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 .
Status of Claims
Claims 32-46 are pending. Claims 1-31 are cancelled. Claims 45-46 are withdrawn.
Response to Amendment
The Response of 12/17/2025 is entered. The amendment to the Specification overcomes the objection to the Specification, and thus the objection to the Specification is withdrawn. The claims were not amended by the Response.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive. Applicant states that to establish a prima facie case of obviousness under 35 USC 103(a), “the references must teach or suggest all of the claimed limitations to one of ordinary skill of the art”. Examiner believes that Applicant is applying an obviousness analysis that is too narrow, and rejected by the Supreme court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 82 USPQ2d 1385, 1396 (2007). A "motivation to combine may be found explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill." Zup v. Nash Mfg., 896 F.3d 1365, 1371, 127 USPQ2d 1423, 1427 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 [107 USPQ2d 1706] (Fed. Cir. 2013) (citing Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 [92 USPQ2d 1849] (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418-21)). MPEP 2143.01 Suggestion or Motivation to Modify the References. Applicant then seeks to read the Li reference in a narrow manner, to avoid disclosures that read on the claimed limitations.
Applicant argues three deficiencies in Li and asserts that because of these deficiencies, the claimed invention is not obvious in light of Li. The question of obviousness does not require that each limitation be present in a reference, or that the motivation to modify the reference be present in the reference, only that one of ordinary skill would be motivated to modify the reference to arrive at the claimed invention before the effective filing date, without the use of impermissible hindsight.
Applicant argues that Li does not disclose a window, and certainly not a plurality of windows, Response, pg 8 lines 1-2. Applicant is reading Li far too narrowly and neglecting ordinary modifications that one of ordinary skill in the art would make, which are provided for by the MPEP. Li discloses:
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At least a portion of the pre-vapor formulation tank may have a transparent wall, reasonably suggests more than one portion may have a transparent wall. This reasonably discloses multiple viewing portions, considered to meet the limitation of a plurality of windows. Including multiple windows is considered an aesthetic design choice, MPEP 2144.04 I. Aesthetic Design Changes, and would be additionally obvious to one of ordinary skill in the art as a modification that would result in improved visibility into the reservoir to determine liquid levels, MPEP 2144.04 VI. B. Duplication of Parts. Applicant argument that the Li reference must explicitly provide a teaching for a plurality of windows is unpersuasive, given the reference suggests more than one may be present by disclosing at least a portion may have a transparent wall.
Applicant argues that Li does not disclose a mouthpiece comprising any windows, Remarks pg 8 lines 2-3. Applicant again narrowly reads the disclosure of Li and argues that the flavor insert of Li is the only disclosed mouthpiece, arguing Li cannot be used without the flavor insert, and thus the proposed modified use of Li does not render a mouthpiece with a plurality of windows obvious.
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The prior Non-Final rejection of 09/18/2025 asserted that the device could be used in the absence of the flavor insert. Applicant would require that the reference suggest this alternate use and without such explicit disclosure and concludes that such a use would not be obvious. Examiner respectfully disagrees.
Li explicitly discloses that the pre-vapor formulation may include nicotine, ([0012], [0103]). Nicotine is, of course, notoriously well-known to be highly addictive. The flavor insert is not disclosed as explicitly required in the embodiment illustrated by Fig 2B, ([0129]-[0130]). The language in the reference suggests that the intended use is with a flavor insert, but uses the language “if and/or when the flavor insert is inserted”, ([0129]). By adding the word “if”, it is suggested that the flavor insert does not actually need to be present.
Applicant points to paragraph ([0080]) as clear support that the flavor insert is required and suggests that it would be dangerous to a user to operate the device without the flavor insert, Remarks pg 10 1st full paragraph.
Review Li, ([0079]-[0080],[0086]):
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Li discloses that the configuration of the flavor insert to cool the generated vapor is provided for embodiments illustrated by Figs 1A-C. There is no disclosure of this effect being present in the embodiment of Fig 2B. Additionally, Li does not suggest that the cooling is required to avoid dangerous temperature conditions as asserted by Applicant, but rather an improvement in sensory experience. This does not suggest the flavor insert is required, but rather that it would be only preferred. The entire disclosure of Li was reviewed for elements that suggest the device requires the flavor insert to operate, such as a flavor insert detection sensor or other means that would prevent the device from providing nicotine laden vapor to a user, without the flavor insert. No such disclosure was found.
A user, in the absence of having a flavor insert, would be capable of putting the end of the device to their lips and consume a generated aerosol, rendering the end of the device a mouthpiece. This usage may not be preferred but is considered a reasonable interpretation of how the device would be used in practice, to obtain nicotine if the flavor insert were spent, forgotten, or otherwise missing, given the addictiveness of nicotine. Applicant arguments otherwise are not persuasive.
