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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/21/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 01/21/2026.
Claims 1-13, 17, and 28 are pending.
Claims 1 and 17 are amended.
Claims 14-16 and 18-27 are cancelled.
Response to Arguments
Applicant' s arguments, see pages 5-9, filed 01/21/2026, with respect to the rejection of claim 1 under 35 U.S.C. 102 have been fully considered and are not persuasive.
On pages 5-6, the Applicant argues that Worm does not disclose features (i), (ii), and (iii).
The Examiner respectfully disagrees.
The Examiner notes that features (i) and (iii) are optional limitations and Worm is not required to teach these features.
The amendments made to claim 1 does not overcome the previous prior art rejection and has optional claim language. Specifically, “wherein the controller can be configured to direct a particular movement in response to a particular change in operational parameter” because “can be” is an optional limitation and therefore the amendment is not a requirement of claim and thus not persuasive (i).
Worm does not have to disclose “wherein movement between the first and second position comprises rotation and/or translation of that portion of the mouthpiece relative to the mouthpiece as a whole in response to the controller detecting a change in one or more operational parameters of the device” because it is an optional limitation as the following line reads “or of the whole of the mouthpiece relative to the device in response to the controller detecting a change in one or more operational parameters of the device.” Since Worm discloses the whole of the mouthpiece is moved relative to the device, Worm discloses the requirements of the claim (iii).
In regards to (ii), Worm does indeed teach “wherein at least a portion of the mouthpiece is configured to move between respective first and second positions in response to the controller detecting a change in one or more operational parameters of the device” as explained in the advisory action dated 01/07/2026 and further discussed below.
On pages 6-7, the Applicant further argues that releasing of the cartridge of Worm does not mean the cartridge is moved in response to the controller detecting a change in one or more operational parameters of the device and that no part of Worm discloses moving the mouthpiece in response to entering the code and that Worm merely teaches preventing movement of the cartridge before a code is entered (ii). The Applicant further argues that to state that Worm teaches moving the cartridge in response to the code being entered appears to go beyond what the skilled person would have objectively inferred from the reference without the benefit of improper hindsight reconstruction based on the currently claimed invention.
The Examiner respectfully disagrees.
Worm discloses "in some embodiments the aerosol delivery devices may include a lock mechanism that selectively allows for extension of the cartridge. For example, the lock mechanism may comprise a solenoid that allows the cartridge to move only when actuated. Further, the controller may require entry of a code or other information (e.g., a fingerprint or other biometric information) prior to actuating the solenoid to release the cartridge. Further in embodiments including automated actuators configured to extend the cartridge, the controller may prevent extension in a similar manner by, for example, disallowing operation of a motor and drive screw prior to entry of a code or other such information" ([0155]). Therefore, Worm does indeed teach a movable mouthpiece (since when the cartridge moves, the mouthpiece moves) in response to the controller detecting an operational parameter (i.e., actuation or entry of a code is a state of readiness of the device - an operational parameter). The mouthpiece is indeed movable in response to detecting an operational parameter. The controller is detecting a change in an operational parameter of the device and then movement of the device is permitted. The mouthpiece is still “configured to move” in response to detecting a change in an operational parameter in the device because the cartridge comprising the mouthpiece can move in response to the cartridge being unlocked ([0155]). Again, there is no requirement that this movement is automatic or the controller is only moving the mouthpiece.
Further, the claim is too broad to impart the structure the Applicant is arguing it imparts. The device merely detects an operational change and then the mouthpiece is movable in response to that change. There is no requirement of how that mouthpiece is then movable. For example, the user could see the change detected by the controller and then move the device/mouthpiece by hand and that would still read on claim 1. There is no requirement that the movement is automatic in response to the controller detecting a change or any language on how the mouthpiece must be moved. Therefore, Worm still teaches what is claimed and thus the rejection stands.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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, 9-11, and 28 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Worm et al. (US-20160050975-A1).
In regards to claim 1, Worm, directed to an aerosol delivery device including a movable cartridge and related assembly, discloses an aerosol delivery system comprising the aerosol delivery device configured to receive a reservoir substrate (i.e., aerosol forming substrate) ([0077]-[0079]).
