DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/2026 has been entered.
Status of the Claims
Claims 1, 5-6, and 8-16 are pending. Claims 13-14 are withdrawn. Claims 1 and 12-13 have been amended. Claims 15-16 are new.
Response to Arguments
Applicant’s arguments, see pages 8-9 of Remarks filed 5/5/2026, with respect to the rejection of claims 1 and 12 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The Applicant has amended claims 1 and 12 such that they no longer contain a broad range or limitation together with a narrow range or limitation. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see pages 9-11 of Remarks filed 5/5/2026, with respect to the rejection of claims 1 and 7-12 under 35 U.S.C. 103 over Hatton have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments, see page 11 of Remarks filed 5/5/2026, with respect to the rejection of claims 1 and 5-6 under 35 U.S.C. 103 over Tucker have been fully considered but they are not persuasive. Applicant argues that “Tucker fails to teach or suggest the wick configuration of amended claims 1 and 12”. This argument is not persuasive as the obvious modification of Tucker teaches all of the limitations of claims 1 and 12, as discussed in the rejections below.
Applicant’s arguments, see page 12 of Remarks filed 5/5/2026, with respect to the hypothetical rejection of claims 1 and 12 under 35 U.S.C. 103 over the combination of Hatton and Tucker have been considered but are moot because such grounds of rejection have not been made.
Applicant’s arguments, see page 13-14 of Remarks filed 5/5/2026, with respect to the hypothetical rejection of claims 15 and 16 under 35 U.S.C. 103 over either Hatton or the combination of Hatton and Tucker have been considered but are moot because such grounds of rejection have not been made.
Applicant's arguments, see page 15 of Remarks filed 5/5/2026, with respect to the rejection of claims 15 and 16 under 35 U.S.C. 103 over Tucker have been fully considered but they are not persuasive. Applicant argues that claims 15 and 16 are nonobvious in view of Tucker alone. This argument is not persuasive as the obvious modification of Tucker teaches all of the limitations of claims 15 and 16, as discussed in the rejections below.
Claim Objections
Claims 1, 5, 6, and 9 are objected to because of the following informalities:
In claim 1, “heat transmitting surface” in lines 17-18 should be “heat-transmitting surface” (as introduced in line 16);
In claim 5, “the air inlet” should be “said at least one air inlet”;
In claim 6, “the air inlet” should be “said at least one air inlet”;
In claim 9, “the air inlet is a first air inlet” should be “said at least one air inlet comprises a first air inlet”;
In claim 9, “a second air inlet” should be “said at least one air inlet comprises a second air inlet”;
In claim 10, “a wick” should be “the wick”.
Appropriate correction is required.
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.
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.
Claims 1 5-6, 8-12, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tucker et al. (US 2018/0352866 A1).
Regarding claim 1, Tucker discloses a smoking substitute apparatus (“replaceable cartridge (or first section) 70”, Fig. 15, ¶ 0087) comprising at least one air inlet (“ports 44, 44’”, Fig. 15, ¶ 0099) and an air inlet passage (passage from “air inlet 44” to “heater 14”, Fig. 15, ¶ 0099), an aerosol generator (combination of “wick 28” and “heater 14”, Fig. 15, ¶ 0090) and an outlet (ports of “mouthpiece 8”, Fig. 15, ¶ 0099), the aerosol generator comprising a heater (“heater 14”, Fig. 15, ¶ 0090) and being operable to generate an aerosol (“aerosol”, ¶ 0099) by vaporizing a liquid aerosol precursor (“liquid”, ¶ 0090), air flowing in use through said at least one air inlet and air inlet passage, entraining the aerosol and flowing to the outlet when a user draws on the apparatus (Fig. 15, ¶ 0099),
wherein a partition wall (combination of “diverter 100” in the form of an “oval wall 105’”, Fig. 17, ¶ 0096, and “electrical contacts 111, 111’”, Fig. 17, ¶ 0094) is provided between the aerosol generator and air inlet passage (compare Fig. 17 to Fig. 15), wherein the aerosol generator includes a wick (“wick 28”, Fig. 15, ¶ 0090), in use the partition wall being heated by the heater of the aerosol generator (“flow diverter 100 is provided adjacent the heater 14”, ¶ 0092, and as such, would be heated by the heater) and thereby heating the air in the air inlet passage before entraining the aerosol (as the partition wall is heated by the heater to above room temperature, and air drawn in from the room to the partition wall is room temperature, the partition wall would heat the air in the air inlet passage before entraining the aerosol, see ¶ 0092, 0099-0100), and
wherein the partition wall is formed at least in part by an electrical contact for the heater (“electrical contacts 111, 111'”, Fig. 17, ¶ 0094),
wherein at least where the partition wall is formed by the electrical contact, the total thickness of the partition wall is defined by the electrical contact (as the partition wall is the combination of 105’ and 111, 111’, at the position of the electrical contacts the total thickness of the partition wall is the thickness of 105’ plus the thickness of 111, 111’. As such, the total thickness of the partition wall is defined by the electrical contact 111, 111’).