The reservoirs depicted in Fig 2B, ref 23, incline toward the end of the device which would reasonably function as a mouthpiece, as explained above. One of ordinary skill in the art would reasonably modify the device of Li to provide windows in this location, to provide viewable areas to allow a user to adequately determine the liquid level in the reservoir. Other embodiments suggest at least one portion where the liquid level of the reservoir may be viewed, which reasonably suggests more than one. Even if the reference only disclosed one, the addition of multiple windows is the kind of modification to a device that is considered within the ordinary skill of the art based on sections from the MPEP 2144.04 I, Aesthetic Design Changes, and MPEP 2144.04 VI. B. Duplication of Parts, discussed above. Applicant assertions regarding hindsight are not persuasive. The reference discloses at least one transparent portion, which meets the limitation requiring a window and further renders obvious using a plurality of windows, especially when considering the types of modifications considered to be obvious to one of ordinary skill in the art as provided by MPEP 2144.04.
Applicant further argues that to the extent any transparent window was included in Li, it must be provided at the location of the graduation marks (as depicted in the Figures), and thus would not be placed on an inclined portion of the cartridge, Remarks pg 11 3rd full paragraph.
Fig 2B of Li does not depict any windows or graduation marks. However, one of ordinary skill in the art would be able to incorporate windows, suggested to provide viewing into the reservoir, to determine the remaining amount of liquid precursor. Li also discloses graduation marks to aid in a more accurate assessment of the amount of liquid precursor, ([0050]). Applicant asserts that the window and graduation marks must be at the same locations as in the embodiment where they are depicted, such as Fig 1A or 1C. One of ordinary skill in the art would not be so limited. It is considered a reasonable, ordinary, and obvious modification, to move the windows and graduations for viewing into the reservoir to any location, such that viewing into the reservoir was possible. This is well within the guidance from the MPEP 2144.04 regarding modifications, which include modifications for MPEP 2144.04 I, Aesthetic Design Changes and also MPEP 2144.04 VI, Rearrangement of Parts. Relocating the windows and graduations would not have modified the operation of the device. Additionally, one of ordinary skill in the art would have recognized that by providing windows and graduations towards the tapered end of the device, a more accurate remaining amount of the liquid precursor could be determined because of the shape of the reservoir. Applicant argues that the embodiments where the window and graduations are depicted teach away from such a configuration. This is not persuasive. To teach away, the reference must actively disparage the modification. Here there is no basis upon which one of ordinary skill in the art would be discouraged from making such a modification or believe such a modification would not work.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 32-40 and 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2018/0007966 A1).
Regarding claim 32, Li discloses:
A cartridge for an aerosol provision system, ([0040]), the cartridge comprising: a reservoir, ([0128]; Fig 2B ref 23), for containing aerosolizable material for vaporizing;
a vaporizer, ([054] Fig 1B ref 34, [0118] explaining the embodiments of Fig 2B are compatible with the other depicted embodiments of Figs 1A-C)), for vaporizing the aerosolizable material to generate vaporized aerosolizable- material, the vaporizer being located in an aerosol generation region, ([0062]-[0064] Fig 1B ref 14);
an air channel ([0056]-[057] air inlet port(s) ref 44, channel ref 14, interior space 10, inner tube 25, see Fig 1B and Fig 2B) , extending from an air inlet, (Fig 1B ref 44) for the cartridge to an outlet, (Fig 2B); wherein the air channel comprises a first portion, (Fig 2B corresponding to passage ref 25 extending to ref 34 see Fig 1B), for receiving vaporized aerosolizable-material, extending from the outlet;
a seal, ([047]; Fig 1B ref 8, 15) located between the first portion of the air channel and the aerosol generation region, wherein the seal is located between the first portion of the air channel and the vaporizer;
wherein the reservoir is annular, and the first portion of the air channel is at least partially surrounded by the reservoir, ([047], [0126]-[0128] Fig 2B);
wherein the first portion of the air channel extends between the aerosol generation region and the outlet, (Fig 1B as modified by Fig 2B), and wherein the first portion of the air channel is integrally formed with the outlet, ([0128]; Fig 2B);
wherein the cartridge further comprises an aerosolizable-material-level observation means for allowing a user to observe a level of aerosolizable material inside the reservoir, ([0050] Fig 1A ref 71); wherein the aerosolizable-material-level observation means comprises a portion of the cartridge, ([0040] Fig 1, ref 71 is part of section 70, described as replaceable).