The system comprising an outer housing 102, a mouthpiece 220, a power source, an atomizer 212 (i.e., aerosol generating component), and a controller 208 ([0077]-[0079]),
Wherein the cartridge 200 moves between an extended configuration and a retracted configuration, so that in the extended configuration the user may engage the mouthpiece with their lips, (the cartridge comprises the mouthpiece, so when the cartridge moves at least a portion of the mouthpiece is also configured to move between respective first and second positions) (Figure 21 and [0090]-[0092]).
The movement is controlled by an actuator wherein the actuator can be automated such that a lock mechanism is employed to prevent or enable movement of the cartridge. The lock mechanism prevents the movement unless the device has been actuated and the controller can further require entry of a code or other information prior to actuating the release of the cartridge (i.e., controller detecting a change in one or more operational parameters of the device) ([0155]).
The movement of the cartridge is a translational movement and thus the mouthpiece moves with it ([0019]).
The mouthpiece moves in response to the controller detecting a change in the readiness of the device (i.e., operational parameter) ([0155]).
The Examiner notes that “wherein the controller can be configured to direct a particular movement in response to a particular change in operational parameter” is an optional limitation and thus not required to be taught by Worm.
In regards to claim 2, Worm discloses the operational parameter depends on a lock mechanism that only allows the cartridge to move when actuated (i.e., an operational readiness state of the device) ([0155]).
In regards to claim 3, Worm discloses the operational readiness state includes the controller detecting whether the device is actuated, locked, or unlocked ([0155]).
In regards to claim 9, Worm discloses the cartridge, which comprises the mouthpiece, is removably engaged with the connector and replaceable (i.e., detachable from device) ([0015] and [0020]).
In regards to claim 10, Worm discloses the substrate retained within the outer body 216 (i.e., within the outer housing) ([0080]).
In regards to claim 11, Worm discloses the movement of the mouthpiece is done by one or more automated actuators connected to the controller and the power source ([0089] and [0155]).
In regards to claim 28, Worm discloses one of the positions of the mouthpiece during movement is an extended position and the other an extracted position ([0004]-[0007]).
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.
Claims 4-8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US-20160050975-A1) as applied to claims 1 and 2 and further in view of Campitelli et al. (WO-2019130128-A1, as cited in the IDS dated 03/04/2022).
In regards to claims 4, Worm discloses an operational parameter of the device as described in claim 1, but is silent regarding an operational parameter including the temperature of one or more components.
Campitelli, directed to a surface changing aerosol generating system, discloses an aerosol delivery system comprising an aerosol generating device, the device configured to receive an aerosol forming article and substrate (claim 1 and page 4, lines 18-21).
Campitelli further discloses an outer housing (claim 1), a mouthpiece 100 (page 14, lines 22-23), a power supply, a heating element (i.e., aerosol generating component) and control electronics (i.e., controller) (page 10, lines 17-32).
Campitelli further discloses at least one of the device and the article comprises a shape-changing element disposed on or in the housing. The control electronics (i.e., controller) are operably coupled to the shape changing element and are configured to cause the shape-changing element to change shape (i.e., configured to move between respective first and second positions) in response to the state of the device or the article detected by the sensor (page 3, lines 21-32).
Campitelli further discloses the shape-changing element may change the shape of the exterior surface of the aerosol generating device or the exterior surface of the aerosol-generating article (i.e., housing) in any suitable manner (page 5, lines 10-13) and changes depending on the temperature of the heating element (page 19, lines 16-24).
Campitelli further discloses the shape can return to its original shape (i.e., first position) during return to ambient temperature (i.e., operational parameter) (page 5, lines 28-30).
Campitelli discloses the operational parameter temperature, includes the aerosol forming substrate temperature (page 4, lines 25-27).
