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 .
The status of the 09/29/2025 claims, is as follows: Claims 1 and 8 have been amended; Claims 2 and 12 have been canceled; and claims 1, 3-11, and 13-14 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, 13-14, and 8-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1 (similarly applying to claim 8):
The limitation “the liquid aerosol-forming substrate in the container is held in contact with the rear wall, the front wall, and the side walls by capillary forces between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall” in lines 18-22 is not supported in the original disclosure, therefore constitutes new matter. In para. 0022 of the published specification, it is stated that the liquid aerosol-forming substrate is held by capillary forces in the contiguous volume area. There is no description in the specification that describes the specific positions of the capillary forces (i.e. between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall).
Therefore, the limitations constitute new matter.
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.
Claims 1, 3-7, 13-14, and 8-11 are 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 pre-AIA the applicant regards as the invention.
In claim 1 (similarly applying to claim 8):
The limitation “the liquid aerosol-forming substrate in the container is held in contact with the rear wall, the front wall, and the side walls by capillary forces between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall” in lines 18-22 renders the claim indefinite because it is unclear what the limitation “capillary forces between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall” is intended to mean.
For the purpose of substantive examination, it is presumed to read “the liquid aerosol-forming substrate in the container is held in contact with the rear wall, the front wall, and the side walls by capillary forces” as supported by para. 0022 of the published specification.
In claim 13:
The limitation “a plurality of capillary channels” in line 3 renders the claim indefinite because it is unclear if it is intended to refer to the “single capillary channel” in line 2 of claim 6.
For the purpose of substantive examination, it is presumed that the “plurality of capillary channels” in line 3 has antecedent basis in line 2 of claim 6.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue (US 20070046742)
Regarding claim 1, Inoue discloses a liquid storage portion (ink cartridge 21; fig. 2) for an aerosol-generating system (it is noted “for an aerosol-generating system” is the intended use of the device), the liquid storage portion comprising:
a container (case body 32 and lid 33; fig. 2) configured to hold a liquid aerosol-forming substrate (ink absorbent 36. it is noted the case body 32 can be used to hold liquid aerosol-forming substrate), the container having a dispensing opening (ink outlet 51; fig. 2) configured to dispense the liquid aerosol-forming substrate (para. 0044), the container (case body 32 and lid 33) including,
a top wall (lid 33),
a bottom wall (annotated fig. 2) opposite the top wall, the bottom wall defining the dispensing opening (ink outlet 51),
a rear wall (annotated fig. 2),
a front wall (annotated fig. 2), and
side walls (annotated fig. 2) connecting the front wall to the rear wall, at least one of the front wall or the rear wall being transparent such that a level of the liquid aerosol-forming substrate in the container can be monitored (“case body 32 is formed from a transparent plastic or the like, so the remaining amount of the ink in the ink cartridge 21 is visible from outside”, para. 0039), the container (case body 32 and lid 33) configured such that the liquid aerosol-forming substrate (ink absorbent 36) is stored in a contiguous volume area (annotated fig. 5) of the container (case body 32) at least partially defined by the front wall, the rear wall, and the side walls, the contiguous volume area having a width dimension between the front wall and the rear wall (it is noted the contiguous volume area having the width dimension between the front wall and the rear wall) such that the liquid aerosol-forming substrate in the container (ink absorbent 36) is held in contact with the rear wall, the front wall, and the side walls by capillary forces (capillary force) (para. 0040, 0043, and 0004) between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall (as rejected by 112b above, the ink absorbent 36 is held in place by capillary force) such that the liquid aerosol-forming substrate (ink absorbent 36) is not free to move within the container and is confined in the contiguous volume area (para. 0040, 0043, and 0004) (it is noted the ink absorbent 36 is fixedly positioned within the case body 32), the liquid aerosol-forming substrate in the contiguous volume area being confined near the dispensing opening of the container (ink outlet 51) without regard to orientation of the liquid storage portion (para. 0043, 0004, and 0040-0041. It is noted the ink absorbent 36 is fixedly positioned within the case body 32 irrespective of the orientation of the case body 32).
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Regarding claim 3, Inoue discloses the liquid storage portion (ink cartridge 21; fig. 2), wherein the container (case body 32) is generally rectangular in shape (fig. 2).