Although Li discloses a tobacco insert that is intended for use as a mouthpiece, the proximal end of the cartridge is capable of being used as a mouthpiece by a user in the absence of a tobacco insert, and thus the limitation of a mouthpiece is considered met. Li discloses an embodiment where the cartridge tapers towards the outlet, (see Fig 2B). Li does not disclose that the portion of the cartridge comprises a plurality of windows which are inclined towards the outlet.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have modified the cartridge of Li to include a plurality of windows that are inclined towards the outlet. Li discloses that the entire outer housing may be transparent and/or translucent, ([0128] Fig 2B showing an incline towards the outlet), implying regions of both transparency and translucency. The decision to vary the level of transparency and translucency in areas of the housing to create the appearance of discrete viewing windows inclined towards the outlet is considered an aesthetic design change, MPEP 2144.04 I. Aesthetic Design Changes. One of ordinary skill in the art would have been motivated to provide multiple discrete areas of greater transparency in the housing, meeting the definition of a plurality of windows, to create an attractive, sleek, and aesthetically pleasing cartridge design for sale to consumers.
Regarding claim 33, modified Li discloses the cartridge of claim 32. Li discloses that the aerosolizable-material-level observation means comprise a plurality of opaque markings on the portion of the cartridge, wherein the portion of the cartridge is transparent or translucent, ([0050]).
Regarding claim 34, modified Li discloses the cartridge of claim 32. Li does not disclose that each window extends from a first position proximal to the outlet to a second position that is proximal the vaporizer.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have ensured that each window extends from a first position proximal to the outlet to a second position proximate to the vaporizer, because Li discloses that the function of the transparency is to allow visual indication of the remaining amount of pre-vapor formulation held within the reservoir, and windows that extend the entire length of the reservoir would allow visualization of the remaining amount of formulation across the range of volumes potentially present in the reservoir.
Regarding claim 35-36, and 42, modified li discloses the cartridge of claim 32. Li further discloses that the first portion is substantially straight and a tube, ([0043] tube meeting the limitation of tubular shape and an elliptical cross-section; Fig 2B, ref 25).
Regarding claim 37, modified Li discloses the cartridge of claim 32. Li further discloses the first portion extends a first distance from the outlet corresponding to at least a second distance equal to a corresponding dimension of the reservoir, (Fig 1B ref 25 Fig 2B ref 25, as depicted the distance (length) of the first portion ref 25 appears to extend at least a second distance equal to a corresponding dimension (length) of the reservoir).
Regarding claim 38, modified Li discloses the cartridge of claim 32. Although Li discloses a tobacco insert that is intended for use as a mouthpiece, the proximal end of the cartridge is capable of being used as a mouthpiece by a user in the absence of a tobacco insert, thus Li discloses a first end proximal to the outlet of the cartridge, (Fig 2B), and a second end proximal to the vaporizer (Fig 1B).
Regarding claim 39, modified Li discloses the cartridge of claim 32. Li further discloses the first portion of the air channel is located between the vaporizer and the outlet, (Fig 1B and 2B).
Regarding claim 40, modified Li discloses the cartridge of claim 32. Li further discloses the seal stretched around the first portion of the air channel, ([0047] Fig 1B ref 15).
Regarding claim 43, modified Li discloses the cartridge of claim 32. Li further discloses the reservoir contains the aerosolizable material for vaporizing, ([0047).
Regarding claim 44, modified Li discloses the cartridge of claim 32. Li further discloses the outlet comprises a mouthpiece outlet, (Fig 2B, Although Li discloses a tobacco insert that is intended for use as a mouthpiece, the proximal end of the cartridge is capable of being used as a mouthpiece by a user in the absence of a tobacco insert, and thus the limitation of a mouthpiece is considered met).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over over Li et al. (US 2018/0007966 A1), as applied to claim 32 above, and further in view of Ampolini et al. (US 2017/0071249 A1).
Regarding claim 41, modified Li discloses the cartridge of claim 32. Harden does not disclose that the seal comprises one or more internal circumferential ridges which engage against the first portion of the air channel.
Ampolini teaches an aerosol delivery device that uses a liquid precursor contained in a reservoir, ([0004]). Ampolini teaches including ridges in a seal to cause/improve a compression fit between components, ([0056]; Fig 7).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Harden according to the teachings of Ampolini, to have included circumferential ridges on the sleeve/seal of Harden, to improve the seal between the tube wall 144 and the sleeve 154.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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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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/D.E.V./Examiner, Art Unit 1747 /KATHERINE A WILL/Primary Examiner, Art Unit 1747