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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2025 August 6 has been entered.
Claims 1-5 and 7-35 are pending.
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.
Claims 1-4, 7, 9-13, 16-24, 27-28, and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over O’Connell (US 10820629 B1 cited on an IDS) in view of Moloney (WO 2019185715 A1).
Claims 1 and 7: O’Connell teaches a mouthpiece (fig. 8D and col. 28, lines 22-42, #340) for an aerosol provision system, the mouthpiece comprising:
at least one aerosol outlet channel (channel which connects to 328) for delivering an aerosol to a user of the mouthpiece (340);
at least one external surface (surface of 340) comprising a portion (contoured surface of 340) which is configured for receiving a lip of the user of the mouthpiece (340) when the aerosol is being delivered through the at least one aerosol outlet channel (channel which connects to 328);
and at least one indicia (contour of 340) for identifying the location of the portion of the mouthpiece.
O’Connell does not explicitly teach that the at least one indicia comprises the portion being made of a different material from a material of a second portion of the mouthpiece which surrounds the portion of the mouthpiece, wherein the external surface comprises the second portion,
or that the material of the portion is more thermally conductive than the material of the second portion.
Maloney teaches a mouthpiece (fig. 6 and p. 5, lines 1-6, #510) comprising a more-conductive portion (532) made of a more thermally conductive material than a material of a less-conductive portion (surface of 500 which is not 532) which surrounds the more-conductive portion, wherein an external surface comprises the less-conductive portion (surface of 500 which is not 532), such that the more-conductive portion enables detecting a capacitance in order to determine a type of the disposable, aerosol-delivering mouthpiece (p. 7, lines 1-11).
O’Connell’s mouthpiece (O’Connell col. 26, lines 16-24) and Maloney’s mouthpiece (Maloney p. 7, lines 1-11) are both disposable and both deliver aerosol to a user to yield expectation to succeed.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Maloney’s more-conductive portion to O’Connell such that the at least one indicia comprises the portion being made of a different material from a material of a second portion of the mouthpiece which surrounds the portion of the mouthpiece, wherein the external surface comprises the second portion, and wherein the material of the portion is more thermally conductive than the material of the second portion, because doing so would enable detecting a capacitance in order to determine a type of the mouthpiece.
Claim 2: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one indicia (fig. 8D, contour of #340) comprises a recess.
Claim 3: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one indicia (fig. 8D, contour of #340) comprises a tactile indicia.
Claim 4: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one indicia (fig. 8D, contour of #340) comprises a visual indicia.
Claim 9: modified O’Connell teaches the mouthpiece according to claim 1, wherein the portion (fig. 8D, contoured surface of #340) at least partially surrounds the aerosol outlet channel (channel which connects to 328).
Claim 10: modified O’Connell teaches the mouthpiece according to claim 1, further comprising an outlet (fig. 8D, #328) for receiving aerosol from the aerosol outlet channel (channel which connects to 328).
Claim 11: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one external surface (fig. 8D, surface of #340) is inclined towards an end (topmost end of 340) of the mouthpiece.
It is noted that “towards” is a relative term that requires a reference state. The reference state can be chosen such that the external surface will be inclined towards the end, so the external surface is inclined towards the end.
Claim 12: modified O’Connell teaches the mouthpiece according to claim 11, wherein the end (fig. 8D, topmost end of #340) of the mouthpiece is substantially flat.
Claim 13: modified O’Connell teaches the mouthpiece according to claim 11, wherein the end (fig. 8D, topmost end of #340) of the mouthpiece comprises an outlet (328) for receiving aerosol from the aerosol outlet channel (channel connecting to 328).
Claim 16: modified O’Connell teaches the mouthpiece according to claim 11, wherein the at least one indicia (fig. 8D, contour of #340) is oriented towards the end (topmost end of 340) of the mouthpiece.
It is noted that “towards” is a relative term that requires a reference state. The reference state can be chosen such that the external surface will be oriented towards the end, so the external surface is oriented towards the end.