Regarding claim 14, Inoue discloses liquid aerosol-forming substrate (modified ink absorbent 36) is not free to move in an entirety of the container (case body 32) (para. 0040, 0004, and 0043) (it is noted the ink absorbent 36 is fixedly positioned within case body 32).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (US 20070046742)
Regarding claim 4, the modification discloses substantially all of the claimed features as set forth above, except the width dimension of the container is below about 2 millimeters.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify the width dimension of Inoue such that it is below about 2 millimeters, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation is to ensure slim design of the container such that it fits into a desired configuration of the ink recording apparatus.
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Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Inoue (US 20070046742) in view of Takagi (US 6000790)
Regarding claim 5, Inoue discloses substantially all of the claimed features as set forth above, except the container comprises:
one or more capillary channels extending from the dispensing opening.
However, Takagi discloses a container (ink chamber 6) comprises:
one or more capillary channels (gap between fibers of absorption member 9) extending from the dispensing opening (hole 7) (fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Inoue to comprise the one or more capillary channels extending from the dispensing opening as taught by Takagi, such that ink can be used efficiently and the ink does not leak to the outside, the internal negative pressure can be controlled, and the negative pressure applied to the ink jet head can be kept within any desired range (col. 5, 2 lines 35-42, 49-55 respectively of Takagi).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (US 20070046742) in view of Ujita (US 20030128260)
Regarding claim 6, Inoue discloses substantially all of the claimed features as set forth above, except the container comprises:
a single capillary channel defining a serpentine liquid path extending from the dispensing opening of the container.
However, Ujita discloses a container (case 61) comprises:
a single capillary channel (gap between thin plates 90) defining a serpentine liquid path (para. 0079; figs. 21-22).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Inoue to comprise the single capillary channel defining the serpentine liquid path as taught by Ujita because the integrity of the thin plates that define the serpentine liquid path is ensured, which allows the ink to be reserved more efficiently (para. 0079 of Ujita). The modification would result in the structure in which the single capillary channel (gap between thin plates 90 of Ujita) defining the serpentine liquid path extending from the dispensing opening of the container (ink outlet 51 of Inoue) (para. 0040 of Inoue, it is noted the ink absorbent 36 directly contacts the inner wall surface of the ink chamber 35 except the top surface. The modification of ink absorbent 36 would result in the serpentine liquid path extending from the dispensing opening of the container.
Regarding claim 7, the modification discloses substantially all of the claimed features as set forth, except the single capillary channel comprises enlarged pockets distributed over a length of the single capillary channel.
However, Ujita further discloses in another embodiment (figs. 13-19) ink reserving portions 66 are tapered so as to be gradually narrower toward the ink outlet 65 (para. 0070). In other words, Ujita discloses the single capillary channel comprises enlarged pockets distributed over a length of the single capillary channel.
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the capillary channel of Inoue in view of Ujita to comprise the enlarged pockets distributed over the length of the single capillary channel as further taught by Ujita, to ensure that capillary force generated in the ink reserving portion 66 increases with decreasing distance to the ink outlet 65. This allows the ink to be guided more reliably to the ink outlet 65 (para. 0071 of Ujita).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Inoue (US 20070046742) and Ujita (US 20030128260) as applied to claim 6 above, further in view of Miyazawa (US 5555238)
Regarding claim 13, the modification discloses substantially all of the claimed features as set forth, wherein the container comprises a plurality of capillary channels extending in through a central container portion (fig. 22 of Ujita).
The modification does not disclose:
the container further comprises:
a first end section connected to a first end of the central container portion, the first end section including a plurality of recesses such that each recess of the plurality of recesses connects a first adjacent pair of capillary channels of the plurality of capillary channels, and
a second end section connected to a second end of the central container portion opposite the first end section, the second end section including a plurality of second recesses such that each recess of the plurality of second recesses connects a second adjacent pair of capillary channels of the plurality of capillary channels, the second end section including the bottom wall defining the dispensing opening.
