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 1-15 are pending. Claim 1 has been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 4/8/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive.
Applicant argues that Hatton in view of Daryani does not disclose the newly added limitation that that heat insulating gap define an air inlet passage because in Hatton “the aerosol passage bypasses the area of said gap”. This argument is not persuasive as Applicant did not claim that the heat insulating gap comprises an air inlet passage. Instead, claim 1 only requires that the heat insulating gap “defines an air inlet passage”. As the heat insulating gap forms a lateral boundary of the air inlet passage, the heat insulating gap of Hatton “defines an air inlet passage”.
Applicant further argues that the persons having ordinary skill in the art would not be motivated to modify Hatton. This argument is not persuasive as modifying Hatton in view of Daryani is an obvious design choice, as discussed in the rejection below.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hatton et al. (US 2019/0104767 A1) in view of Daryani (US 2018/0343921 A1).
Regarding claim 1, Hatton discloses a smoking substitute apparatus (“opened cartridge 30a”, Fig. 5, ¶ 0196) comprising an enclosure (“heater enclosure 36”, Fig. 9, ¶ 0206) and an aerosol generator (combination of “wick 34” and “resistive heating element 35”, Fig. 9 , ¶ 0206), the enclosure at least partially enclosing the aerosol generator (Fig. 9), the aerosol generator comprising a heater (“resistive heating element 35”, Fig. 9 , ¶ 0206) and a wick (“wick 34”, Fig. 9 , ¶ 0206) disposed in a vaporization chamber (“heater chamber 37”, Fig. 9, ¶ 0199), the aerosol generator being operable to generate an aerosol (“aerosol”, ¶ 0107) by vaporizing an aerosol precursor (“aerosol forming solution (e.g., vaporizable material)”, ¶ 0106-0107), the aerosol precursor being stored in a reservoir (“fluid storage compartment 32”, Fig. 9, ¶ 0202), the apparatus further comprising a passage (aerosol passage which begins where the aerosol precursor is vaporized at the aerosol generator, “wick 34” and “resistive heating element 35”, and ends at the outlet, “aerosol outlets 47”, see Figs. 10A-10C, ¶ 0217) downstream of the aerosol generator (see Figs. 10B-C) configured to conduct said aerosol in an airflow to an outlet (“aerosol outlets 47”, Fig. 10C, ¶ 0217) wherein at least part of the enclosure adjacent to the heater is formed from plastics material (“such recyclable plastic materials as polypropylene”, ¶ 0226), there being provided a heat shield (“heater contacts 33”, Fig. 9, ¶ 0206, “heater contacts 33 may be a heat shield that protects the heater chamber from excessive heat produced by the resistive heating element 35”, ¶ 0208) between said part of the enclosure and the heater (Fig. 9) and there being a heat insulating gap between said part of the enclosure and the heat shield (corresponding to the air gap in Fig. 7C below, annotated by examiner);
wherein the heat insulating gap defines an air inlet passage (as air enters into the passage between “heater contacts 33” in Fig. 9, the passage is an air inlet passage; as this passage is bounded on its side by the heat insulating gap, the heat insulating gap defines this air inlet passage; see Fig. 7C below, annotated by examiner); and
wherein the vaporization chamber is at least partially defined by the reservoir (the vaporization chamber, “heater chamber 37”, is sized to fit over and directly contact the reservoir, “fluid storage compartment 32”, and as such the vaporization chamber is at least partially defined by the reservoir, Fig. 9, ¶ 0222).
However, Hatton does not disclose wherein the reservoir annularly surrounds the passage downstream of the aerosol generator. Instead, the passage downstream of the aerosol generator goes along the outside of the reservoir (see arrows indicating airflow in Fig. 10C).
Daryani, in the same field of endeavor, teaches that the passage downstream of an aerosol generator (“heating element 28” and “wick 30”) of a smoking substitute apparatus (“electronic smoking device 10”) configured to conduct aerosol in airflow to an outlet (“air inhalation port 36”) can have multiple configurations, including wherein the passage downstream of the aerosol generator goes along the outside of a reservoir (“air passage 31” around “liquid reservoir 234”, Fig. 3, ¶ 0038) and wherein a reservoir annularly surrounds the passage (“air passage 32” through “liquid reservoir 134”, Fig. 2, ¶ 0037). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the passage downstream of the aerosol generator taught by Hatton such that the reservoir annularly surrounds the passage downstream of the aerosol generator, as taught by Daryani, as choosing this configuration is an obvious matter of design choice (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); MPEP § 2144.04(VI)(C)).
