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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 04/27/2026.
Claims 1-13, and 28 are pending.
Claims 1 is amended.
Claims 14-27 are cancelled.
Response to Arguments
Applicant' s arguments, see pages 5-10, filed 04/27/2026, with respect to the rejection of claim 1 under 35 U.S.C. 102 have been fully considered and are not persuasive.
On pages 6-8, the Applicant argues that the controller of Worm merely makes the cartridge movable but does not direct that movement and that the controller unlocks a solenoid in order to permit the cartridge to be moved which differs from the controller directing the movement as claimed.
The Examiner respectfully disagrees. The claim requires the controller direct a “particular movement” in response to the operational parameter but does not define a particular movement in the claims. The claim amendment is broad and the particular movement is not required to be the movement of the mouthpiece as detailed in claim 1, therefore the controller unlocking a solenoid can clearly be a “particular movement”. Furthermore, the controller directing electrical power from the power source to the cartridge to heat the aerosol precursor composition ([0169]) or the controller executing computer-readable code ([0163]) are all examples of a “particular movement” and therefore the arguments are not persuasive.
Furthermore, the Examiner notes that Worm still makes obvious the mouthpiece is moveable by the controller because Worm discloses “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]). Since Worm teaches automated actuators that are controlled by the controller it would in fact be obvious that Worm teaches a movement directed by a controller of the cartridge and is therefore considered prima facie obvious. The controller controls the actuator which is responsible for movement of the cartridge and therefore it would be obvious to one of ordinary skill in the art that the controller directs movement of the cartridge when the actuator is an automatic actuator.
The Examiner notes that a call was made to John Johnson on 06/01/2026 to discuss amendments to potentially expedite an allowance but no response was received.
The following is a modified rejection based on the amendments.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-3, 9-11, and 28 are rejected under 35 U.S.C. 12(a)(1) and 102(a)(2) as being anticipated by Worm et al. (US-20160050975-A1) or in the alternative as being unpatentable over Worm.
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 controller unlocks the actuator (i.e., particular movement) in response to the user inputting a code to activate the device (i.e., operational parameter) ([0155]).
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]).
While Worm is considered to teach a particular movement, the Examiner further notes that Worm discloses “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]). Since Worm teaches automated actuators that are controlled by the controller it would be obvious to one of ordinary skill in the art that Worm teaches a movement directed by a controller of the cartridge and is therefore considered prima facie obvious. The controller controls the actuator which is responsible for movement of the cartridge and therefore it would be obvious to one of ordinary skill in the art that the controller directs movement of the cartridge when the actuator is an automatic actuator.
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.
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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MADELEINE P DELACRUZ/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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