Claim 17: modified O’Connell teaches the mouthpiece according to claim 1, wherein the portion (fig. 8D, contoured surface of #340) defines at least one recess (contour of 340), wherein the at least one indicia (contour of 340) comprises the at least one recess (contour of 340).
Claim 18: modified O’Connell teaches the mouthpiece according to claim 17, wherein the at least one recess (fig. 8D, contour of #340) is configured for allowing the lip of the user of the mouthpiece (340) to be at least partially accommodated in the at least one recess (contor of 340).
Claim 19: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one external surface (fig. 8D, surface of #340) is curved.
Claim 20: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one external surface (fig. 8D, surface of #340) comprises: a first external surface (leftmost surface of 340) on a first side of the mouthpiece; and a second external surface (rightmost surface of 340) on a second side of the mouthpiece, wherein the second side is opposite the first side.
Claim 21: modified O’Connell teaches the mouthpiece according to claim 20, wherein at least one of the first and second external surfaces (fig. 8D, leftmost and rightmost surfaces of #340) comprises the portion (contoured surface of 340) of the mouthpiece.
Claim 22: modified O’Connell teaches the mouthpiece according to claim 20, wherein both the first and second external surfaces (fig. 8D, surface of #340) comprise the portion (contoured surface of 340) of the mouthpiece.
Claim 23: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one indicia (fig. 8D, contour of #340) is located on the at least one external surface (surface of 340).
Claim 24: modified O’Connell teaches the mouthpiece according to claim 1, wherein the at least one indicia (fig. 8D, contour of #340) is located on the portion (contoured surface of 340).
Claim 27: modified O’Connell teaches the mouthpiece according to claim 1, further comprising a thermal element (fig. 8D, #344) for controlling a temperature of the portion (contoured surface of 340) of the mouthpiece (col. 28, lines 31-35, #344 controls a temperature of an aerosol-generating material, so #344 can roughly control a temperature of the contoured surface of #340).
Claim 28: modified O’Connell teaches the mouthpiece according to claim 27, wherein the at least one thermal element (fig. 8D, #344) is configured for heating the portion of the mouthpiece (col. 28, lines 31-35, #344 heats an aerosol-generating material, so #344 can heat the contoured surface of #340).
Claim 30: modified O’Connell teaches an aerosol provision system (fig. 8A, #300) for generating an aerosol, comprising the mouthpiece according to claim 1, wherein the at least one aerosol outlet channel (fig. 8D, channel which connects to #328) is configured to receive aerosol generated in the aerosol provision system (col. 28, lines 14-15).
Claim 31: modified O’Connell teaches the aerosol provision system according to claim 30, further comprising: a cartridge (fig. 8A, #302) comprising the mouthpiece (fig. 8D, #340); an aerosol provision device (fig. 8A, #304) configured to receive the cartridge (302); and an aerosol generator (fig. 8D, #344) for generating the aerosol from aerosol-generating material (col. 28, lines 31-35), wherein the aerosol provision system is configured to supply the generated aerosol from the aerosol generator to the (col. 28, lines 14-15) at least one aerosol outlet channel (channel which connects to 328).
Claim 32: modified O’Connell teaches the aerosol provision system according to claim 31, wherein the cartridge (fig. 8A, #302) comprises the aerosol generator (fig. 8D, #344).
Claim 33: modified O’Connell teaches the aerosol provision system according to claim 31, further comprising a reservoir (fig. 8D, #342) for the aerosol-generating material, wherein the reservoir (342) is configured to deliver the aerosol-generating material to the aerosol generator (344) for generating the aerosol from the aerosol-generating material (col. 28, lines 22-35, #342 moves to deliver aerosol-generating material to #344).
Claim 34: modified O’Connell teaches the aerosol provision system according to claim 33, wherein the cartridge (fig. 8A, #302) comprises the reservoir (fig. 8D, #342).