Tucker further discloses wherein the partition wall presents a heat-absorbing surface to the heater (interior surface of “flow diverter 100” that faces “heater 14” in Fig. 17). Tucker does not explicitly disclose the area of the heat-absorbing surface of the partition wall to determine if it is at least 15 mm2. However, Tucker teaches that the “air flow diverter is operable to manage air flow at or about around the heater so as to abate a tendency of drawn air to cool the heater, which could otherwise lead to diminished aerosol output” (¶ 0068). The efficacy of flow diverter 100 for this result depends on the area of the heat-absorbing surface of flow diverter 100. If the area of the heat-absorbing surface is too small, then flow diverter 100 will not be able to manage air flow at the heater. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the area of the heat-absorbing surface of the heat shield such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Tucker further discloses wherein the partition wall presents a heat-transmitting surface to the air inlet passage (exterior surface of “flow diverter 100” that faces the air inlet passage in Fig. 17), the heat-transmitting surface comprising an inlet air contact surface (the entirety of the heat-transmitting surface), wherein the entire area of the inlet air contact surface is in contact with air in the inlet passage (see Fig. 17).
Tucker further discloses wherein the area of the inlet air contact surface is larger than the area of the heat-absorbing surface (the area of the exterior surface of “flow diverter 100” facing the air inlet passage, which corresponds to the inlet air contact surface, is larger than the area of the interior surface of “flow diverter 100” facing the heater, which corresponds to the heat-absorbing surface, due to the curvature of the “flow diverter 100”, see Fig. 17).
Tucker does not explicitly disclose that the wick has a longitudinal axis which is coextensive with a width of the partition wall. However, Tucker teaches that the “wick 28 is in communication with the liquid material in the liquid supply reservoir 22 and in communication with the heater 14 such that the wick 28 disposes liquid material in proximate relation to the heater 14” (¶ 0035), and the partition wall is included so that “a substantial portion of the airstream entering the channel 110 bypasses the heater 14” (¶ 0100). The efficacy of the wick and partition wall for this result depends on the length of the longitudinal axis of the wick relative to the width of the partition wall. If the length of the longitudinal axis of the wick is too small, then the wick will not draw enough liquid material to the heater and have enough surface area in contact with the heater to form sufficient aerosol. If the length of the longitudinal axis of the wick is too large, then the wick would extend pass the partition wall and, therefore, no longer be fully protected by the partition wall. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the length of the longitudinal axis of the wick such that it is coextensive with a width of the partition wall (e.g., a width of the interior cavity of the partition wall). "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 5, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein, in use, a proportion of the air flow from said at least one air inlet to the outlet bypasses the aerosol generator (“a substantial portion of the airstream entering the channel 110 bypasses the heater 14”, ¶ 0100).
Regarding claim 6, Tucker discloses the smoking substitute apparatus according to claim 5, as stated above. Tucker further discloses wherein substantially all of the air flow from said at least one air inlet to the outlet bypasses the aerosol generator (“a substantial portion of the airstream entering the channel 110 bypasses the heater 14”, ¶ 0100).
Regarding claim 8, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein the aerosol generator and partition wall are located within a vaporization chamber (“outer tube 6”, Fig. 15, ¶ 0033) having an oval cross-section (while Tucker does not explicitly state the shape the cross-section of the vaporization chamber in Fig. 15, it would have been obvious to make the vaporization chamber a cylinder with a circular cross-section in order to fit cylindrical mouthpiece 8, Figs. 2-3, and reservoir 22 with semi-circular cross-section, Figs. 15, 17, ¶ 0088; a circle is type of oval1), and wherein the partition wall is substantially aligned with a long axis of the oval cross section (see Fig. 15).
