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 .
Response to Amendment
Claims 1, 4 and 7 are amended. Claims 5-6 and 10-22 are cancelled. Claims 1-4, 7-9 and 23 are presently examined.
Applicant’s arguments regarding the specification have been noted. However, the Office action of 2/12/2026 did not object to the specification in any way, but rather indicated an instance in which applicant permissibly and properly used a trade name and/or mark used in commerce.
Specification
The use of the term Gore-Tex [0056], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “the first membrane and the second membrane configured to allow escape of air from within the reservoir” (lines 21-22), which is considered to be a statement regarding the intended use of the claimed membranes. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required membranes through which air can leave the reservoir.
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.
Claims 1-4, 7-9 and 23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim requires both “a first second opening arranged at the send end and a second second opening formed in the inner surface at the first end and arranged adjacent to the first end” and “the first second opening of the plurality of second openings and the second second opening of the plurality of second openings being arranged on opposite sides of the outer shell.” The claim also requires that the inner surface extends between the first and second ends of the reservoir. It is therefore unclear how the second second opening can simultaneously be opposite the first second opening and located within the inner surface since the second end is opposite the first opening, not the inner shell. For the purposes of this Office action, the limitation “the first second opening of the plurality of second openings and the second second opening of the plurality of second openings being arranged on opposite sides of the outer shell” will not be considered to limit the claim scope. Claims 2-4, 7-9 and 23 are indefinite by dependence.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7-9 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 9,956,357) in view of Biel (US 2018/0220707) and Mudde (US 3,879,493) and von Borstel (US 8,646,461).
Regarding claim 1, Chen discloses an atomizer (figure 3, reference numeral 100), which is considered to meet the claim limitation of a reservoir assembly, having a second housing (figure 3, reference numeral 114), which is considered to meet the claim limitation of an outer housing, that defines a liquid reservoir for storing liquid at its inner surface (column 3, lines 56-67, column 4, lines 1-3, figure 3, reference numeral 115). A lower end is defined by a gasket (figure 3, reference numeral 120) that has a liquid conducting hole through it (column 4, lines 17-31, figure 3, reference numeral 122). A wick extends into an open end of the reservoir (column 4, lines 4-16, figure 3, reference numeral 140), which is considered to meet the claim limitation of a wick. A liquid absorbing sheet is located between the gasket and the wick, and outside of the reservoir, that regulates the amount of liquid that passes through it to control the amount of liquid delivered to the wick (column 4, lines 32-49, figure 3, reference numeral 130), which is considered to meet the claim limitation of a transfer material. The lower end of the reservoir through which the wick passes is considered to meet the claim limitation of a first opening at a first end. The wick comprises a plurality of fiber filaments that are in contact with the liquid absorbing sheet (column 2, lines 5-12). Chen does not explicitly disclose (a) multiple second openings, (b) the membrane being a fabric, (c) the second openings located in the claimed locations and (d) the formulation being a non-nicotine formulation.
Regarding (a), Biel teaches an electronic smoking device [0001] having a liquid reservoir having a semi-permeable membrane that covers and opening located in at least a part of the casing of the reservoir that allows air to enter into the liquid reservoir while prevent liquid from escaping the reservoir to allow air pressure to equalize inside the liquid reservoir while preventing a liquid leakage [0054]. There may be multiple membranes [0056] provided at different locations and in different shapes along the reservoir [0055]. One of ordinary skill in the art would recognize that the membrane would allow air to leave the reservoir since the membrane has pores of a constant size and Biel teaches that air is able to pass across the membrane [0054].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the second housing of Chen with the membrane of Biel. One would have been motivated to do so since Biel teaches a membrane that allows air pressure to equalize.
