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 concerning priority are persuasive. A copy of PCT/GB2019/052208 was received on 2/4/2022. No other priority claim has been made.
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually (that Bilat does not address thermal management of a downstream aerosol modifying material), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant argues that the invention involves a sophisticated understanding of the interplay between aerosol mass generation, energy loss during travel through the aerosol pathway, and the resulting temperature at the lower surface of the aerosol modifying material part. The examiner disagrees. One of ordinary skill would readily understand that a heated aerosol would cool after leaving a heating element. This is commonly known in the art at the condensation area where vapor components condense into particles, which is often desired. The heating of a subsequent element of the system is disclosed by the prior art. One of ordinary skill would expect cooling to occur between a heater and a subsequent element based on fundamental laws of physics and the fact that the aerosol is undergoing condensation.
Applicant’s arguments concerning the distances in Digard are addressed in prior office actions (see Non-Final Rejection 9/10/2025). In addition, the applicant argues that the maximum length in Digard of 15 mm is 50% larger than the maximum claimed of 10 mm. Although, this is correct, the rejection is over the range disclosed by Digard and the range claimed. Digard indicates the range is “up to 15 mm” which is interpreted to be 0-15 mm. The instantly claimed range is 3-10 mm. There is significant overlap between than range Digard discloses and the claimed range (see MPEP 2144.05(I) “"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).”).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, and 12-18, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (US 2018/0360122) in view of Bilat et al. (WO2018019533A1) and Digard et al. (US 2021/0153546).
Regarding claim 1, Aoun discloses an aerosol provision system (i.e., apparatus for generating an inhalable medium) ([0039], Fig. 1) comprising: an aerosol precursor material part ([0042], Fig. 1 component 9) comprising an aerosol precursor material to be vaporized ([0042], Fig. 1 component 10); an aerosol modifying material part (i.e., chamber) ([0045], Fig. 1 component 13) comprising an aerosol modifying material ([0045], Fig. 1 component 14) for modifying at least one property of a generated aerosol ([0048]), wherein the aerosol modifying material part comprises a lower surface fluidly coupled to an aerosol pathway ([0046], Fig. 1 component 13); and a heater for generating aerosol from the aerosol precursor material ([0044], Fig. 1 component 11), the heater arranged in the aerosol pathway such that in normal use aerosol generated by the heater passes along the aerosol pathway to the aerosol modifying material part ([0044], Fig. 1 component A). Aoun further discloses that the apparatus comprises a controller (i.e., electrical circuitry) ([0069], Fig. 1 component 8). However, Aoun does not explicitly teach the power supplied to the heater is set to generate a predetermined mass of aerosol per puff, and wherein the predetermined mass of aerosol generated per puff is set such that, accounting for energy losses from the aerosol while travelling from the heater to the lower surface of the aerosol modifying material part, energy received at the lower surface of the aerosol modifying material part from the mass of aerosol causes the temperature of the lower surface of the aerosol modifying material part to be raised to between 50°C to 150°C.
Bilat discloses an aerosol generating system (i.e., aerosol provision system) ([Page 1 para. 1], Fig. 1d) comprising an electric circuitry (i.e., controller) connected to the electric heater to control the power supplied to the heater ([Page 2 para. 10]). The electric circuitry is also configured to supply different power levels (i.e., 6W and 5W) to the heater to cope with the adverse condition and ensure that the user is provided with a consistent and enjoyable experiences ([Page 9 para. 7-Page 10 para. 2]). In other words, the electric circuitry is capable of setting the amount of power that should be supplied to the heater to generate a specific amount of aerosol (i.e., predetermined mass of aerosol). The power supplied to the heater directly corresponds to the amount of aerosol generated; the greater the power, the more aerosol and heat (i.e., more heated vapor) are produced. Bilat is considered to be analogous art because it is reasonably pertinent to the aerosol provision system.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the controller (i.e., electrical circuitry) of Aoun to incorporate the teachings of Bilat by configuring the controller to supply a set amount of power to the heater to generate a predetermined mass of aerosol per puff, ensuring that the predetermined generated aerosol (i.e., heated aerosol) is sufficient to raise the temperature of the lower surface of the aerosol modifying material part to between 50°C to 150°C. Doing so would provide enough heat to bake the tobacco material within the aerosol modifying material part, enhancing the taste of the generated aerosol before it enters the user’s mouth, and thereby arriving at the presently claimed invention.
