Prosecution Insights
Last updated: April 19, 2026
Application No. 17/686,020

SMOKING SUBSTITUTE APPARATUS

Non-Final OA §102§103
Filed
Mar 03, 2022
Examiner
SPARKS, RUSSELL E
Art Unit
1755
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Imperial Tobacco Limited
OA Round
3 (Non-Final)
63%
Grant Probability
Moderate
3-4
OA Rounds
3y 9m
To Grant
79%
With Interview

Examiner Intelligence

Grants 63% of resolved cases
63%
Career Allow Rate
240 granted / 380 resolved
-1.8% vs TC avg
Strong +16% interview lift
Without
With
+16.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 9m
Avg Prosecution
73 currently pending
Career history
453
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
48.5%
+8.5% vs TC avg
§102
13.5%
-26.5% vs TC avg
§112
24.8%
-15.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 380 resolved cases

Office Action

§102 §103
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/19/2025 has been entered. Response to Amendment Claims 1, 8 and 10-11 are amended. Claims 1-11 are presently examined. Specification The use of the terms Bluetooth [0067], WIFI [0067, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. Claim Objections Claims 3 and 6 are objected to because of the following informalities: The claims do not conclude with a period. Appropriate correction is required. Claims 2-9 are objected to because of the following informalities: The claims begin with the indefinite article “a” rather than the definite article “the”. Appropriate correction is required. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1, 3-4, 6-7 and 10-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu (US 11,523,634). Regarding claims 1, 3 and 10-11, Liu discloses an ultrasonic atomizing device (abstract), which is considered to meet the claim limitation of a smoking substitute apparatus. The device has a bottom end defined by a bottom seat (figure 6, reference numeral 31), which is considered to meet the claim limitation of a base portion, connected with an atomizer outer pipe (column 6, lines 10-32, figure 6, reference numeral 11). The atomizer outer pipe directly connects to upper (figure 6, reference numeral 18) and lower end covers (column 6, lines 10-32, figure 6, reference numeral 19), which together with the outer pipe are considered to define one or more walls. The outer pipe connects to a suction nozzle (column 6, lines 10-32, figure 6, reference numeral 15), which is considered to meet the claim limitation of a mouthpiece. The outer pipe, upper and lower end covers, bottom end, and suction nozzle together are considered to define a housing. The side wall of the mouthpiece has an air inlet hole that is located at a longitudinal distance from the base portion (column 5, lines 55-67, column 6, lines 1-9, figure 6, reference numeral 16), which is considered to meet the claim limitation of an air inlet. The upper end of the suction nozzle forms an outlet (figure 6), which is considered to meet the claim limitation of an outlet. A tobacco tar bin is arranged between the inner side wall of the atomizer outer pipe and an outer side wall of a second connecting seat (column 6, lines 10-32, figure 6, reference numeral 30), which is considered to meet the claim limitation of a tank for housing an aerosol precursor. The lower portion of the tar bin is defined by an atomizing core outer sleeve having a horizontal portion (column 5, lines 11-21, figure 6, reference numeral 5), which is considered to meet the claim limitation of a transverse chamber wall. A tobacco tar guide cotton has a cup-shaped structure (figure 6, reference numeral 1), which is considered to meet the claim limitation of a wick, with ends that extend through the opening in the lower wall that defines the chamber to reach tobacco tar inlet holes that communicate tobacco tar to the tobacco tar guide cotton (column 5, lines 11-21, figure 6, reference numeral 7), which is considered to meet the claim limitation of ends of the wick extending through the transverse chamber wall to be in contact with aerosol precursor. The bottom portion of the tobacco tar guide cotton is in contact with an atomizing piece (column 5, lines 40-49, figure 6, reference numeral 2) that generates heat to form smoke (column 2, lines 58-64), which is considered to meet the claim limitation of a heating element. The center of the tobacco tar guide cotton is in contact with the atomizing piece and extends transversely (column 2, lines 58-64), which is considered to meet the claim limitation of a heatable portion of the wick. The lower portion of the tobacco tar guide cotton forms the bottom of a cylinder (figure 3), which is considered to meet the claim limitation of cylindrical. The components of the airflow pathway are shown in the annotated version of figure 6 below: PNG media_image1.png 812 511 media_image1.png Greyscale Regarding claim 4, the annotated version of figure 6 above shows that the first and third portions of the airflow path are perpendicular to the second portion of the airflow path. Regarding claim 6, the cup shape of the tobacco tar guide cotton of Liu is considered to be U-shaped. Regarding claim 7, Liu discloses that the portion of the tobacco tar guide cotton that is in contact with the atomizing piece is shorter in length than the airflow path in the lower portion of the cup shaped portion of the tobacco tar guide cotton (figure 6). 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 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 11,523,634). Regarding claim 2, Liu discloses all the claim limitations as set forth above. Liu does not explicitly disclose the distance between the air inlet and the lower end cover being at least 8 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the distance between the air inlet and the lower end cover be at least 8 mm. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A. Regarding claim 9, Liu discloses all the claim limitations as set forth above. Liu additionally discloses that the center portion of the tobacco tar guide cotton extends in a width direction and that the device has a vertical length, a width, and a depth that is perpendicular to the width (figure 6). Liu does not explicitly disclose the depth being less than both the width and length. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the device have the claimed relative size. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 11,523,634) in view of Florack (US 11,533,952). Regarding claim 5, Liu discloses all the claim limitations as set forth above. Liu does not explicitly disclose a bypass air inlet. Florack teaches an aerosol generating system having a mixing chamber extending between a cartridge and a mouthpiece (abstract). A ventilation air inlet provides fluid communication between an exterior and the mixing chamber (column 1, lines 46-67, column 2, lines 1-14) so that the mainstream airflow can be mixed to provide a desired concentration of aerosol to the user (column 1, lines 26-35). It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine mouthpiece of Liu with the ventilation air inlet of Florack. One would have been motivated to do so since Florack teaches that ventilation air inlets provide a desired concentration of aerosol to a user. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 11,523,634) in view of Li (US 11,285,278). Regarding claim 8, Liu discloses al the claim limitations as set forth above. Liu does not explicitly disclose the tobacco tar bin being located between the first and third airflow portions. Li teaches an atomizer that has an airflow channel on its outer surface that reduces the external temperature to avoid a user’s hands being burned (column 3, lines 25-37). It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the first airflow portion of Liu being located outside of the tobacco tar bin of Liu. One would have been motivated to do so since Li teaches that positioning an airflow channel on the outside of an atomizer reduces the temperature to avoid a user’s hands being burned. Response to Arguments Regarding the rejections under 35 USC 103, applicant’s arguments are moot since they do not apply to the references relied upon in the instant Office action. Conclusion 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
Read full office action