Regarding (b), Mudde teaches a water vapor permeable composition comprising a blend of hydrophilic and hydrophobic polymeric materials (abstract) that is used as a film to prepare breathable yet water impermeable coated fabrics from woven textile products (column 29, lines 1-15). The textiles can be in the form of fibers and can have many different possible end uses (column 26, lines 13-23).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the vapor permeable fabric of Mudde as the membrane of modified Chen. One would have been motivated to do so since Mudde teaches a fabric that is suitable for use in varied end uses as a vapor permeable but water impermeable barrier. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Regarding (c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the membranes and associated openings of modified Chen at the claimed locations. One would have been motivated to do so since Biel teaches that the membranes can be located at different locations. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding (d), von Borstel teaches a device for simulating a chemosensation of smoking (abstract) having a liquid composition that provides a strong throat hit and chest sensation while using a nicotine-free liquid (column 15, lines 27-44). Von Borstel additionally teaches that this liquid allows a smoker to alleviate their craving in areas where smoking is prohibited (column 1, lines 14-28).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the liquid of von Borstel as the liquid of modified Chen. One would have been motivated to do so since von Borstel teaches a liquid that allows a smoker to alleviate their craving in areas where smoking is prohibited. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Regarding claim 2, it is evident that the coated fibers of Mudde of hydrophobic since the fabric itself is water impermeable (column 29, lines 1-15) and the film is prepared by laminating the fabric with the composition (column 29, lines 16-32). One of ordinary skill in the art would therefore recognize that the composition coats the fibers of the fabric rather than forming a film that is separate from the fibers. Since there is no feature besides the coated fibers in the fabric of Mudde, and the fabric is water impermeable, it is evident that the coated fibers themselves must be water impermeable since there are no additional layers of components of the overall fabric.
Regarding claim 3, modified Chen teaches all the claim limitations as set forth above. Biel additionally teaches that the membrane may be provided in different shapes [0056]. Modified Chen does not explicitly teach the membrane being provided in an opening having a slit shape.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the opening in the second housing of modified Chen in a slit shape. One would have been motivated to do so since Biel teaches that the membrane may be provided in different shapes. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 4, modified Chen teaches all the claim limitations as set forth above. Biel additionally discloses that there may be multiple membranes [0056] provided at different locations and in different shapes along the reservoir [0055]. Modified Chen does not explicitly teach a plurality of pinholes.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide multiple openings in the second housing of modified Chen covered with the membrane of Biel. One would have been motivated to do so since Biel teaches that multiple membranes that can be provided in different locations and sizes can be provided. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 7, Chen discloses that an air flow passage extends through the central portion of the of the atomizer (figure 3, reference numeral 113) and is defined by a first housing (column 3, lines 56-67, column 4, lines 1-3, figure 3, reference numeral 112), which is considered to meet the claim limitation of a conduit. The reservoir is defined between the first and second housings, and the wick extends between the outer surface of the first housing and the inner surface of the second housing since it occupies the space between the two housings (column 3, lines 56-67, column 4, lines 1-3).
Regarding claim 8, Chen discloses that the atomizer has an atomizing base containing an atomizing element (column 5, lines 10-22, figure 3, reference numeral 160) that atomizes liquid (column 9, lines 50-65) to form a vapor (column 3, lines 51-55). The atomizing element includes a heating wire (column 6, lines 23-34, figure 7, reference numeral 152), which is considered to meet the claim limitation of a heater.
Regarding claim 9, Chen discloses that the atomizer is connected to a power assembly (column 7, lines 3-20) that electrically connects to the atomizing assembly (column 8, lines 36-42).
Regarding claim 23, Mudde teaches that the hydrophobic polymeric material is provided in the form of an emulsion that is then coated onto the substrate to form the vapor permeable composition (column 7, lines 34-47).
Response to Arguments
Regarding the claim interpretation, applicant’s arguments have been fully considered and are persuasive. However, the interpretation is maintained as set forth above since applicant does allege that it is a false or incorrect interpretation, but rather affirms that the membranes must be air permeable. It is additionally noted that Biel teaches that the membrane prevents liquid from escaping the reservoir by crossing it [0054].
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the gasket of Chen cannot be the claimed wick, (b) that Biel does not teach multiple membranes covering multiple openings, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Chen discloses that the wick contains filaments, and the wick itself is considered to meet the claim limitation rather than the gasket.
Regarding (b), applicant presents no arguments against the conclusion that adding additional membranes in the claimed locations would be an obvious modification. Applicant only presents arguments that the specific arrangement is not directly disclosed in an embodiment of Biel.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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