Regarding claim 9, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein the at least one air inlet comprises a first air inlet (port 44, Fig. 15, ¶ 0099) and the partition wall is a first partition wall, and the at least one air inlet comprises a second air inlet (port 44’, Fig. 15, ¶ 0099).
The embodiment shown in Fig. 15 of Tucker does not explicitly include a second partition wall provided between the aerosol generator and the second air inlet, the second partition wall and second air inlet being located on an opposite side of the heater to the first partition wall and first air inlet.
Tucker further discloses that smoking substitutes apparatuses may be formed with multiple partition walls (Fig. 21, ¶ 0023). One of ordinary skill in the art would have understood that there was a benefit to using multiple partition walls in that it allows for the use of a liquid reservoir that can be subdivided to allow for different liquids to be aerosolized (¶ 0102). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form multiple partition walls of the type shown in Fig. 17 of Tucker in the arrangement shown in Fig. 21 of Tucker with multiple wicks and a subdivided liquid reservoir, in order to obtain this benefit. In the resulting configuration, the partition wall (diverter 100a, Fig. 21) on the same side as the first inlet (inlet 44, Fig. 21) may be considered the first partition wall, and the partition wall (diverter 100b, Fig. 21) on the same side as the second air inlet (inlet 44’, Fig. 21) may be considered the second partition wall. As such, the second partition wall is provided between the aerosol generator (the combination of heater 14a, 14b and wick 28a, 28b, Fig. 21) and the second air inlet, and the second partition wall and second air inlet are located on an opposite side of the heater (heater 14a, 14b, Fig. 21) to the first partition wall and first air inlet (see Fig. 21).
Regarding claim 10, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein the heater is a coil heater (“heater 14 can be in the form of a wire coil”, Fig. 17, ¶ 0035), which helically encompasses the wick (see Fig. 17), and wherein the helical axis of the helical coil heater is substantially aligned with the partition wall (see Fig. 17).
Regarding claim 11, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein the smoking substitute apparatus is comprised by a cartridge (“replaceable cartridge (or first section) 70”, Fig. 15, ¶ 0087) configured for engagement with a base unit (“a reusable fixture (or second section) 72”, Fig. 15, ¶ 0033), the cartridge and base unit together forming a smoking substitute system (“a novel electronic cigarette 60”, Fig. 15, ¶ 0033).
Regarding claim 12, Tucker discloses a smoking substitute system (“a novel electronic cigarette 60”, Fig. 15, ¶ 0033) comprising:
a base unit (“a reusable fixture (or second section) 72”, Fig. 15, ¶ 0033); and
a smoking substitute apparatus (“replaceable cartridge (or first section) 70”, Fig. 15, ¶ 0087), wherein the smoking substitute apparatus is removably engaged with the base unit (“a replaceable cartridge (or first section) 70 and a reusable fixture (or second section) 72, which are coupled together at a threaded connection 205 or by other convenience such as a snug-fit, detent, clamp and/or clasp”, ¶ 0033), wherein the smoking substitute apparatus comprises at least one air inlet (“ports 44, 44’”, Fig. 15, ¶ 0099) and an air inlet passage (passage from “air inlet 44” to “heater 14”, Fig. 15, ¶ 0099), an aerosol generator (combination of “wick 28” and “heater 14”, Fig. 15, ¶ 0090) and an outlet (ports of “mouthpiece 8”, Fig. 15, ¶ 0099), the aerosol generator comprising a heater (“heater 14”, Fig. 15, ¶ 0090) and being operable to generate an aerosol (“aerosol”, ¶ 0099) by vaporizing a liquid aerosol precursor (“liquid”, ¶ 0090), air flowing in use through said at least one air inlet and air inlet passage, entraining the aerosol and flowing to the outlet when a user draws on the apparatus (Fig. 15, ¶ 0099),
wherein a partition wall (combination of “diverter 100” in the form of an “oval wall 105’”, Fig. 17, ¶ 0096, and “electrical contacts 111, 111’”, ¶ 0094) is provided between the aerosol generator and air inlet passage (compare Fig. 17 to Fig. 15), wherein the aerosol generator includes a wick (“wick 28”, Fig. 15, ¶ 0090) in use the partition wall being heated by the heater of the aerosol generator (“flow diverter 100 is provided adjacent the heater 14”, ¶ 0092, and as such, would be heated by the heater) and thereby heating the air in the air inlet passage before entraining the aerosol (as the partition wall is heated by the heater to above room temperature, and air drawn in from the room to the partition wall is room temperature, the partition wall would heat the air in the air inlet passage before entraining the aerosol, see ¶ 0092, 0099-0100), and
wherein the partition wall is formed at least in part by an electrical contact for the heater (“electrical contacts 111, 111'”, Fig. 17, ¶ 0094),
wherein at least where the partition wall is formed by the electrical contact, the total thickness of the partition wall is defined by the electrical contact (as the partition wall is the combination of 105’ and 111, 111’, at the position of the electrical contacts the total thickness of the partition wall is the thickness of 105’ plus the thickness of 111, 111’. As such, the total thickness of the partition wall is defined by the electrical contact 111, 111’).
Tucker further discloses wherein the partition wall presents a heat-absorbing surface to the heater (interior surface of “flow diverter 100” that faces “heater 14” in Fig. 17). Tucker does not explicitly disclose the area of the heat-absorbing surface of the partition wall to determine if it is at least 15 mm2. However, Tucker teaches that the “air flow diverter is operable to manage air flow at or about around the heater so as to abate a tendency of drawn air to cool the heater, which could otherwise lead to diminished aerosol output” (¶ 0068). The efficacy of flow diverter 100 for this result depends on the area of the heat-absorbing surface of flow diverter 100. If the area of the heat-absorbing surface is too small, then flow diverter 100 will not be able to manage air flow at the heater. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the area of the heat-absorbing surface of the heat shield such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Tucker further discloses wherein the partition wall presents a heat-transmitting surface to the air inlet passage (exterior surface of “flow diverter 100” that faces the air inlet passage in Fig. 17), the heat-transmitting surface comprising an inlet air contact surface (the entirety of the heat-transmitting surface), wherein the entire area of the inlet air contact surface is in contact with air in the inlet passage (see Fig. 17).
Tucker further discloses wherein the area of the inlet air contact surface is larger than the area of the heat-absorbing surface (the area of the exterior surface of “flow diverter 100” facing the air inlet passage, which corresponds to the inlet air contact surface, is larger than the area of the interior surface of “flow diverter 100” facing the heater, which corresponds to the heat-absorbing surface, due to the curvature of the “flow diverter 100”, see Fig. 17).
Tucker does not explicitly disclose that the wick has a longitudinal axis which is coextensive with a width of the partition wall. However, Tucker teaches that the “wick 28 is in communication with the liquid material in the liquid supply reservoir 22 and in communication with the heater 14 such that the wick 28 disposes liquid material in proximate relation to the heater 14” (¶ 0035), and the partition wall is included so that “a substantial portion of the airstream entering the channel 110 bypasses the heater 14” (¶ 0100). The efficacy of the wick and partition wall for this result depends on the length of the longitudinal axis of the wick relative to the width of the partition wall. If the length of the longitudinal axis of the wick is too small, then the wick will not draw enough liquid material to the heater and have enough surface area in contact with the heater to form sufficient aerosol. If the length of the longitudinal axis of the wick is too large, then the wick would extend pass the partition wall and, therefore, no longer be fully protected by the partition wall. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the length of the longitudinal axis of the wick such that it is coextensive with a width of the partition wall (e.g., a width of the interior cavity of the partition wall). "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 15, Tucker discloses the smoking substitute apparatus according to claim 1, as stated above. Tucker further discloses wherein the heat absorbing surface overlaps the heater a first distance (see Fig. 17); and wherein the heat transmitting surface is in contact with air in the air inlet passage for a second distance longer than the first distance (see Fig. 17).
Regarding claim 16, Tucker discloses the smoking substitute apparatus according to claim 12, as stated above. Tucker further discloses wherein the heat absorbing surface overlaps the heater a first distance (see Fig. 17); and wherein the heat transmitting surface is in contact with air in the air inlet passage for a second distance longer than the first distance (see Fig. 17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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/COURTNEY G CULBERT/Examiner, Art Unit 1747
1 "All circles can be considered as ovals" (https://www.cuemath.com/geometry/oval-shape/)
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