Campitelli further discloses activation of the heating element, causes the change in shape (page 19, lines 19-23) and a change in shape gives tactile feedback to the user so the user is informed on the state of the device (page 4, lines 5-8).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm, by adding an additional operational parameter that includes the temperature of the aerosol generating component, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches the shape changing element can change in response to a controller detecting a temperature of the substrate (page 4, lines 5-8), and this merely involves applying a known technique of using an additional operational parameter to effect a changing portion of a similar device to yield predictable results. It is noted that detecting an operational temperature of the substrate would also be an indication that the device is ready for use and thus one of ordinary skill would reasonably consider that using locking/unlocking parameter and a temperature of the aerosol generating component to cause the mouthpiece to move would be an obvious combination of operational parameters that can be used to indicate the readiness of the device and subsequently release of the mouthpiece.
In regards to claim 5, Worm discloses an operational parameter but is silent regarding an operational parameter including the power status of the power source includes the age of the power source, the voltage of the power source, or the number of charge cycles.
Campitelli discloses the user can be informed of the battery level of the device so that the user may plan when to charge the battery in relation to the time they plan on using the device (page 1, lines 15-18).
Campitelli further discloses the change in shape may be in response to any suitable state of the aerosol generating device or article, for example a response to a change in charge level (i.e., operational parameter) (page 5, lines 4-8).
Campitelli further discloses a sensor can be used to detect to the charge level or state of charge of a battery, and that the sensor can include an ammeter, a voltmeter (i.e., measures the voltage), a resistance meter, or the like (page 11, lines 18-21).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by adding an additional operational parameter that includes the power status of the device, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches the power status allows the user to stay informed and plan when to charge the battery (page 1, lines 15-18), and this merely involves applying a known technique of using an additional operational parameter to effect a changing portion of a similar device to yield predictable results. It is noted that detecting an operational power status of the device would also be an indication that the device is ready for use and thus one of ordinary skill would reasonably consider that using a locking/unlocking parameter and a power status of the device to cause the mouthpiece to move would be an obvious combination of operational parameters that can be used to indicate the readiness of the device and subsequently release of the mouthpiece.
In regards to claim 6, Worm discloses an operational parameter of the device but does not explicitly disclose a state of the aerosol forming substrate includes the presence of the aerosol forming substrate in the device.
Campitelli discloses the device may comprise a sensor to detect parameters associated with an aerosol generating article. For example, the type or aerosol-generating article, the brand of aerosol generating article, the flavor of material in the aerosol-generating article, the amount of aerosol forming substrate remaining, or the like may be detected. The device may obtain information regarding the aerosol generating article in any suitable manner (page 11, lines 22-25).
Campitelli further discloses the user may find it useful to have information regarding the aerosol generating substrate, flavor, or brand detected (page 2, lines 7-11).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by adding an additional operational parameter that includes an identifying characteristic of the aerosol forming substrate in the device, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches identifying characteristics are helpful information for the user (page 2, lines 7-11), and this merely involves applying a known technique of using an additional operational parameter to effect a changing portion of a similar device to yield predictable results. It is noted that detecting the presence of the aerosol forming substrate would also be an indication that the device is ready for use and thus one of ordinary skill would reasonably consider that using the locking/unlocking parameter and a readiness state (aerosol forming substrates presence in the device) of the device to cause the mouthpiece to move would be an obvious combination of operational parameters that can be used to indicate the readiness of the device and subsequently release of the mouthpiece.
In regards to claim 7, Worm discloses the device may sense the puff and the controller may direct current to the heating element when the puff is sensed ([0088]), but does not explicitly disclose a cumulative number of activations of the aerosol generating component being the operational parameter that causes movement of the mouthpiece portion of the device.
Campitelli discloses the heating element may be operably coupled to the controller of the device to control whether, how much, and when the aerosol generating component is heated to cause the change in shape or volume of the shape memory alloy (page 7, lines 21-23) and the aerosol generating component is operably coupled to the controllers and power supply (page 10, lines 27-29).
Campitelli further discloses a sensor, operably connected to the controller, can detect the number of puffs from a user (i.e., number of activations) or the amount of aerosol-forming substrate remaining to detect a state of the device (page 21, lines 21-24) and the device can provide this information to the user regarding the state of the article (page 4, lines 10-15).