However, Miyazawa discloses a container (ink storage tank4) comprises:
a first end section (lid 2) connected to a first end of the central container portion (tank 4) (it is noted the lid 2 is fluidly connected to the tank 4), the first end section (lid 2) including a plurality of recesses (openings 5 that serve as the draft holes) (“a similar object can be achieved by forming the lids 2 and 3 of a water repellent material and setting the sizes of openings 5 to satisfy the above-mentioned expression (1).” col. 3, lines 35-39),
a second end section (lid 3) connected to a second end of the central container portion (tank 4) opposite the first end section (lid 2) (fig. 1a) (it is noted the lid 3 is fluidly connected to the tank 4), the second end section (lid 3) including a plurality of second recesses (openings 5 that serve as the draft holes) (“a similar object can be achieved by forming the lids 2 and 3 of a water repellent material and setting the sizes of openings 5 to satisfy the above-mentioned expression (1).” col. 3, lines 35-39).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the top wall of the container of Inoue to have first end section fluidly connected to the first end of the central container portion and modify the bottom wall of the container to have the second end section fluidly connected to the second end of the central container portion as taught by Miyazawa. Doing so would ensure the inside of the container in fluid communication with air irrespective of the position of the container and prevent ink leakage through the openings (col. 3, lines 51-65 of Miyazawa).
The modification would result in structure as illustrated below, in which each recess of the plurality of recesses of the first end section connects a first adjacent pair of capillary channels of the plurality of capillary channels (it is noted each opening 5 of lid 2 of Miyazawa fluidly connected with the plurality of capillary channels of Ujita), and each recess of the plurality of recesses of the second end section connects a second adjacent pair of capillary channels of the plurality of capillary channels (it is noted each opening 5 of lid 3 of Miyazawa fluidly connected with the plurality of capillary channels of Ujita), the second end section (lid 3 of Miyazawa) including the bottom wall defining the dispensing opening (opening 5 of Miyazawa) (“inside the protruded part 6 is formed an ink reservoir 7, which is connected to the inside of the ink storage tank 4 through the openings 5” col. 2, lines 35-40 of Miyazawa).
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Malik (US 20140150785) in view of Bowen (US 20230319953), Liu (US 20150189919) and Inoue (US 20070046742)
Regarding claim 8, Malik discloses an aerosol-generating system (inhaler 10) comprising:
a housing (body 18; fig. 2); and
a liquid storage portion (liquid container 56) in the housing (para. 0028), the liquid storage portion including,
a container (liquid container 56) configured to hold a liquid aerosol-forming substrate (liquid 62) (para. 0023), the container having a dispensing opening (opening 60) configured to dispense the liquid aerosol- forming substrate (para. 0024), the container including,
a top wall (annotated fig. 2),
a bottom wall (annotated fig. 2) opposite the top wall, the bottom wall defining the dispensing opening (opening 60), and
a side wall (annotated fig. 2).
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Malik does not disclose the container comprises:
side walls connecting the front wall to the rear wall, at least one of the front wall or the rear wall being transparent such that a level of the liquid aerosol-forming substrate in the container can be monitored, the container configured such that the liquid aerosol-forming substrate is stored in a contiguous volume area of the container at least partially defined by the front wall, the rear wall, and the side walls, the contiguous volume area having a width dimension between the front wall and the rear wall such that the liquid aerosol-forming substrate in the container is held in contact with the rear wall, the front wall, and the side walls by capillary forces between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall such that the liquid aerosol-forming substrate is confined in the contiguous volume area, the liquid aerosol-forming substrate in the contiguous volume area being confined near the dispensing opening of the container without regard to orientation of the liquid storage portion.
However, Bowen discloses a container (cartridge) has rectangular cross-section (para. 0033).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the container of Malik to have rectangular shape as taught by Bowen, in order to contain more volume of the liquid aerosol-forming substrate within the rectangular volume of the container.
The modification would result in the structure as shown below, wherein side walls connecting the front wall to the rear wall.
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The modification does not disclose at least one of the front wall or the rear wall being transparent such that a level of the liquid aerosol-forming substrate in the container can be monitored.
However, Liu discloses a cartridge is made of transparent material (para. 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Malik in view of Bowen to be made of transparent material as taught by Liu such that a level of the liquid aerosol-forming substrate in the container can be monitored, in order to avoid the phenomenon of the e-liquid dryout in the cartridge.
The modification does not disclose the container configured such that the liquid aerosol-forming substrate is stored in a contiguous volume area of the container at least partially defined by the front wall, the rear wall, and the side walls, the contiguous volume area having a width dimension between the front wall and the rear wall such that the liquid aerosol-forming substrate in the container is held in contact with the rear wall, the front wall, and the side walls by capillary forces between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall such that the liquid aerosol-forming substrate is confined in the contiguous volume area, the liquid aerosol-forming substrate in the contiguous volume area being confined near the dispensing opening of the container without regard to orientation of the liquid storage portion.