Claim 35: modified O’Connell teaches a cartridge (fig. 8A, #302), for an aerosol provision system (300) comprising the cartridge and an aerosol provision device (304) configured to receive the cartridge, wherein the cartridge comprises the mouthpiece (fig. 8D, #304) according to claim 1.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over O’Connell (US 10820629 B1) in view of Maloney (US 20140360517 A1) as applied to claims 1 and 11 in further view of Nappi (US 20200352218 A1).
Claim 5: modified O’Connell teaches the mouthpiece according to claim 1, wherein a second portion (fig. 8D, contoured surface of #340 excluding steepest part of contour) of the mouthpiece surrounds the portion (contour of 340) of the mouthpiece.
The second portion comprises two separated regions, consistent with applicant fig. 9, #709.
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Modified O’Connell does not explicitly teach that the portion and the second portion are differently colored.
Nappi teaches a mouthpiece (fig. 1, #14) comprising a first portion (fig. 3, #35) surrounded by a second portion (31), wherein the first portion and the second portion are differently colored [44], such that adjacent elements with distinct functions appear distinct to a user [5-6].
Modified O’Connell’s portion (Maloney fig. 6, #532) and second portion (portion of 500 which is not 532) and Nappi’s portion (fig. 3, #35) and second portion (31) are adjacent elements with distinct functions to yield expectation to succeed. One of ordinary skill would be motivated to differentiate modified O’Connell’s more-conductive portion, which receives the lips of a user and measures capacitance, from modified O’Connell’s less-conductive portion, which forms the base of the mouthpiece.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to give the portion and the second portion different colors, because doing so would make the portion and the second portion appear distinct to a user.
Claim 15: modified O’Connell teaches the mouthpiece according to claim 11.
Modified O’Connell does not explicitly teach that the at least one indicia comprises text, or a graphical symbol.
Nappi teaches a mouthpiece (fig. 1, #14) comprising a first portion (fig. 3, #35) surrounded by a second portion (31), wherein the first portion comprises an indicia that is a graphical symbol [14-15], such that adjacent elements with distinct functions appear to be distinct [5-6].
Modified O’Connell’s portion (Maloney fig. 6, #532) and second portion (portion of 500 which is not 532) and Nappi’s portion (fig. 3, #35) and second portion (31) are adjacent elements with distinct functions to yield expectation to succeed. One of ordinary skill would be motivated to differentiate modified O’Connell’s more-conductive portion, which receives the lips of a user and measures capacitance, from modified O’Connell’s less-conductive portion, which forms the base of the mouthpiece.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Nappi’s graphical symbol to O’Connell’s portion, because doing so would enable the portion and the second portion to appear distinct.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over O’Connell (US 10820629 B1 cited on an IDS) in view of Moloney (WO 2019185715 A1) and Nappi (US 20200352218 A1) as applied to claim 5 in further view of Taggart (US 20140360517 A1).
Claim 8: modified O’Connell teaches the mouthpiece according to claim 5.
Modified O’Connell does not explicitly teach that the second portion is made of polypropylene or polycarbonate.
Taggart teaches a mouthpiece (fig. 1 and [79-80], #38) that is made of polycarbonate [79], such that the mouthpiece resists heat [79].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as modified O’Connell’s generic second portion material, Taggart’s specific polycarbonate material, because doing so would enable the second portion to resist heat.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over O’Connell (US 10820629 B1 cited on an IDS) in view of Maloney (US 20140360517 A1) as applied to claim 11 in further view of Mahmoud (US 20160345622 A1).
Claim 14: modified O’Connell teaches the mouthpiece according to claim 11, wherein the portion (fig. 8D, contoured surface of #340) is located near the end (topmost end of 340) of the mouthpiece.
Modified O’Connell does not explicitly teach that the portion is no more than 40mm from the end of the mouthpiece.
Mahmoud teaches a mouthpiece (fig. 1 and [20]) comprising a portion (candy tip) configured to receive a lip of a user that is no more than 19mm (0.75 inches * 25.4 inches/mm = 19mm) from an end of the mouthpiece.
