DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/7/2026 has been entered.
Status of the Claims
Claims 1-20, 22-26 and 28 are pending.
Claims 6-9, 13, 17 and 20 remain withdrawn.
Claims 27 and 29 have been cancelled.
Response to Arguments
Applicant' s arguments, filed 1/7/2026, have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented, specifically “wherein the body comprises an interior space; and wherein the first end of the body is configured such that the inhalant-generating article can be inserted and removed from the interior space”. The prior art of record does not appear to disclose the new limitations. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art Tarora (US 20080053465) in combination with previously applied prior art.
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 1 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.
Claim 1 recites the limitation "the inhalant-generating article". There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, the Examiner interprets this limitation to be referring to “an inhalant-generating component” in line 2.
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, 4, 5, 12, 15, 16, 18, 19, 22-26 and 28 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 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 26, modified Herholdt teaches that the control member (9) is not integral to the body, specifically it comes apart from the body (Herholdt, Fig. 2).
Regarding claims 4, 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 5, 12, 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 28, modified Herholdt teaches that the body (6) is separate from the inhalant-generating component (2) (Herholdt, Fig. 1).
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.
Claims 10 and 11 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 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]).
Regarding claim 11, 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).
Conclusion
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