Campitelli further discloses the controller are coupled to the shape changing element and are configured to cause the change in shape in response to the state of the device (i.e., the number of activations of the aerosol generating component is an operational parameter of the device) (page 3, lines 24-32).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by adding an additional operational parameter that includes the number of activations of the aerosol generating component, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches the number of activations detected is useful information for the user (page 4, lines 10-15), and this merely involves applying a known technique of using an additional operational parameter to effect a changing portion of a similar device to yield predictable results. It is noted that detecting the cumulative number of aerosol generation activations would also be an indication of whether or not the device is ready for use and thus one of ordinary skill would reasonably consider that using the locking/unlocking parameter and a readiness state (number of cumulative aerosol activations) of the device to cause the mouthpiece to move would be an obvious combination of operational parameters that can be used to indicate the readiness of the device and subsequently release of the mouthpiece.
In regards to claim 8, Worm discloses the controller controls the movement of the mouthpiece and outer housing configured to move between respective first and second positions in response to the controller detecting a change in one operational parameter ([0155]), but does not explicitly disclose more than one operational parameters of the device.
Campitelli discloses the change of shape of the outer housing and the mouthpiece from the first and second positions can inform the user of information regarding the state of the device or associated article through tactile feedback, without having to view the article (page 3, lines 23-32).
Campitelli further discloses the controller is operably connected to one or more sensors configured to detect a state of the device, thus the sensors detect different operational parameters. The controller activates at least one shape changing element of the external housing in response to the state detected by a sensor (page 11, lines 10-12, page 14, lines 20-26 and page 21, lines 3-5).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by adding additional operational parameters that the controller detects, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches additional sensors to detect the state of the device (page 14, lines 20-26), and this merely involves applying a known technique of using an additional operational parameter to effect a changing portion of a similar device to yield predictable results. It is noted that additional operational parameters would also be an indication that the device is ready for use and thus one of ordinary skill would reasonably consider that using the locking/unlocking parameter and at least one additional operational parameter to control the mouthpiece to move would be an obvious combination of operational parameters that can be used to indicate the readiness of the device and subsequently release of the mouthpiece.
In regards to claims 12-13, Worm discloses the slider of the actuator changes shape based on a shape of a surrounding structure ([0129]), but does not explicitly disclose the mouthpiece comprising a shape memory material.
Campitelli discloses the mouthpiece comprising the shape changing element (page 14, lines 20-26 and page 21, lines 3-5) and the shape changing element comprises a shape memory alloy (page 5, lines 24-26).
Campitelli further discloses a shape memory alloy allows the shape to change to give the user a tactile cue regarding the state of the device and then to return to its original state when the temperature returns to an ambient temperature (page 5, lines 21-31).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by making the mouthpiece further comprise a shape memory material, as taught by Campitelli, because both are directed to electronic cigarettes with shape changing elements, Campitelli teaches the shape memory alloy allows the shape changing element to give a tactile cue to the user on a state of the device (page 5, lines 21-31), and this merely involves applying a known material in the art to a moving element of a similar device to yield predictable results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US-20160050975-A1) as applied to claim 1 above.
In regards to claim 17, Worm discloses the controller can control the actuator based on the readiness of the device (i.e., operational parameter) to move into the extended position (i.e., particular movement) ([0155]). Worm further discloses the actuator can be automated such as by a motor and a lead screw to extend and retract the cartridge and that the controller can require entry of a code prior to actuating a solenoid to release the cartridge ([0155]).
Worm does not explicitly disclose the controller is configured to direct a particular movement in response to a particular change in operational parameter. However, Worm does disclose embodiments with automated actuators controlled by controllers, wherein the actuators move the cartridge comprising the mouthpiece ([0155]), therefore it would be obvious to one of ordinary skill in the art that the scope of Worm would include a controller configured to direct a particular movement, and the controller controls the actuator to perform an automated movement in response to an operational parameter such as an entry of code, and is therefore considered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755