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.
Status of the Claims
Claims 1 and 5-14 are pending. Claims 13-14 are withdrawn. Claims 1 and 12 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 10/21/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 8-9 of Remarks filed 10/21/2025, with respect to the rejection of claims 1 and 12 under 35 U.S.C. 102 have been fully considered and are persuasive. The Applicant has amended claims 1 and 12 to include limitations that are not anticipated by Hatton or Tucker. Therefore, the rejection has been withdrawn.
Applicant's arguments, see pages 9-12 of Remarks filed 10/21/2025, with respect to the rejection of claims 1 and 12 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Applicant argues that annotated Figure 10A, provided by the Examiner in the prior Office Action to demonstrate that the partition wall is provided between the aerosol generator and the air inlet passage, shows that the heat-transmitting surface of the partition wall of Hatton is smaller than the heat-absorbing surface of the partition wall of Hatton. This argument is not persuasive as Fig. 10A of Hatton shows the relative positions of the air inlet passage, partition wall, and aerosol generator of Hatton but does not show the relevant heat-transmitting and heat-absorbing surfaces in order to ascertain their relative sizes. Instead, Fig. 9 of Hatton shows that the interior surface of the partition wall, “heater contacts 33”, is partially blocked by the portion of “fluid storage compartment 32” that it is affixed to, limiting the area of the heat-absorbing surface to the portion of the interior surface of “heater contacts 33” that is uncovered at “heater inlet 53”; therefore, the area of the heat-absorbing surface is smaller than the area of the heat-transmitting surface of “heating contacts 33” facing the air inlet passage.
Applicant further argues that Hatton provides no motivation to modify the partition wall such that the heat-transmitting surface is larger than the heat-absorbing surface. This argument is not persuasive as such a modification is not needed as Hatton already teaches a heat-transmitting surface that is larger than the heat-absorbing surface (Fig. 9).
Applicant further states that “there is no teaching in Tucker that would lead the skilled person to modify the partition wall to arrive at the combination of features of present claims 1 or 12”. This argument is not persuasive as any feature of claim 1 that is not explicitly disclosed by Tucker is obvious to one having ordinary skill in the art as discussed in the rejection of claim 1 in view of Tucker below.
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.
Claims 1 and 5-12 are 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.
Regarding claims 1 and 12, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 12 recite the broad recitation "w, and the claim also recites "wherein the area of the heat-transmitting surface is larger than the area of the heat- absorbing surface" which is the narrower statement of the range/limitation as to be larger than the area of the heat-absorbing surface the heat-transmitting surface must be exclusively larger than 15 mm2. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 5-11 are indefinite due to their dependence from claim 1.
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 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hatton et al. (US 2019/0104767 A1).
Regarding claim 1, Hatton discloses a smoking substitute apparatus (“opened cartridge 30a”, Fig. 5, ¶ 0196) comprising at least one air inlet (“channel air inlet opening 50”, Fig. 10A, ¶ 0217) and an air inlet passage (air inlet passage from “channel air inlet opening 50” through “air inlet passage 51” and “second air passage 41” to “tank air inlet 52” then into “heater inlet 53”, Fig. 10A, ¶ 0217), an aerosol generator (combination of “wick 34” and “resistive heating element 35”, Fig. 7B, ¶ 0206) and an outlet (“aerosol outlets 47”, Fig. 10C, ¶ 0217), the aerosol generator comprising a heater (“resistive heating element 35”, Fig. 7B, ¶ 0206) and being operable to generate an aerosol (“aerosol”, ¶ 0107) by vaporizing a liquid aerosol precursor (“aerosol forming solution (e.g., vaporizable material)”, ¶ 0106-0107), 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 (Figs. 10A-10C, ¶ 0217),
wherein a partition wall (partition wall formed by one of the “heater contacts 33”, Fig. 7B, ¶ 0206) is provided between the aerosol generator and air inlet passage (Fig. 10A), in use the partition wall being heated by the heater of the aerosol generator (¶ 0208) and thereby heating the air in the air inlet passage before entraining the aerosol (¶ 0217), and
wherein the partition wall is formed at least in part by an electrical contact for the heater (the partition wall is the heater contact, ¶ 0208),
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 heater contact, the total thickness of the partition wall is defined by the electrical contact to the heater, ¶ 0208).