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Modified Aoun discloses an aerosol provision system (i.e., apparatus for generating an inhalable medium) as set forth above. However, modified Aoun does not explicitly teach the distance between the heater and the lower surface of the aerosol modifying material part is between 3 mm to 10 mm. Digard discloses a similar electronic tobacco hybrid device ([0005]) comprising a first chamber containing a liquid and a second chamber (i.e., aerosol modifying material part) configured to receive a solid flavor material (i.e., tobacco) ([0005, 0016-0018, 0022]). The generated aerosol from the first chamber passes through material (i.e., tobacco) and combines with one or more components of the solid flavor material (i.e., tobacco) to form an inhalable medium ([0005, 0020, 0022]). Digard does not expressly teach the distance between the heater (i.e., first chamber) and the second chamber (i.e., aerosol modifying material part) is between 3 mm to 10 mm, but Digard does teach that “the first and second chambers are spaced. The distance maybe up to 50 mm, preferably up to 25 mm, more preferably up to 15 mm. However, the spacing should not be too large in order to minimize the distances that vapors flow, thereby minimizing heat loss” ([0054]). This establishes the distance between the heater (i.e., first chamber) and the second chamber (i.e., aerosol modifying material part) as a result effective variable, which it would have been obvious for one of ordinary skill in the art to have optimized, and the results would be predictable and have a reasonable expectation of success, especially in maintaining the desired temperature at the lower surface of the aerosol modifying material part. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. “In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the aerosol provision system of modified Aoun to incorporate the teachings of Digard by spacing the heater and the lower surface of aerosol modifying material part at a distance (i.e., 3mm to 10mm) that ensures the lower surface of the aerosol modifying material part always reaches the desired temperature, as recognized by Digard.
Regarding claims 2-3, modified Aoun discloses the electric circuitry is configured to supply different power levels (i.e., 6W and 5W) to the heater to cope with the adverse condition ([Please refer to the rejection of claim 1 above). Hence, it is evident that the electric circuitry is also capable of supplying different power levels to generate specific amounts of aerosol (i.e., hot vapor) sufficient to maintain the temperature of the lower surface of the aerosol modifying material part between 70°C and 140°C, or 85°C and 125°C.
Regarding claims 4-5, modified Aoun discloses the electric circuitry is configured to supply different power levels (i.e., different quantities of generated aerosol) to the heater to cope with the adverse condition ([Please refer to the rejection of claim 1 above). Given that the amount of power supplied to the heater corresponds to the amount of aerosol to be generated; it is clear that the electric circuitry is also capable of supplying a certain power level, which corresponds to generating 4 to 12 milligrams of aerosol to at the heater. In addition, the temperature of the lower surface of the aerosol modifying material part depends on the distance between it and the heater. For instance, the shorter the distance between the lower surface of aerosol modifying material part and the heater, the less power is delivered to the heater, resulting in less aerosol being generated, and vice versa. Therefore, the modified Aoun’s electric circuitry can be configured to supply different power levels (i.e., different quantities of generated aerosol) to the heater, ensuring that the lower surface of aerosol modifying material part maintains a desired temperature at any distance between the heater and the lower surface.
Regarding claims 6, and 12-13, modified Aoun discloses the temperature of the heater is between 180°C to 260°C during normal use ([0047]), wherein the aerosol pathway between the heater and the lower surface of the aerosol modifying material part extends along a straight line ([0044], Fig. 1 component A). However, modified Aoun does not explicitly teach the power supplied to the heater is between 6 W and 9 W, preferably between 6.5 W and 8.5 W.