Moreover, specifying that O’Connell’s portion is no more than 40mm from the end would be a patentably indistinct specification of size. One of ordinary skill would see that O’Connell’s portion (fig. 8D, contoured surface of #340) can receive a lip of a user and would be motivated to position the portion at a reachable distance. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that the portion is no more than 40mm from the end, because doing so is exemplified by Mahmoud and would otherwise be a patentably indistinct specification in size.
Claims 25-26 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over O’Connell (US 10820629 B1 cited on an IDS) in view of Maloney (US 20140360517 A1) as applied to claims 1 and 27 in further view of Davidson (US 20130276799 A1).
Claims 25-26: modified O’Connell teaches the mouthpiece according to claim 1.
Modified O’Connell does not explicitly teach that the portion comprises a lip-actuatable switch.
Davidson teaches a mouthpiece comprising a first portion configured for receiving a lip of a user, wherein the portion comprises a lip-actuated switch [218], such that drug delivery can be initiated when the user is ready to inhale [218].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Davidson’s lip-actuated switch function to modified O’Connell’s more-conductive portion, because doing so would enable drug delivery to be initiated when the user is ready to inhale.
Claim 29: modified O’Connell teaches the mouthpiece according to claim 27.
Modified O’Connell does not explicitly teach that the at least one thermal element is configured for cooling the portion of the mouthpiece.
Davidson teaches a mouthpiece comprising a thermal element which can both heat and cool a portion of the mouthpiece ([183], Peltier element), such that vapors can be cooled before delivery to a user [183].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make O’Connell’s heating element a Peltier element configured for heating and for cooling, as taught by Davidson, because doing so would enable vapors to be cooled before delivery to a user.
Double Patenting
Claims 1-4, 7, 9-11, 16-18, 20-24, 27, 30, 31, 33, and 35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 31 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1).
Claims 1 and 7: ‘818 recites a mouthpiece (C1, mouthpiece) for an aerosol provision system, the mouthpiece comprising:
at least one aerosol outlet channel (aerosol outlet channel) for delivering an aerosol to a user of the mouthpiece;
at least one external surface comprising a portion (C17, inclined surface; one of ordinary skill would interpret that a mouthpiece can receive a lip of a user) which is configured for receiving a lip of the user of the mouthpiece when the aerosol is being delivered through the at least one aerosol outlet channel (aerosol outlet channel);
and at least one indicia (inclined surface) for identifying the location of the portion (inclined surface) of the mouthpiece, wherein the external surface comprises a second portion (portion of external surface which is not the inclined surface) which surrounds the portion (inclined surface).
Modified ‘818 does not recite that the at least one indicia comprises the portion being made of a different material from a material of the second portion,
or that the different material of the portion is more thermally conductive than the material of the second portion.
Maloney teaches a mouthpiece (fig. 6 and p. 5, lines 1-6, #510) comprising a more-conductive portion (532) made of a more thermally conductive material than a material of a less-conductive portion (surface of 500 which is not 532) which surrounds the more-conductive portion, wherein an external surface comprises the less-conductive portion (surface of 500 which is not 532), such that the more-conductive portion enables detecting a capacitance in order to determine a type of the mouthpiece (p. 7, lines 1-11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Maloney’s more-conductive portion to ‘818 such that the at least one indicia comprises the portion being made of a different material from a material of a second portion of the mouthpiece which surrounds the portion of the mouthpiece, wherein the external surface comprises the second portion, and wherein the material of the portion is more thermally conductive than the material of the second portion, because doing so would enable detecting a capacitance in order to determine a type of the mouthpiece.
Claim 2. modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one indicia comprises a recess (C17, an inclined surface recesses along some direction).
Claim 3: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one indicia (C17, inclined surface) comprises a tactile indicia.
Claim 4: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one indicia (C17, inclined surface) comprises a visual indicia.
Claim 9: modified ‘818 recites the mouthpiece according to claim 1, wherein the portion (C21, portion) at least partially surrounds the aerosol outlet channel (C1, aerosol outlet channel).
Claims 10: modified ‘818 recites the mouthpiece according to claim 1, further comprising an outlet (C1, an opening of the aerosol outlet channel) for receiving aerosol from the aerosol outlet channel (aerosol outlet channel).