Hatton further discloses wherein the partition wall presents a heat-absorbing surface to the heater (portion of the surface of “heater contacts 33” that faces “resistive heating element 35” in “heater inlet 53” that is not blocked by the portion of “fluid storage compartment 32”as shown in Fig. 9; “The first pair of heater contacts 33 may be a heat sink that absorbs and dissipates excessive heat produced by the resistive heating element 35.”, ¶ 0208). Hatton 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, Hatton teaches that “heater contacts 33 may be a heat shield that protects the heater chamber from excessive heat produced by the resistive heating element 35” (¶ 0208). The efficacy of heater contacts 33 for this result depends on the area of the heat-absorbing surface of heater contacts 33. If the area of the heat-absorbing surface is too small, then heater contacts 33 will not be able to absorb enough heat to protect heater enclosure 36 as a heat shield. 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)).
Hatton further discloses wherein the partition wall presents a heat-transmitting surface to the air inlet passage (surface of “heater contacts 33” that faces the air inlet passage shown in Fig. 10A, ¶ 0217; “The first pair of heater contacts 33 may be a heat sink that absorbs and dissipates excessive heat produced by the resistive heating element 35.”, ¶ 0208).
Hatton further discloses wherein the area of the heat-transmitting surface is larger than the area of the heat-absorbing surface (the interior surface of “heater contacts 33” is partially blocked by the portion of “fluid storage compartment 32” that it is affixed to, limiting the area of the heat-absorbing surface to the portion of the interior surface of “heater contacts 33” that is uncovered at “heater inlet 53”; therefore, the area of the heat-absorbing surface is smaller than the area of the heat-transmitting surface of “heating contacts 33” facing the air inlet passage which includes the entirety of the exterior facing surface of “heating contacts 33”; see Fig. 9).
With regard to the area of the heat-transmitting surface of the partition wall being at least 15 mm2, because the area of the heat-transmitting surface of the partition wall is greater than the area of the heat-absorbing surface of the partition wall (as discussed above) and the area of the heat-absorbing surface is at least 15 mm2 (as discussed above), the area of the heat-transmitting surface is greater than 15 mm2.
Regarding claim 7, Hatton discloses the smoking substitute apparatus of claim 1, as stated above. Hatton further discloses wherein the aerosol generator includes a wick (“wick 34”, Fig. 7B, ¶ 0206), which has a longitudinal axis which is coextensive with a width of the partition wall (Fig. 7B).
Regarding claim 8, Hatton discloses the smoking substitute apparatus of claim 1, as stated above. Hatton further discloses wherein the aerosol generator and partition wall are located within a vaporization chamber (“heater chamber 37”, Fig. 7B, ¶ 0199) having a rectangular cross-section (Fig. 7B), and wherein the partition wall is substantially aligned with a long axis of the rectangular cross-section (Fig. 7B). While Hatton does not explicitly disclose an oval cross-section, Hatton does teach that the cross-section of the body may be any other regular or irregular shape (¶ 0196). Therefore, as an oval is included in any other regular or irregular shape, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used an oval shape for the cross-section instead of the rectangular cross-section shown in Fig. 7B.
Regarding claim 9, Hatton discloses the smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the air inlet is a first air inlet (first of two “channel air inlet opening 50”, Fig. 10A, ¶ 0217) and the partition wall is a first partition wall (first of two “heater contacts 33”, Fig. 7B, ¶ 0206), and the smoking substitute apparatus further comprises a second partition wall (second of two “heater contacts 33”, Fig. 7B, ¶ 0206) provided between the aerosol generator and a second air inlet (second of two “channel air inlet opening 50”, Fig. 10A, ¶ 0217), 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 (Fig. 10A).
Regarding claim 10, Hatton discloses the smoking substitute apparatus of claim 1, as stated above. Hatton further discloses wherein the heater is a coil heater (“The resistance wire may be a coil.”, Fig. 7B, ¶ 0107), which helically encompasses a wick (“A resistance wire may be wrapped around the wicking material”, Fig. 7B, ¶ 0107), and wherein the helical axis of the helical coil heater is substantially aligned with the partition wall (Fig. 7B).
Regarding claim 11, Hatton discloses the smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the smoking substitute apparatus is comprised by or within a cartridge (“opened cartridge 30a”, Fig. 5, ¶ 0196) configured for engagement with a base unit (“device body 20”, Fig. 5, ¶ 0196), the cartridge and base unit together forming a smoking substitute system (“compact electronic device 10”, Fig. 5, ¶ 0196).