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Figure 7C of Hatton, Annotated by Examiner
Regarding claim 2, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the heat shield has a contact portion (“contact tips 33a”, Fig. 9, ¶ 0203) which is in contact with the enclosure (“plates . . . may be attached by other common means such as compression beneath the enclosure 36”, Fig. 9, ¶ 0203).
Regarding claim 3, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 2, as stated above. Hatton further discloses wherein the contact portion has a surface area smaller than one quarter of a total surface area of the heat shield (Fig. 9).
Regarding claim 4, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 2, as stated above. Hatton further discloses wherein the heat shield has a region proximal to the heater (region of “heater contacts 33” comprising flat plates on either side of “resistive heating element 35”, Fig. 9) and a region distal to the heater (region of “heater contacts 33” comprising “contact tips 33a” that is separated from the region of “heater contacts 33” that is proximal to “resistive heating element 35” by “thin cut-out 33b”, Fig. 9), the contact portion being in the region distal to the heater (Fig. 9).
Regarding claim 5, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 2, as stated above. Hatton further discloses wherein the contact portion includes an end part of the heat shield (“contact tips 33a” comprise the ends of “heater contacts 33” that extend out of “heater enclosure 36”, Fig. 9).
Regarding claim 6, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the heat shield is fitted to the enclosure so as to restrict movement between the heat shield and the enclosure (“plates . . . may be attached by other common means such as compression beneath the enclosure 36”, Fig. 9, ¶ 0203).
Regarding claim 7, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the heat shield provides an electrical connection between the heater (free ends of “resistive heating element 35” are in communication with “heater contacts 33”, Fig. 9, ¶ 0206) and an electrical contact (“second heater contacts 22”, Fig. 6C, complete a circuit with “contact tips 33a” of “heater contacts 33”, Fig. 9, ¶ 0196) configured to connect with a power supply (“battery 23”, Fig. 6B, “the battery supplies power to the second heater contact”, ¶ 0246).
Regarding claim 8, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton does not explicitly disclose the thickness of the heat insulating gap to determine if the heat insulating gap has a thickness of no more than 0.5 mm. 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 thickness of the heat insulting gap between heater contacts 33 and heater enclosure 36. If the gap is too thin, then heater contacts 33 will provide excess heat to heater enclosure 36 rather than protecting heater enclosure 36 as a heat shield. If the gap is too thick, then there will not be enough room in the device for components such as the 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 thickness of the heat insulating gap 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)).
Regarding claim 9, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the heat shield is formed of a material selected from metals, thermosetting polymers and ceramics and composites thereof (“copper alloy or another electrically conductive material”, ¶ 0203).
Regarding claim 10, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the heat shield presents to the heater a heat-absorbing surface having an area of at least twice as large as a plan view projection of the heater onto the heat shield (Fig. 9).
Regarding claim 11, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 10, as stated above. Hatton does not explicitly disclose the area of the heat-absorbing surface of the heat shield to determine if it is at least 20 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)).
Regarding claim 12, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein there are provided first and second heat shield plates disposed on opposing sides of the heater (first and second “heater contacts 33” disposed on opposing sides of “resistive heating element 35”, Fig. 9).
Regarding claim 14, Hatton in view of Daryani teaches a smoking substitute apparatus according to claim 1, as stated above. Hatton further discloses wherein the enclosure includes an air inlet (“heater inlet 53”, Fig. 10A, ¶ 0217) and an outlet (“air path 55” into “primary condensation chamber 45”, Fig. 10C, ¶ 0217), and wherein the heat shield is configured to heat air entering the enclosure through the air inlet (¶ 0217).
Regarding claim 15, Hatton in view of Daryani teaches a 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 the base unit together forming a smoking substitute system (“compact electronic device 10”, Fig. 5, ¶ 0196).
