Final Rejection
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35
U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Claim Status
Amended patent claims 1-4 and 7 and new claims 14-31 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 31 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In line 22 “the induction heatable element” lacks positive antecedent basis as no such element has been previously recited.
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(s) 1-4, 7, 14-16, 28, and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 9,167,852 to Xiu (hereinafter Xiu) in view of US 7,726,320 to Robinson et al. (hereinafter Robinson) and WO 2015/177043 to Mironov (hereinafter Mironov ‘043).
With respect to claims 1, 3, and 4, Xiu teaches an electronic vapour inhaler including a housing elongated along a longitudinal direction between a proximal end and a distal end spaced apart from one another (see annotated Figure 1), the housing including a side wall extending between the proximal end and the distal end along the longitudinal direction transverse to an end wall 6 of the housing at the distal end; a
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chamber 12 configured to removably receive a capsule 13 containing a flavour-release
medium (col.4, lines 33-47). Xiu uses the phrase “aroma containing” to describe the medium components. As these “aroma containing” components will be inhaled in use and include traditional “flavor” components such as cinnamon, vanillin, tobacco, and rose, the “aroma containing” components are necessarily flavor components.
Capsule 13 is heated during use by electric heating wires 14. It is noted that the phrase “configured to removably receive a capsule” does not positively recite the capsule as it is directed to only the intended use of the chamber. Thus, any further recitations related to the capsule or the contents thereof do not further limit the structure of the apparatus claim. “Expressions relating the apparatus to contents thereof during intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). However, as the sections of the inhaler device of Xiu are separable (col.3, lines 17-21), the chamber 12 is accessible and thus, a capsule is capable of being placed into and removed from the chamber. Therefore, the chamber is “configured to removably receive a capsule.”
The inhaler of Xiu further includes an air inlet 15 passing through the side wall at the distal end of the housing such that, during inhalation by a user, air enters the housing through the air inlet and follows an airflow path extending from the air inlet into a distal end of the capsule received in the chamber before traveling proximally through the flavour-release medium contained in the removable capsule and towards the user’s mouth (col.2, line 54 to col.3, line 23), the distal end of the capsule 13 being closer to the air inlet at the distal end of the housing than to the proximal end of the housing. See annotated Figure 1.
Xiu does not disclose the air inlet 15 is located in the end wall 6 of the inhaler or an induction heating arrangement.
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Robinson teaches an elongate inhaler device 10 including an air inlet 32 in a distal end wall and a volatilizing chamber (see annotated Figure 2) located between the end wall of the distal end 13 and the proximal end 120. Robinson discloses that air enters the device through inlet 32 in the distal end and passes through the flavour-release medium within the chamber, before exiting through filter 200. See col.26, lines 14-24. As Robinson evidences that an air inlet can be successfully placed in an end wall of an inhaler device similar in structure and function to that of Xiu, it would have been obvious to place the inlet of Xiu in the end wall 6 as one would have had an expectation of success when doing so.
The heating arrangement of Xiu is an electric heating wire 14 extending into capsule 13. However, Mironov discloses that it was known in an inhaler device to use an induction heating arrangement present at a location in the inhaler housing, wherein the induction heating arrangement coil 162,182 encircles a chamber containing a capsule 260,280 so as to inductively heat an induction heatable element within a medium and thereby heat the medium contained in the capsule. See Figures 12 and 14; pg.12, lines 13-24 and pg. 13, lines 6-28. It would have been obvious to replace the heating wire 14 of Xiu with the susceptor and coil of Mironov because Mironov teaches that “no electrical contacts need to be formed between the cartridge and the device” (pg.2, lines 31-32) and as compared to electrical heaters, the use of inductive heating “provides improved energy conversion” by avoiding power losses “due to contact resistance at connections” (pg.2, lines 3-6). As explained by Mironov, “inductive heating systems do not require contact between the heating elements and the leads of the device and therefore do not suffer from the contact resistance issue” (pg.3, lines 13-15).
As to claim 2, the chamber 12 of Xiu is positioned at the distal end of the housing.
With respect to claims 7 and 14, the inhaler of Xiu includes a mouthpiece 25 at the proximal end of the housing and a conduit 16,17 extending between the chamber 12 and the mouthpiece 25.
As to claims 15 and 16, “the capsule” has been recited only in context of an intended use of the inhaler. If Patent Owner intends to positively claim a capsule and the structure/features thereof, it must first be positively recited. It is improper to refer back to “the capsule” in claim 1 where it was not positively recited.
With respect to claim 28, the chamber 12 is axially aligned in the device of Xiu and is “configured to” receive a capsule by inserting into the hole created upon separation of the inhaler sections (col.3, lines 17-21). Moreover, Robinson teaches the chamber is axially aligned along the longitudinal direction of the device (see Figure above) and is configured to removably receive capsule 115 along the axial direction upon removal of the mouthpiece. See col.22, line 64 to col.23, line 4; col.26, lines 30-33. It would have been obvious to replace the solid aromatic substance 13 of Xiu upon depletion, in the manner disclosed by Robinson, as being a cost-efficient means of achieving multiple uses of the inhaler device of Xiu. Further, it is noted that Xiu explicitly teaches replacement of smoke capsule 21 located within shell 20 (col.3, line 56 to col.4, line 7) and thus, recognizes the desirability of reusing the inhaler device beyond the initial use of the consumable components.
As to claim 30, “the capsule” in claim 1 has been recited only in context of an intended use of the inhaler. It is improper to refer back to “the capsule” or “the flavour-release medium” where they have not been positively recited in claim 1. It is suggested that if Patent Owner intends to positively claim a capsule and the structure/features thereof, claim 30 should be amended to recite “further comprising a capsule within the chamber and containing a flavour-release medium, wherein the capsule comprises…” Nevertheless, Robinson teaches a capsule 150 wherein the sidewall region is formed of an impermeable material such as metal foil (col.24, lines 18-22) and the base region and top region are formed of air permeable material. This configuration forces air flow through the flavour-release medium 89 contained within the capsule. It would have been an obvious modification to the capsule 13 of Xiu in order to promote volatilization of the flavour components therein.
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiu, Robinson, and Mironov ‘043 as applied to claim 1 above, and further in view of US 2011/0120482 to Brenneise (hereinafter Brenneise).
Xiu with Robinson and Mironov ‘043 is silent as to a temperature sensor positioned along the airflow path.
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Brenneise discloses an electronic vapor inhaler comprising a temperature control module 126 electrically connected to a temperature sensor (thermocouple) 350. See paras [0041, 0042]; Fig. 3. The temperature sensor is positioned along an air flow path between heating element 310 and chamber 210 containing a material which serves as
the source of the vapor. Brenneise teaches that the temperature control module and connected temperature sensor regulate the power transmitted to a heating element and thus, the temperature thereof in order to prevent spontaneous combustion of the vapor source material. See para [0041]. One of ordinary skill in the art would have found it obvious to use the temperature sensor of Brenneise in the inhaler device of modified Xiu in order to prevent overheating and unintended combustion of the solid aromatic substance capsule 13.
Claim(s) 17, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiu, Robinson, and Mironov ‘043 as applied to claim 1 above, and further in view of WO 2014/205748 to Liu (hereinafter Liu).
Xiu with Robinson and Mironov ‘043 is silent as to a temperature sensor positioned along the airflow path.
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Liu discloses an electronic vapor inhaler comprising an airflow path which extends from air inlet port 22 disposed at a distal end and air outlet port 11 disposed at a proximal end, wherein a vaporizer assembly 20 is disposed between the distal and proximal ends. See Figure 2 above. A temperature detecting device 30 is located in the airflow path near the proximal end (paras [0011, 0020]). The temperature detecting device is electrically connected to a control module and an electric heating assembly for heating a vapor-generating article and the user can preset preferred vapor temperatures. See paras [0030, 0035-0038]. The temperature detecting device, control module, and heating assembly enable the inhaler device to provide the user with a vapor which has a relatively constant temperature. See para [0021]. It would have been obvious to one of ordinary skill in the art to use the heating system control arrangement and the temperature sensor of Liu in the combination of Xiu with Robinson and Mironov ‘043 in order to control the induction heater so as to provide a vapor with a constant temperature, even when the external environment of the environment varies.
Claim(s) 21-27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson in view of WO 2015/177294 to Mironov et al. (hereinafter Mironov ‘294).
With respect to claims 21, 23, and 26, Robinson teaches a housing 20 elongated between a proximal end and a distal end; a chamber positioned in the housing; and a capsule 150 removably received in the chamber. See col.26, lines 30-33. The capsule 150 comprises a shell 160 within the chamber containing a solid
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flavour-release medium 89, the shell comprising a base region (formed by cartridge 85) at a distal end of the capsule and a top region (formed by filter 215) at a proximal end of the capsule, with a sidewall region of shell 160 connected to and extending between the base region and the top region. See annotated Figure 2. Further, the sidewall region is formed of an impermeable material such as metal foil (col.24, lines 18-22) and the base region and top region are formed of air permeable material. Note that Robinson teaches that air flows “through the cigarette 150 (including through cartridge 85), and into the mouth-end piece 120,” through the filter 215. See col.26, lines 14-24. Lastly, Robinson discloses heating elements 70,72 present at a location in the housing to heat the flavour-release medium.
Robinson is silent to an induction heatable element as set forth in the amendment to claim 21 and an induction heating element that encircles the chamber.
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Mironov ‘294 teaches an electronic vapour inhaler including an elongate housing 10 removably receiving a capsule 10 therein. The capsule includes an induction heatable element 4 embedded within a flavour-release medium 20. See Figures 3 and 5. The element 4 shown in Figures 3 and 5 is described by Mironov ‘294 to be a planar element as shown in Figures 2A and B. See page 17, lines 1-7. As shown in the Figures, the planar element 4 is embedded within the medium 20 such that opposing planar surfaces are in contact with the medium 20. An induction heating element 210 may “comprise one or more coils” that “surround the cavity” (page 15, lines 13-14). It would have been obvious to one of ordinary skill in the art to replace the resistive heating means 70,72 of Robinson with the susceptor and coil of Mironov ‘294 because Mironov ‘294 teaches that internal heating elements have an advantage over external heating elements like those of Robinson. For example, Mironov ‘294 discloses that “[d]irect contact between an internal heating element…and the aerosol-forming substrate…can provide an efficient means for heating the aerosol-forming substrate to form an inhalable aerosol…heat from the internal heating element may be conveyed almost instantaneously to at least a portion of the aerosol-forming substate when the internal heating element is actuated, and this may facilitate the rapid generation of an aerosol. Furthermore, the overall heating energy required to generate an aerosol may be lower than would be the case in an aerosol-generating system comprising an external heater element wherein the aerosol-forming substrate does not directly contact the external heating element…” See page 2, lines 1-13. Further, as Mironov ‘294 describes the induction heatable element is only used once (page 8, line 1), there is no concern with cleaning the element between uses. Thus, it would have been obvious to a POSITA to replace the resistive heating means 70,72 of Robinson with the heatable element 4 and coil 210 of Mironov ‘294 in order to provide an efficient means for heating the medium 89 while reducing the overall energy required to generate the aerosol.
As to the spacing of the element 4 from the walls of the capsule of Robinson in the combination with Mironov ‘294, Mironov teaches the induction heatable element 4 is spaced from the top region and the sidewall region, as shown in Figure 5. While the element 4 is not disclosed to be “spaced from the base region,” the distance required by the term “spaced” has not been defined by the disclosure of the instant patent. Thus, the BRI of “spaced” would include even minute distances between the end of the element 4 and a base. When Robinson is modified with the heatable element 4 and coil of Mironov ‘294, it would have been obvious to maintain the same spacing as Mironov ‘294 teaches placing the element in a “central position” such that it extends along the longitudinal axis of the medium (page 4, lines 28-31). Furthermore, one of ordinary skill in the art would have had an expectation of success whether the heatable element was in contact with the base or spaced a minute distance therefrom, as long as the element was in a central position within the medium.
As to claim 22, Robinson teaches the air permeable material 101 of the base region portion 85 is fibrous (col.24, lines 31-34) and the air permeable material 215 of the top region is cellulose fibers (col.25, lines 59-63). One of ordinary skill in the art would have been apprised of other appropriate air permeable materials available for use in inhaler devices.
As to claim 24, the base region 85 and sidewall region of the shell 160 of Robinson are separately formed. Regardless, it has been held that the use of a one piece/integral construction instead of several parts secured together as a single unit involves no invention and would have a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
With respect to claim 25, the top region of the shell comprises a "lid" (filter portion 215) coupled to the sidewall region at the proximal end via tipping material 222. See col.25, lines 64-67.
As to claim 27, as shown in the figures the base and top region are circular in cross section with the same diameter, such that the shell 160 has a cylindrical shape.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson in view of Xiu and Mironov ‘043.
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Robinson teaches an electronic vapour inhaler 10 including a housing elongated along a longitudinal direction between a proximal end 15 and a distal end 13 spaced apart from one another, the housing including a side wall 20 extending between the proximal end and the distal end along the longitudinal direction transverse to an end wall of the housing at the distal end; a chamber positioned in the housing, the chamber having an axial direction aligned along the longitudinal direction of the housing; and a capsule 150 removably receivable in the chamber by inserting the capsule into and removing the capsule from the chamber along the axial direction. Note that Robinson teaches the mouthpiece is removed and the cigarette (capsule 150) is “inserted into the downstream end of the outer housing.” See col.26, lines 1-9 and 30-33.
The capsule 150 comprises a shell 160 containing an aggregation of solid flavour-release medium 89 therein, the shell comprising a base region (formed by cartridge 85) at the distal end of the capsule and a top region (formed by filter 215) at a proximal end of the capsule, with a sidewall region connected to and extending between the base region and the top region. See annotated Figure 2 above. The base region and the top region of the shell are formed of air permeable material and the sidewall region is not formed of air permeable material. For example, the sidewall region is formed of metal foil (col.24, lines 18-22) and Robinson teaches that air flows “through the cigarette 150 (including through cartridge 85), and into the mouth-end piece 120,” through the filter 215, and thus the base 85 and top region 215 are air permeable. See col.26, lines 14-24.
Robinson teaches an air inlet 32 passing through the end wall at the distal end of the housing such that, during inhalation by a user, air enters the housing through the air inlet and flows through the flavour-release medium in the shell along an airflow path extending between the air permeable material of the base region and the air permeable material of the top region before traveling towards the user's mouth. See col.26, lines 14-24.
The distal end of the capsule 150 of Robinson is not closer to the air inlet at the distal end of the housing than to the proximal end of the housing. Furthermore, Robinson is silent to an induction heating arrangement present at a location in the housing, wherein the induction heating arrangement encircles the chamber so as to inductively heat an induction heatable element in the removable capsule.
Xiu teaches an electronic vapour inhaler including a housing elongated along a longitudinal direction between a proximal end
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and a distal end and including a flavour-release medium-containing capsule 13 located within a chamber 12. As shown in the figure above, the distal end of the capsule 13 is located closer to the air inlet 15 in the distal end than to the proximal end of the housing. It would have been obvious to a person of ordinary skill in the art to elongate the capsule of Robinson such that the distal end of the capsule is located closer to the air inlet 32 than the proximal end of the housing to increase the volume of flavour-release medium 89 available to the user. As demonstrated by Xiu, an inhaler device having a flavour-release medium located closer to the distal end functions effectively and thus, the artisan would have expected the same of a modified Robinson device.
Mironov ‘043 discloses that it was known in an inhaler device to use an induction heating arrangement present at a location in the inhaler housing, wherein the induction heating arrangement 162,182 encircles a chamber containing a capsule 260,280 so as to inductively heat an induction heatable element within a medium (pg.12, lines 21-22; pg. 13, lines 9-10) and thereby heat a medium contained in the capsule. See Figures 12 and 14; pg.12, lines 13-24 and pg. 13, lines 6-28. It would have been obvious to replace the resistive heating means 70,72 of Robinson with the susceptor and coil of Mironov ‘043 because Mironov teaches that “no electrical contacts need to be formed between the cartridge and the device” (pg.2, lines 31-32) and as compared to electrical heaters, the use of inductive heating “provides improved energy conversion” by avoiding power losses “due to contact resistance at connections” (pg.2, lines 3-6). As explained by Mironov ‘043, “inductive heating systems do not require contact between the heating elements and the leads of the device and therefore do not suffer from the contact resistance issue” (pg.3, lines 13-15).
Response to Arguments
Applicant's arguments filed 24 July 2026 have been fully considered but they are not persuasive.
With respect to claim 1, Patent Owner asserts that “the Examiner has not established that Xiu is capable of removably receiving” a capsule and “the only support the Examiner identified actually relates to a different part” of the device. See Remarks, page 7. In response, the Examiner maintains the position held in the first office action and again refers to col.3, lines 17-21 which states that “If the users are not required to suck nicotine, the smoke capsule can be dismantled, and the aroma generator (12) is connected [sic] the suction nozzle (25).” As shown in annotated Figure 1 below, connection rabbets are located to the right of the aroma generator 12 and to the left of mouthpiece 25. Xiu discloses dismantling the smoke capsule, which is comprised of
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first 16 and second 17 smoke capsules. These parts are removed at the connection rabbets, and then “the aroma generator (12) is connected [sic] the suction nozzle (25),” thus excluding dismantled smoke capsules 16 and 17. Detaching first smoke capsule 16 from the aroma generator 12 at the rabbet exposes the axial opening of aroma generator 12. Thus, aroma generator chamber 12 is capable of removably receiving a capsule therein through the axial opening.
As to the arguments concerning dependent claims 15 and 16, as set forth in the rejection, “the capsule” in claim 1 has been recited only in context of an intended use of the inhaler. It is improper to refer back to “the capsule” or “the flavour-release medium” where they have not been positively recited in claim 1. It is suggested that if Patent Owner intends to positively claim a capsule and the structure/features thereof, claims 15 and 16 should be amended to recite “further comprising a capsule within the chamber and containing a flavour-release medium, wherein…” However, even if these limitations were to be positively recited, they are taught by Robinson and Mironov ‘043, with which Xiu has been combined.
Patent Owner’s arguments concerning amended claim 21 have been considered but are deemed moot in view of the new ground of rejection.
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 ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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