Claim 11: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one external surface (C17, external surface) is inclined towards an end of the mouthpiece.
Claim 16: modified ‘818 recites the mouthpiece according to claim 11, wherein the at least one indicia (C17, inclined surface) is oriented towards the end of the mouthpiece.
Claim 17: modified ‘818 recites the mouthpiece according to claim 1, wherein the portion (C17, inclined surface) defines at least one recess (an inclined surface recesses along some direction), wherein the at least one indicia (inclined surface) comprises the at least one recess.
Claim 18: modified ‘818 recites the mouthpiece according to claim 17, wherein the at least one recess (C17, inclined surface) is configured for allowing the lip of the user of the mouthpiece to be at least partially accommodated (one of ordinary skill would interpret that an inclined surface on the exterior of a mouthpiece can accommodate a lip of a user) in the at least one recess.
Claim 20: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one external surface (C17, inclined surface) comprises: a first external surface (a first half of the inclined surface) on a first side of the mouthpiece; and a second external surface (a second half of the inclined surface) on a second side of the mouthpiece, wherein the second side is opposite the first side (the first half and the second half are opposite each other with respect to the first-second half boundary).
Claim 21: modified ‘818 recites the mouthpiece according to claim 20, wherein at least one of the first and second external surfaces (C17, inclined surface) comprises the portion (inclined surface) of the mouthpiece.
Claim 22: modified ‘818 recites the mouthpiece according to claim 20, wherein both the first and second external surfaces (C17, inclined surface) comprise the portion (inclined surface) of the mouthpiece.
Claim 23: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one indicia (C17, inclined surface) is located on the at least one external surface (external surface).
Claim 24: modified ‘818 recites the mouthpiece according to claim 1, wherein the at least one indicia (C17, inclined surface) is located on the portion (inclined surface).
Claim 27: modified ‘818 recites the mouthpiece according to claim 1, further comprising a thermal element (C1, thermal element) for controlling a temperature of the portion (C21, the thermal element controls a portion that is the external surface) of the mouthpiece.
Claim 30: modified ‘818 recites an aerosol provision system (C30, aerosol provision system) for generating an aerosol and comprising a mouthpiece, wherein the at least one aerosol outlet channel (aerosol outlet channel) is configured to receive aerosol generated in the aerosol provision system.
Modified ‘818 does not recite that the at least one indicia comprises the portion being made of a different material from a material of the second portion,
or that the different material of the portion is more thermally conductive than the material of the second portion.
Maloney teaches a mouthpiece (fig. 6 and p. 5, lines 1-6, #510) comprising a more-conductive portion (532) made of a more thermally conductive material than a material of a less-conductive portion (surface of 500 which is not 532) which surrounds the more-conductive portion, wherein an external surface comprises the less-conductive portion (surface of 500 which is not 532), such that the more-conductive portion enables detecting a capacitance in order to determine a type of the mouthpiece (p. 7, lines 1-11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Maloney’s more-conductive portion to ‘818 such that the at least one indicia comprises the portion being made of a different material from a material of a second portion of the mouthpiece which surrounds the portion of the mouthpiece, wherein the external surface comprises the second portion, and wherein the material of the portion is more thermally conductive than the material of the second portion, because doing so would enable detecting a capacitance in order to determine a type of the mouthpiece.
Claim 31: modified ‘818 recites the aerosol provision system according to claim 30, further comprising:
a cartridge (C31, cartridge) comprising the mouthpiece;
an aerosol provision device (aerosol provision device) configured to receive the cartridge;
and an aerosol generator (an aerosol provision system must comprise an aerosol generator) for generating the aerosol from aerosol-generating material, wherein the aerosol provision system is configured to supply the generated aerosol from the aerosol generator to the at least one aerosol outlet channel.
Claim 33: modified ‘818 recites the aerosol provision system according to claim 31, further comprising a reservoir (an aerosol provision system must comprise a reservoir) for the aerosol-generating material, wherein the reservoir is configured to deliver the aerosol-generating material to the aerosol generator for generating the aerosol from the aerosol-generating material.