Bilat discloses an aerosol generating system (i.e., aerosol provision system) ([Page 1 para. 1], Fig. 1d) comprising an electric circuitry (i.e., controller) connected to the electric heater to control the power supplied to the heater ([Page 2 para. 10]). The electric circuitry is also configured to supply different power levels (i.e., 6W and 5W) to the heater to cope with the adverse condition and ensure that the user is provided with a consistent and enjoyable experiences ([Page 9 para. 7-Page 10 para. 2]). Bilat is considered to be analogous art because it is reasonably pertinent to the aerosol provision system.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the controller (i.e., electrical circuitry) of Aoun to incorporate the teachings of Bilat by configuring the controller to supply a power of 6W to the heater. Doing so would provide enough heat (i.e., hot aerosol) to release the volatile compounds from the tobacco material within the aerosol modifying material part, enhancing the taste of the generated aerosol before it enters the user’s mouth, and thereby arriving at the presently claimed invention.
Regarding claims 14-16, modified Aoun discloses the heater is made from an electrically conductive material such as a Nickel Chromium alloy (i.e., nichrome) ([0043]), and a wicking material, wherein the aerosol precursor material comprises a liquid, and the wicking material is arranged to transport the liquid to the heater ([0044]). Furthermore, modified Aoun teaches that the liquid aerosol precursor material comprises vegetable glycerol and flavor ([0018, 0019]).
Regarding claims 17-18 and 22-23, modified Aoun discloses the aerosol modifying material comprises or consists of tobacco ([0070]), wherein the tobacco is tobacco granules (i.e., ground tobacco) ([0072]). Modified Aoun also discloses the aerosol modifying material part further comprises an upper surface opposite the lower surface ([0045], Fig. 1 component 13). As is known in the art, a personal vaporizer (i.e., aerosol provision system) has a length of between 78 to 120 mm ([US2017013884, para. 0028]). Considering that modified Aoun’s inhalator (i.e., aerosol provision system) is 120 mm long, it’s evident that the aerosol modifying material part’s length is inherently between 10 and 20 mm, according to the ratio of the aerosol modifying material part to the entire inhalator (i.e., aerosol provision system) ([Fig. 2 component 213]).
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (US 2018/0360122) in view of Bilat (WO2018019533A1), as applied to claim 1 above, and further in view of Yilmaz et al. (US 2021/0177056).
Regarding claims 19-21, modified Aoun discloses an aerosol provision system (i.e., apparatus for generating an inhalable medium) as set forth above. Modified Aoun further teaches that the aerosol modifying material part comprises a housing for storing the aerosol modifying material ([0045], Fig. 1 component 13). However, modified Aoun does not explicitly teach the housing is formed from a polypropylene material, wherein the housing comprises a first mesh as the lower surface of the aerosol modifying material part. Furthermore, modified Aoun fails to teach the lower surface of the aerosol modifying material part is formed from a metal material. Yilmaz discloses a similar aerosol provision device (i.e., hybrid device) ([0047], Fig. 1 component 100) that includes a material chamber (i.e., aerosol modifying material part) ([0048], Fig. 1 component 430) containing material (i.e., tobacco) ([0049]) to modify the generated aerosol (i.e., vapor) before the vapor exits the device for inhalation by a user ([0049]). Yilmaz teaches that the material chamber (i.e., aerosol modifying material part) includes a housing with a porous membrane (i.e., lower surface of the aerosol modifying material part) ([0081], Fig. 1 component 490), allowing the generated aerosol to pass through and interact with the tobacco material ([0081]). The porous membrane (i.e., part of the housing) is made from polypropylene ([0081], Fig. 1 component 490) and is also a mesh ([0081]). Yilmaz further teaches that the porous membrane (i.e., lower surface of the aerosol modifying material part) can also be made from a metal material (i.e., stainless steel or aluminum) ([0081]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the aerosol modifying material part (i.e., chamber) of modified Aoun to incorporate the teachings of Yilmaz by making the chamber’s housing from polypropylene material and the lower surface of the chamber from a metal mesh. Doing so would prevent the lower surface of the chamber from melting due to the heated aerosol (i.e., hot vapor) while still allowing the heated aerosol (i.e., hot vapor) to pass through the chamber (i.e., the aerosol modifying material part), thereby arriving at the presently claimed invention.
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 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 at 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