Prosecution Timeline

Mar 03, 2022
Application Filed
Jul 14, 2022
Response after Non-Final Action
Aug 29, 2023
Response after Non-Final Action
Nov 29, 2024
Non-Final Rejection — §102, §103
Mar 04, 2025
Response Filed
Jun 23, 2025
Final Rejection — §102, §103
Aug 25, 2025
Response after Non-Final Action
Sep 19, 2025
Request for Continued Examination
Sep 22, 2025
Response after Non-Final Action
Jan 24, 2026
Non-Final Rejection — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12599177
Mouthpiece Assembly for an Inhalation Device including a Replaceable Substrate Component, and a Replaceable Substrate Component therefor
2y 5m to grant Granted Apr 14, 2026
Patent 12576222
INHALER WITH BOUNDARY ELEMENT
2y 5m to grant Granted Mar 17, 2026
Patent 12575608
Heating System for Vaporizable Material Insert
2y 5m to grant Granted Mar 17, 2026
Patent 12575594
Reconstituted Tobacco For Devices That Heat Tobacco Without Burning It
2y 5m to grant Granted Mar 17, 2026
Patent 12575613
VAPING DEVICE
2y 5m to grant Granted Mar 17, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
63%
Grant Probability
79%
With Interview (+16.2%)
3y 9m
Median Time to Grant
High
PTA Risk
Based on 380 resolved cases by this examiner. Grant probability derived from career allow rate.

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