Claim 35: modified ‘818 recites a cartridge (C31, cartridge), for an aerosol provision system comprising the cartridge and an aerosol provision device configured to receive the cartridge, wherein the cartridge comprises a mouthpiece.
Modified ‘818 does not recite that the at least one indicia comprises the portion being made of a different material from a material of the second portion,
or that the different material of the portion is more thermally conductive than the material of the second portion.
Maloney teaches a mouthpiece (fig. 6 and p. 5, lines 1-6, #510) comprising a more-conductive portion (532) made of a more thermally conductive material than a material of a less-conductive portion (surface of 500 which is not 532) which surrounds the more-conductive portion, wherein an external surface comprises the less-conductive portion (surface of 500 which is not 532), such that the more-conductive portion enables detecting a capacitance in order to determine a type of the mouthpiece (p. 7, lines 1-11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Maloney’s more-conductive portion to ‘818 such that the at least one indicia comprises the portion being made of a different material from a material of a second portion of the mouthpiece which surrounds the portion of the mouthpiece, wherein the external surface comprises the second portion, and wherein the material of the portion is more thermally conductive than the material of the second portion, because doing so would enable detecting a capacitance in order to determine a type of the mouthpiece.
Claims 5 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1) as applied to claims 1 and 11 in further view of Nappi (US 20200352218 A1).
Claim 5: modified ‘818 recites the mouthpiece according to claim 1.
Modified ‘818 does not recite the at least one indicia comprises the portion being colored differently from a color of a second portion of the mouthpiece which surrounds the portion of the mouthpiece.
Nappi teaches a mouthpiece (fig. 1, #14) comprising a first portion (fig. 3, #35) surrounded by a second portion (31), wherein the first portion and the second portion are differently colored [44], such that adjacent elements with distinct functions appear distinct to a user [5-6].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to give the portion and the second portion different colors, because doing so would make the portion and the second portion appear distinct to a user.
Claim 15: modified ‘818 recites the mouthpiece according to claim 11.
Modified ‘818 does not recite that the at least one indicia comprises text, or a graphical symbol.
Nappi teaches a mouthpiece (fig. 1, #14) comprising a first portion (fig. 3, #35) surrounded by a second portion (31), wherein the first portion comprises an indicia that is a graphical symbol [14-15], such that adjacent elements with distinct functions appear to be distinct [5-6].
Modified O’Connell’s portion (Maloney fig. 6, #532) and second portion (portion of 500 which is not 532) and Nappi’s portion (fig. 3, #35) and second portion (31) are adjacent elements with distinct functions to yield expectation to succeed. One of ordinary skill would be motivated to differentiate modified O’Connell’s more-conductive portion, which receives the lips of a user and measures capacitance, from modified O’Connell’s less-conductive portion, which forms the base of the mouthpiece.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Nappi’s graphical symbol to O’Connell’s portion, because doing so would enable the portion and the second portion to appear distinct.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1) as applied to claim 1 in further view of Taggart (US 20140360517 A1).
Claim 8: modified ‘818 recites the mouthpiece according to claim 1.
Modified ‘818 does not recite that the second portion is made of polypropylene or polycarbonate.
Taggart teaches a mouthpiece (fig. 1 and [79-80], #38) that is made of polycarbonate [79], such that the mouthpiece resists heat [79].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as ‘818’s generic second portion material, Taggart’s specific polycarbonate material, because doing so would enable the second portion to resist heat.
Claims 12-13, 19, 32, and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21 and 31 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1) as applied to claims 1, 31, and 33 in further view of O’Connell (US 10820629 B1).
Claims 12-13 and 19: modified ‘818 recites the mouthpiece according to claims 1 and 11.
Modified ‘818 does not recite that the end of the mouthpiece is substantially flat,
that the end of the mouthpiece comprises an outlet for receiving aerosol from the aerosol outlet channel,
or that the at least one external surface is curved.
