporate the filter holder 10 of Tarora. If one skilled in the art were to modify Herholdt to include the filter holder 10 of Tarora, that this would result in covering of both components 9 and 10 of Herholdt, which would rotationally couple these components. Relative rotation of components 9 and 10 is required for correct operation of the device of Herholdt, and so one skilled in the art would not modify Herholdt to include the filter holder 10 of Tarora. Finally, the Examiner has not set forth how one could modify the single-use consumable disclosed in Herholdt to arrive at the claimed invention. For at least these reasons, no prima facie case of obviousness has been asserted against the current claims.
Examiner Response E:
The Examiner respectfully disagrees. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this instance, Tarora is relied upon to teach modifying Herholdt so that the body comprises an interior space into which the inhalant generating component can be inserted and removed from to be able to reuse the body and make it easy to replace the inhalant-generating component.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, 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 negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claims 1, 2, 15, 16, 18, 19, 22-25 and 32 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Herholdt (WO 2011/095410, as cited in IDS dated 3/5/2024) in view of Tarora (US 20080053465).
Regarding claim 1, Herholdt teaches an inhalation device (1) comprising:
a body (consists of the components that are part of element 6, not the inhalant-generating component (2) which can be joined with the body by element 6 (page 4, lines 17-18)) with a first end configured to receive an inhalant-generating component (2, Fig. 1);
a mouthpiece at an opposite end of the body (8), the body including a passage therethrough defining an inhalant flow path from the inhalant-generating component to the mouthpiece and wherein the body extends from the first end to the opposite end (page 4, line 26- page 5, line 6; Figs. 3 and 4); and
an inhalant modifying mechanism (9 and 10) configured to selectively introduce an organoleptic additive to the inhalant prior to inhalation by a user, wherein the inhalant modifying mechanism comprises a control member (9) received within an interior space of the body and having a plurality of apertures therethrough (Fig. 2), at least one aperture loaded with an organoleptic material (center aperture in Fig. 5a) (page 6, lines 7-9), and a blocking element (10), wherein the control member is moveable between a first position in which gas is permitted to flow through the at least one loaded aperture (Fig. 4), and a second position in which the or each loaded aperture is closed by the blocking element so that gas is only permitted to flow through the remaining apertures, when a user draws on the mouthpiece (Fig. 3) (page 4, line 29 - page 5, line 6).
Herholdt teaches that the control member (9), which is part of element 7 (Fig. 2), is movable relative to the body between the first and second positions (page 4, line 26-page 5, line 6).
Herholdt teaches that the body is inserted into the interior space of the inhalant-generating component, not that the body comprises an interior space into which the inhalant-generating component can be inserted and removed from.
Tarora teaches an inhalation device (Fig. 1) comprising a body (10) with a first end (14) configured to receive an inhalant-generating component (C); a mouthpiece at an opposite end of the body (40); and an inhalant modifying mechanism (32) configured to selectively introduce an organoleptic additive to the inhalant prior to inhalation by a user. Tarora teaches that the body (10) comprises an interior space (14), and the inhalant-generating article (C) can be inserted and removed from the interior space (14) of the body (10) ([0064]). It would have been obvious for one of ordinary skill in the art at the time of filing to have made the body of Herholdt comprise an interior space into which the inhalant-generating component can be inserted and removed from, as suggested by Tarora, to be able to reuse the body and make it easy to replace the inhalant-generating component.
Regarding claim 2, modified Herholdt teaches that the control member is disposed in the passage such that the inhalant flow path passes through the apertures in the control member (Herholdt, page 6, lines 6-9).
Regarding claims 15 and 18, modified Herholdt teaches that the smoking device is configured to receive a rod of smokable material (2) to generate smoke as the inhalant to be drawn through the device by combustion of the rod of smokable material (Herholdt, page 3, lines 13-17).
Regarding claims 16 and 19, modified Herholdt teaches that the inhalation device is configured to receive a non-combustible cigarette (heat-not-burn products) (Herholdt, page 3, lines 13-17).