Regarding claim 12, Hatton discloses a smoking substitute system (“compact electronic device 10”, Fig. 5, ¶ 0196) comprising:
a base unit (“device body 20”, Fig. 5, ¶ 0196); and
a smoking substitute apparatus (“opened cartridge 30a”, Fig. 5, ¶ 0196), wherein the smoking substitute apparatus is removably engaged with the base unit (Fig. 12), wherein the smoking substitute apparatus comprises at least one air inlet (“channel air inlet opening 50”, Fig. 10A, ¶ 0217) and an air inlet passage (air inlet passage from “channel air inlet opening 50” through “air inlet passage 51” and “second air passage 41” to “tank air inlet 52” then into “heater inlet 53”, Fig. 10A, ¶ 0217), an aerosol generator (combination of “wick 34” and “resistive heating element 35”, Fig. 7B, ¶ 0206) and an outlet (“aerosol outlets 47”, Fig. 10C, ¶ 0217), the aerosol generator comprising a heater (“resistive heating element 35”, Fig. 7B, ¶ 0206) and being operable to generate an aerosol (“aerosol”, ¶ 0107) by vaporizing a liquid aerosol precursor (“aerosol forming solution (e.g., vaporizable material)”, ¶ 0106-0107), 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 (Figs. 10A-10C, ¶ 0217),
wherein a partition wall (partition wall formed by one of the “heater contacts 33”, Fig. 7B, ¶ 0206) is provided between the aerosol generator and air inlet passage (Fig. 10A), in use the partition wall being heated by the heater of the aerosol generator (¶ 0208) and thereby heating the air in the air inlet passage before entraining the aerosol (¶ 0217), and
wherein the partition wall is formed at least in part by an electrical contact for the heater (the partition wall is the heater contact, ¶ 0208),
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 heater contact, the total thickness of the partition wall is defined by the electrical contact to the heater, ¶ 0208).
Hatton further discloses wherein the partition wall presents a heat-absorbing surface to the heater (portion of the surface of “heater contacts 33” that faces “resistive heating element 35” in “heater inlet 53” that is not blocked by the portion of “fluid storage compartment 32”as shown in Fig. 9; “The first pair of heater contacts 33 may be a heat sink that absorbs and dissipates excessive heat produced by the resistive heating element 35.”, ¶ 0208). Hatton 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, Hatton teaches that “heater contacts 33 may be a heat shield that protects the heater chamber from excessive heat produced by the resistive heating element 35” (¶ 0208). The efficacy of heater contacts 33 for this result depends on the area of the heat-absorbing surface of heater contacts 33. If the area of the heat-absorbing surface is too small, then heater contacts 33 will not be able to absorb enough heat to protect heater enclosure 36 as a heat shield. 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)).
Hatton further discloses wherein the partition wall presents a heat-transmitting surface to the air inlet passage (surface of “heater contacts 33” that faces the air inlet passage shown in Fig. 10A, ¶ 0217; “The first pair of heater contacts 33 may be a heat sink that absorbs and dissipates excessive heat produced by the resistive heating element 35.”, ¶ 0208).
Hatton further discloses wherein the area of the heat-transmitting surface is larger than the area of the heat-absorbing surface (the interior surface of “heater contacts 33” is partially blocked by the portion of “fluid storage compartment 32” that it is affixed to, limiting the area of the heat-absorbing surface to the portion of the interior surface of “heater contacts 33” that is uncovered at “heater inlet 53”; therefore, the area of the heat-absorbing surface is smaller than the area of the heat-transmitting surface of “heating contacts 33” facing the air inlet passage which includes the entirety of the exterior facing surface of “heating contacts 33”; see Fig. 9).
With regard to the area of the heat-transmitting surface of the partition wall being at least 15 mm2, because the area of the heat-transmitting surface of the partition wall is greater than the area of the heat-absorbing surface of the partition wall (as discussed above) and the area of the heat-absorbing surface is at least 15 mm2 (as discussed above), the area of the heat-transmitting surface is greater than 15 mm2.
Claims 1 and 5-6 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’”, ¶ 0094) is provided between the aerosol generator and air inlet passage (compare to Fig. 15), 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 (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 (surface of “flow diverter 100” that faces the air inlet passage in Fig. 17).
Tucker further discloses wherein the area of the heat-transmitting 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 heat-transmitting 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).
With regard to the area of the heat-transmitting surface of the partition wall being at least 15 mm2, because the area of the heat-transmitting surface of the partition wall is greater than the area of the heat-absorbing surface of the partition wall (as discussed above) and the area of the heat-absorbing surface is at least 15 mm2 (as discussed above), the area of the heat-transmitting surface is greater than 15 mm2.
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 the 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 the air inlet to the outlet bypasses the aerosol generator (“a substantial portion of the airstream entering the channel 110 bypasses the heater 14”, ¶ 0100).
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747