O’Connell teaches a mouthpiece (fig. 8D and col. 26, lines 15-26, #340) comprising an end (topmost end of 340) that is substantially flat,
an outlet (328) for receiving aerosol from an aerosol outlet channel (channel which connects to 328),
and an external surface (external surface of 340) that is curved.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as ‘818’s structurally generic mouthpiece, O’Connell’s structurally specific mouthpiece such that the end of the mouthpiece is substantially flat, the end of the mouthpiece comprises an outlet for receiving aerosol from the aerosol outlet channel, and the at least one external surface is curved, because doing so is exemplified by O’Connell as an effective mouthpiece configuration.
Claims 32 and 34: modified ‘818 recites the aerosol provision system according to claims 31 and 33.
Modified ‘818 does not recite that the cartridge comprises the aerosol generator,
or that the cartridge comprises the reservoir.
O’Connell teaches a cartridge (fig. 8A, #302) comprising an aerosol generator (fig. 8D, #344) and a reservoir (342).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as ‘818’s structurally generic mouthpiece, O’Connell’s structurally specific mouthpiece such that the cartridge comprises the aerosol generator and the reservoir, because doing so is exemplified by O’Connell as an effective mouthpiece configuration.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1) as applied to claim 11 in further view of Mahmoud (US 20160345622 A1).
Claim 14: modified ‘818 recites the mouthpiece according to claim 11.
Modified ‘818 does not recite that the portion is located no more than 40mm from the end of the mouthpiece.
Mahmoud teaches a mouthpiece (fig. 1 and [20]) comprising a portion (candy tip) configured to receive a lip of a user that is no more than 19mm (0.75 inches * 25.4 inches/mm = 19mm) from an end of the mouthpiece.
Moreover, specifying that ‘818’s portion is no more than 40mm from the end would be a patentably indistinct specification of size. One of ordinary skill would see that O’Connell’s portion (fig. 8D, contoured surface of #340) can receive a lip of a user and would be motivated to position the portion at a reachable distance. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that the portion is no more than 40mm from the end, because doing so is exemplified by Mahmoud and would otherwise be a patentably indistinct specification in size.
Claims 25-26 and 28-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/698818 in view of Maloney (US 20140360517 A1) as applied to claims 1 and 27 in further view of Davidson (US 20130276799 A1).
Claims 25-26: modified ‘818 recites the mouthpiece according to claim 1.
Modified ‘818 does not recite that the portion comprises a lip-actuatable switch.
Davidson teaches a mouthpiece comprising a first portion configured for receiving a lip of a user, wherein the portion comprises a lip-actuated switch [218], such that drug delivery can be initiated when the user is ready to inhale [218].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add Davidson’s lip-actuated switch function to modified ‘818’s more-conductive portion, because doing so would enable drug delivery to be initiated when the user is ready to inhale.
Claims 28-29: modified ‘818 recites the mouthpiece according to claim 27.
Modified ‘818 does not recite that the at least one thermal element is configured for heating the portion of the mouthpiece,
or that the at least one thermal element is configured for cooling the portion of the mouthpiece.
Davidson teaches a mouthpiece comprising a thermal element which can both heat and cool a portion of the mouthpiece ([183], Peltier element), such that vapors can be heated or cooled before delivery to a user [183].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make O’Connell’s heating element a Peltier element configured for heating and for cooling, as taught by Davidson, because doing so would enable vapors to be cooled before delivery to a user.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments of 2025 August 6 have been carefully considered. Upon further search and consideration necessitated by applicant’s amendments, a new ground of rejection is made for claim 1 over O’Connell in view of Maloney.
Applicant’s arguments against Anderson (p. 7, [final paragraph] – p. 8, [2]) are rendered moot by the new ground of rejection which does not rely on Anderson.
Double patenting over 17/451846: copending application ‘846 has been abandoned, so the double patenting rejection over ‘846 is withdrawn.
Double patenting over 18/698818: a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. See MPEP 804(I)(B)(1).
Applicant has neither shown patentable distinctness nor filed a terminal disclaimer, so the double patenting rejection is iterated.
Conclusion
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747