Alternatively regarding claim 1, Hatton discloses a smoking substitute apparatus (“cartridge 30”, Fig. 7A, ¶ 0193) comprising an enclosure (“protective cap 38”, Fig. 7B, ¶ 0224, which corresponds to “end 49”, Fig. 9, ¶ 0206) and an aerosol generator (combination of “wick 34” and “resistive heating element 35”, Fig. 9 , ¶ 0206), the enclosure at least partially enclosing the aerosol generator (Figs. 7A and 7B), the aerosol generator comprising a heater (“resistive heating element 35”, Fig. 9 , ¶ 0206) and a wick (“wick 34”, Fig. 9 , ¶ 0206) disposed in a vaporization chamber (“heater chamber 37”, Fig. 9, ¶ 0199), the aerosol generator being operable to generate an aerosol (“aerosol”, ¶ 0107) by vaporizing an aerosol precursor (“aerosol forming solution (e.g., vaporizable material)”, ¶ 0106-0107), the aerosol precursor being stored in a reservoir (“fluid storage compartment 32”, Fig. 9, ¶ 0202), the apparatus further comprising a passage (aerosol passage which begins where the aerosol precursor is vaporized at the aerosol generator, “wick 34” and “resistive heating element 35”, and ends at the outlet, “aerosol outlets 47”, see Figs. 10A-10C, ¶ 0217) downstream of the aerosol generator (see Figs. 10B-C) configured to conduct said aerosol in an airflow to an outlet (“aerosol outlets 47”, Fig. 10C, ¶ 0217) wherein at least part of the enclosure adjacent to the heater is formed from plastics material (“such recyclable plastic materials as polypropylene”, ¶ 0226), there being provided a heat shield (“heater contacts 33”, Fig. 9, ¶ 0206, “heater contacts 33 may be a heat shield that protects the heater chamber from excessive heat produced by the resistive heating element 35”, ¶ 0208) between said part of the enclosure and the heater (Fig. 9) and there being a heat insulating gap between said part of the enclosure and the heat shield (corresponding to the air gap in Fig. 7C below, annotated by examiner);
wherein the heat insulating gap defines an air inlet passage (as air enters into the passage between “heater contacts 33” in Fig. 9, the passage is an air inlet passage; as this passage is bounded on its side by the heat insulating gap, the heat insulating gap defines this air inlet passage; see Fig. 7C below, annotated by examiner); and
wherein the vaporization chamber is at least partially defined by the reservoir (the vaporization chamber, “heater chamber 37”, is sized to fit over and directly contact the reservoir, “fluid storage compartment 32”, and as such the vaporization chamber is at least partially defined by the reservoir, Fig. 9, ¶ 0222).
However, Hatton does not disclose wherein the reservoir annularly surrounds the passage downstream of the aerosol generator. Instead, the passage downstream of the aerosol generator goes along the outside of the reservoir (see arrows indicating airflow in Fig. 10C).
Daryani, in the same field of endeavor, teaches that the passage downstream of an aerosol generator (“heating element 28” and “wick 30”) of a smoking substitute apparatus (“electronic smoking device 10”) configured to conduct aerosol in airflow to an outlet (“air inhalation port 36”) can have multiple configurations, including wherein the passage downstream of the aerosol generator goes along the outside of a reservoir (“air passage 31” around “liquid reservoir 234”, Fig. 3, ¶ 0038) and wherein a reservoir annularly surrounds the passage (“air passage 32” through “liquid reservoir 134”, Fig. 2, ¶ 0037). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the passage downstream of the aerosol generator taught by Hatton such that the reservoir annularly surrounds the passage downstream of the aerosol generator, as taught by Daryani, as choosing this configuration is an obvious matter of design choice (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); MPEP § 2144.04(VI)(C)).
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Figure 7C of Hatton, Annotated by Examiner
Regarding claim 13, Hatton discloses a smoking substitute apparatus according to claim 1, as stated in the alternate rejection of claim 1 above. Hatton further discloses that the enclosure is sealed to air flow asides from an outlet (the outlet being the open side of the enclosure as seen in Fig. 7B, all other regions of the enclosure being sealed).
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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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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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