Regarding claim 22, modified Herholdt teaches that the control member (9) is received within an interior space of the body (Herholdt, Figs. 3 and 4), specifically control member (9) is inserted into the body, specifically blocking element (10).
Regarding claim 23, modified Herholdt teaches that the control member (9) includes a radially-projecting element extending from the control member to an outer surface of the body (the ridge of control member 9 that extends to the outer surface of the body as seen in Fig. 2 of Herholdt).
Regarding claim 24, modified Herholdt teaches that the blocking member (10) is received within an interior space of the body (Herholdt, Fig. 1).
Regarding claim 25, modified Herholdt teaches the blocking member (10) remains stationary relative to the body when the control member (9) is moved between the first and second positions (Herholdt, page 5, lines 3-6).
Regarding claim 32, this limitation is directed to the intended use of the article. However, the courts have held that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim. The direction of air flow in the first position and the second position, respectively, is not a structural limitation and thus does not add structural limitations to the claim.
Claims 3 and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Herholdt in view of Tarora as applied to claim 1 above, and further in view of Pears (US 7779860).
Regarding claims 3 and 14, modified Herholdt teaches that the control member (9) includes a radially-projecting element extending from the control member to an outer surface of the body (the ridge of control member 9 that extends to the outer surface of the body as seen in Fig. 2) but does not expressly teach that the control member comprises a lever or button.
Pears teaches an airflow control mechanism which includes a collar (120) and a lever (22) molded integrally therein which allows a user to rotate the collar by pushing on the lever to control airflow through the openings in the collar (col. 4, lines 10-52). It would have been obvious for one of ordinary skill in the art at the time of the invention to have included a lever, as taught by Pears, on the outer surface of the control member of modified Herholdt, and the results of the substitution would have been predictable to one of ordinary skill before the effective filing date, namely to make it easier for the user to rotate the control member (9) between a first position and a second position.
Claim 10 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Herholdt in view of Tarora as applied to claim 1 above, and further in view of Becker (US 20080017206).
Regarding claim 10, modified Herholdt teaches filling treatment chamber (17) with additives such as granular flavorants (page 6, lines 30-34) but does not expressly teach that the organoleptic material in the at least one aperture is coated on an inside wall of the aperture such that gas flowing through the coated aperture sweeps over the organoleptic material for the additive to become entrained in the gas flow.
Becker, which teaches menthol cigarettes and methods of making menthol cigarettes, teaches that the additive may be applied as a coating to one or more surfaces of one or more selected components of the cigarette ([0062]). It would have been obvious for one of ordinary skill in the art at the time of filing to have coated the treatment chambers of modified Herholdt with additives such as menthol, as taught by Becker, with a reasonable expectation of success and predictable results because Becker teaches that coating the additive is an equivalent alternative to other means of incorporating additive ([0062]).
Allowable Subject Matter
Claims 30 and 31 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.
No prior art discloses the claimed first region and the claimed second region or the claimed blocking portions. Specifically, that the body comprises a first region downstream of the control member, and second region upstream of the control member, wherein the control member is moveable relative to both first and second regions between the first and second positions, or that the blocking element comprises blocking portions which are configured to be axially aligned and adjacent to at least one of the loaded apertures to close the at least one of the loaded apertures.
The closest prior art of record is Herholdt. Herholdt teaches a blocking element (10) and that the control member (9), which is part of element 7 (Fig. 2), is movable relative to the body between the first and second positions, or vice versa, the body is movable relative to the control member (9), which is part of element 7, between the first and second positions (page 4, line 26-page 5, line 6).
Herholdt does not teach that the body comprises a first region downstream of the control member, and second region upstream of the control member, wherein the control member is moveable relative to both first and second regions between the first and second positions. Herholdt also does not teach that the blocking element comprises blocking portions which are configured to be axially aligned and adjacent to at least one of the loaded apertures to close that at least one of the loaded apertures.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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 MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights