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 1-18, 21, 23 and 25-27 are cancelled. Claim 36 is withdrawn. Claims 19-20, 22, 24 and 28-35 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 112(a) have been fully considered and are persuasive. The rejections of 9/25/2025 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 9/25/2025 are overcome.
Claim Interpretation
Regarding claim 35, the claim recites the limitation “wherein the vapor at least partially condenses into an aerosol within the airflow passage,” which is considered to be a limitation regarding the intended use of the claimed airflow passage. 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 any open passage since vapor could condense into aerosol anywhere-no specific structure is required.
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.
Claims 19-22, 24, 28 and 30-35 are rejected under 35 U.S.C. 103 as being unpatentable over Davis (US 2017/0188626) in view of Guduru (US 2019/0351156).
Regarding claim 19, Davis discloses an aerosol delivery device ([0069], figure 1, reference numeral 100), which is considered to meet the claim limitation of a vapor generating system, having a cartridge that contains a reservoir that contains liquid (figure 1, reference numeral 104) that supplies the liquid to a heating element (figure 1, reference numeral 134) using a liquid transport element ([0078], figure 1, reference numeral 136). The liquid transport element is formed for a porous material that wicks material from the reservoir [0104] via capillary action [0078]. The ends of the porous monolith (figure 7a, reference numerals 736a’, 736a’’) extend into the reservoir (figure 7a, reference numeral 746), and the central portion of the liquid transport element (figure 7a, reference numeral 736c) is surrounded by the heater wire ([0119], figure 7a, reference numeral 734). The porous monolith is made from either glass or ceramic material [0097]. Davis does not explicitly disclose the heater wire being surrounded by an impermeable material.
Guduru teaches an atomizer for use with an electronic vaporizer device that has a metallic coil that is coated with a high temperature resistant glass coating to resist oxidation, corrosion and degradation of the coil (abstract). The coating covers the entire coil [0035]. The heating element is only exposed to the vaporizable substance in portions where, in other embodiments, it is uncovered [0035], indicating that the coating material itself is impermeable.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to encapsulate the heater wire of Davis with the coating of Guduru along its entire surface. One would have been motivated to do so since Guduru teaches a coating that resists oxidation, corrosion, and degradation of the coil.
Regarding claims 20 and 21, Davis discloses that the heating element is a resistive heating element [0071].
Regarding claim 22, Davis discloses that the heating element is made of silver [0071].
Regarding claim 24, Guduru teaches that the coating is applied by dipping the coil into a solution and then heating the coil in a furnace [0037], which evidently bonds the coating to the coil.
Regarding claim 28, Davis discloses that the liquid transport element has a three dimensional interconnected porous microstructure [0092].
Regarding claim 30, modified Davis teaches all the claim limitations as set forth above. Davis additionally discloses that the porous glass has a porosity of about 20% to about 80% [0095]. Modified Davis does not explicitly teach the claimed range being obvious.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 31, modified Davis teaches all the claim limitations as set forth above. Davis additionally discloses that the porous ceramic has a pore size of 500 nanometers to 10 microns [0098]. Modified Davis does not explicitly teach the claimed range being obvious.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 32, it is evident that the pores must be defined within the porous monolith since it would otherwise be impossible for the monolith to transport liquid by capillary action [0078].
Regarding claim 33, Davis discloses that the aerosol precursor composition comprises nicotine [0087].
Regarding claim 34, Davis discloses that the heater and reservoir are located within a cartridge ([0114], figure 1, reference numeral 104) that has a mouth opening ([0079], figure 1, reference numeral 128).
Regarding claim 35, Davis discloses that air enters the cartridge through a projection ([0075], figure 1, reference numeral 141), which is considered to meet the claim limitation of an air inlet. The mouth opening is considered to meet the claim limitation of an air outlet. Air passes through the cartridge and combines with vapor formed by the heater to form an aerosol [0079]. The cartridge is formed by a cartridge shell ([0071], figure 1, reference numeral 103), which is considered to meet the claim limitation of a housing. The aerosol formation from vapor is considered to meet the claim limitation of condensing.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Davis (US 2017/0188626) in view of Guduru (US 2019/0351156) as applied to claim 19 above, and further in view of Guo (US 2017/0049153).
Regarding claim 29, modified Davis teaches all the claim limitations as set forth above. Modified Davis does not explicitly teach the porous ceramic being made from aluminum nitride.
Guo teaches an atomizer for a vaporizer (abstract) having a liquid absorber that transfers liquid from a reservoir to a heater made from aluminum nitride [0064].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the porous ceramic from aluminum nitride. One would have been motivated to do so since Guo teaches that aluminum nitride is a suitable for a wick in an atomizer. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Response to Arguments
Regarding the arguments about restriction practice, applicant does not cite any patent law or regulation, nor section of the MPEP, that would support applicant’s position that applicant is entitled to both make an oral election by telephone and receive a written restriction/election requirement prior to making such an oral election. MPEP § 812.01 indicates that the restriction/election requirement is mailed to applicant only after makes the oral election by telephone. Including the restriction/election requirement in the first action on the merits is not a retroactive correction of a mistake but rather the correct procedure when applicant makes an oral election via telephone. As stated in MPEP § 812.01, “[w]hen an oral election is made, the examiner will then proceed to incorporate into the next office action a formal restriction requirement… followed by a complete action on the elected invention as claimed.” This is the exact procedure that was followed in the instant case.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the ceramic element does not have one side in fluidic communication with the reservoir and an opposite side in thermal communication with the heating element, (b) that Guduru does not teach the claimed arrangement of the ceramic element, (c) that the combination of references is based on impermissible hindsight, and (d) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), applicant presumes that the relevant sides of the porous monolith of Davis are the two ends. However, the relevant opposite sides of the porous monolith are in fact the lower ends of the ends of Davis that are in contact with the reservoir, which are located at lowest point of the porous monolith, and the central portion of the porous monolith, which is located at an upper end of the porous monolith (figure 7). The upper and lower ends of the porous monolith are opposite from each other and meet the claim limitations regarding thermal and fluidic communication.
Regarding (b), Guduru is not relied upon to teach the features to which applicant refers. Davis alone is considered to teach the opposite sides limitations.
Regarding (c), 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). In this case, the cited references teach all the features of the claimed invention including motivation to combine the references.
Regarding (d), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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