However, Inoue discloses a container (case body 32 and lid 33; fig. 2) including,
a top wall (lid 33),
a bottom wall (annotated fig. 2) opposite the top wall, the bottom wall defining the dispensing opening (ink outlet 51),
a rear wall (annotated fig. 2),
a front wall (annotated fig. 2), and
side walls (annotated fig. 2) connecting the front wall to the rear wall, the container (case body 32 and lid 33) configured such that the liquid aerosol-forming substrate (ink absorbent 36) is stored in a contiguous volume area of the container (annotated fig. 4) at least partially defined by the front wall, the rear wall, and the side walls, the contiguous volume area having a width dimension between the front wall and the rear wall (it is noted the contiguous volume area having the width dimension between the front wall and the rear wall) such that the liquid aerosol-forming substrate (ink absorbent 36) in the container (case body 32) is held in contact with the rear wall, the front wall, and the side walls by capillary forces (capillary force) (para. 0040, 0043, and 0004) between the liquid aerosol-forming substrate and capillary forces between the front wall and the liquid aerosol-forming substrate and the rear wall (as rejected by 112b above, the ink absorbent 36 is held in place by capillary force) such that the liquid aerosol-forming substrate (ink absorbent 36) is confined in the contiguous volume area (para. 0004, 0040, and 0043) (it is noted the ink absorbent 36 is fixedly positioned within the case body 32), the liquid aerosol-forming substrate in the contiguous volume area being confined near the dispensing opening of the container (ink outlet 51) without regard to orientation of the liquid storage portion (para. 0043, 0004, 0040-0041. It is noted the ink absorbent 36 is fixedly positioned within the case body 32 by at least the capillary force of the ink absorbent 36 (i.e. sponge) irrespective of the orientation of the case body 32).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Malik in view of Bowen and Liu to include the negative pressure generation member/ink absorbent 36 (i.e. sponge) configured to hold the liquid (i.e. liquid aerosol-forming substrate) in the container. Due to capillary force, the negative pressure generation member absorbs and holds the ink in the ink cartridge, thereby preventing liquid from accidental leaking out of container opening (para. 0004 of Inoue).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Malik (US 20140150785), Bowen (US 20230319953), Liu (US 20150189919), and Inoue (US 20070046742) as applied to claim 8 above, further in view of Takeuchi (US 6155268)
Regarding claim 9, the modification discloses substantially all of the claimed features as set forth above, except the housing comprises a transparent portion.
However, Takeuchi discloses the housing (“window (not shown)”) comprises a transparent portion (col. 7, line 31).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the housing of Malik (i.e. body 18) to comprise the transparent portion as taught by Takeuchi, in order to allow the user to observe the remaining liquid in the container, thereby prevent accident dry-out in the container.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Malik (US 20140150785), Bowen (US 20230319953), Liu (US 20150189919), Inoue (US 20070046742), and Takeuchi (US 6155268) as applied to claim 9 above, further in view of Li (US 20160219934)
Regarding claim 10, the modification discloses substantially all of the claimed features as set forth, except at least one of the transparent portion of the housing and the transparent front wall or rear wall of the container comprises a scale.
However, Li discloses an aerosol-generating system (atomizer), wherein a transparent portion of the housing (housing 101) comprises a scale (scales) (para. 0019).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the transparent portion of the housing of Malik to comprise the scale as taught by Li, in order to show the quantity of the tobacco liquid remained in the liquid supply (para. 0019 of Li).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Malik (US 20140150785), Bowen (US 20230319953), Liu (US 20150189919), Inoue (US 20070046742), Takeuchi (US 6155268), and Li (US 20160219934) as applied to claim 10 above, further in view of Geschwender (US 20080223126)
Regarding claim 11, the modification discloses substantially all of the claimed features as set forth, except magnification areas configured to facilitate reading of a fill level of the liquid aerosol-forming substrate in the container.
However, Geschwender discloses magnification areas configured to facilitate reading of a fill level of the liquid aerosol-forming substrate in the container (para. 0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Malik such that it comprises magnification areas configured to facilitate reading of the fill level of the liquid aerosol-forming substrate in the container as taught by Geschwender, in order to more easily read the fill level of the container (para. 0004 of Geschwender).
Response to Arguments
Applicant’s arguments with respect to prior art rejections filed on 09/29/2025, have been fully considered but are moot in view of the new ground(s) of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached M-F: 9:00am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached on 571-272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761