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 Arguments
Applicant's arguments filed 9/12/2025 have been fully considered but they are not persuasive.
The applicant argues claim amendments that are addressed in the rejections below (less than about
The applicant argues that “a co-dependent succession of choices from the disclosure of Tucker is required that could only have been made with the impermissible benefit of hindsight knowledge of the invention.”
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). The applicant argues that, “a co-dependent succession of choices from the disclosure of Tucker is required that could only have been made with the impermissible benefit of hindsight knowledge of the invention.” This is considered to be arguing impermissible hindsight. Tucker is not a simple listing of co-dependent choices and is instead relied upon for all that it discloses.
The applicant argues that one of ordinary skill would not look to the “strength enhancers” of Anderson based on the disclosure of Tucker. The examiner disagrees.
Tucker discloses the use of WS-23 as a chemesthesis agent, meaning that the agents affect the sense of touch system in humans to provide feelings such as the burn of hot peppers or the cooling of peppermint that are distinct from taste.
One of ordinary skill in the art would understand that the term “strength enhancers” by Anderson is the same as “chemesthesis agent” by Tucker.
Anderson describes “strength enhancers” as:
With respect to e-vaping devices, the harshness of the vapor, which is typically understood as the sensation experienced in the throat of an adult vaper, and the strength of the vapor, which is typically understood as the sensation experienced in the chest of the adult vaper, may vary based on the contents and concentrations of the pre-vaporization formulation used to form the vapor during vaping by an adult vaper. [0006]
Furthermore, many of the compounds disclose by Anderson are notoriously well-known chemeshesis agents, including capsicum, allyl isothiocyanate, carvacrol, thymol, menthol, cinnamaldehyde, piperine (black pepper).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to use the teachings of Anderson in the invention of Tucker.
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 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.
Claim(s) 11-15, 17-18, and 34, is/are rejected under 35 U.S.C. 103 as being unpatentable over Tucker et al. (US 2013/0192620) in view of Anderson et al. (WO 2017103136).
Regarding claims 11-15, 17-18, and 34,Tucker et al. disclose a electronic cigarette with a liquid formulation that is vaporized. The liquid formulation includes a diluents such as glycerin or propylene glycol [0125], nicotine [0126] and a chemesthesis agent such as WS-23 (i.e. N,2,3,-trimethyl-2-propan-2-ylbutanamide (see specification received 10/29/2020, col. 3, 17-18)). can be added to provide a cooling sensation [0134].
Tucker et al. do not disclose the amount of WS-23 to add to the liquid. However, Anderson et al. disclose a similar liquid and indicate that 0.0001 to 1 percent of a similar cooling agent can be added (see claims 1, 2, and 6). It would have been obvious to one of ordinary skill in the art at the time of filing/invention to use the WS-23 in the invention of Tucker et al. at the amounts disclosed by Anderson et al. to achieve an effective cooling effect and to reduce harshness and enhance strength or chemesthesis action of the vapor as disclosed by Anderson et al.
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 MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747