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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/13/2026 has been entered.
Status of the Claims
Claims 1, 2 and 4-15 are pending.
Claims 1 and 12 have been amended.
Claims 3 and 16 remain cancelled.
Claims 2, 4, 5, 8, 10, 13 and 15 remain withdrawn.
Response to Arguments
Applicant's remaining arguments filed 7/13/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Applicant respectfully requests clarification of the discussion under the heading "Claim Interpretation." The Office Action initially states that claim limitations not using the word "means" or "step" are not being interpreted under 35 U.S.C. § 112(f) "except as otherwise indicated in an Office action." Claim 1 does not use either "means" or "step." Moreover, the Office Action does not thereafter expressly state that any particular limitation of claim 1 is being interpreted under § 112(f), identify any claim term as a generic placeholder substituted for "means," or identify corresponding structure and equivalents to which the scope of any limitation would be restricted.
MPEP § 2181(I) provides that "[a] determination that a claim is being interpreted according to 35 U.S.C. 112(f) should be expressly stated in the examiner's Office action." Accordingly, Applicant understands that no limitation of claim 1 is being interpreted under § 112(f). To the extent that the Office intended otherwise, Applicant respectfully traverses that interpretation and requests clarification of the record.
The Office Action next quotes portions of the Specification describing implementations in which the aerosol generating component is a heater and embodiments in which aerosol may be generated without heating, and states that this disclosure "serves to limit the broadest reasonable interpretation" of the limitation reciting "at least one aerosol generating component configured to perform an aerosolization process." That discussion does not establish that § 112(f) applies.
The threshold determination under § 112(f) must be made from the claim language. As MPEP § 2181 explains, application of § 112(f) "is driven by the claim language." Only after determining that a claim limitation invokes § 112(f) does the analysis proceed to identifying the claimed function and reviewing the Specification for corresponding structure. See MPEP § 2181. Beginning with exemplary structures described in the Specification and then using those structures to restrict the claim would reverse that required analysis.
The Specification may, of course, inform how a person of ordinary skill would understand the claim language. But absent a determination that § 112(f) applies, the claim is not limited to the corresponding structures disclosed in the Specification and equivalents thereof. See MPEP § 2181 ("absent a determination that a claim limitation invokes 35 U.S.C. 112(f), the broadest reasonable interpretation will not be limited to 'corresponding structure ... and equivalents thereof"). Nor should the exemplary heater and non-heating embodiments be imported into the claim as limitations. The quoted passages expressly refer to what occurs "[i]n some implementations" and "[i]n some embodiments," and therefore describe examples rather than a definition or clear disclaimer of other aerosol-generating structures.
In any event, the limitation "at least one aerosol generating component configured to perform an aerosolization process" does not invoke § 112(f). The relevant standard is whether the words of the claim would be understood by persons of ordinary skill in the art to have "a sufficiently definite meaning as the name for structure." MPEP § 2181(I). A term may satisfy that standard even when it encompasses a broad class of structures or identifies those structures by their function. Id.
"Aerosol generating component" readily satisfies that standard. A person of ordinary skill in the aerosol-provision art would be familiar with aerosol-generating components as a class of physical structures that act on aerosol-generating material to produce an aerosol. Such a person would understand the term as referring to known aerosol-generating structures-including heater- based and non-heating structures-rather than as a generic placeholder for unspecified "means."
The Office Action itself reflects this understanding. In applying John, the Office identifies John's heater 11 as the claimed "aerosol generating component," without suggesting that the term lacks structural meaning or that corresponding structure must first be supplied from Applicant's Specification. The Office Action also quotes the Specification as describing both heater-based and non-heating aerosol-generating components. Those disclosures illustrate members of the structural class denoted by the claim term; they do not establish that the term is nonstructural or restrict the claim to the particular examples disclosed.
The fact that "aerosol generating component" encompasses more than one type of structure does not alter the analysis. As MPEP § 2181 explains, terms such as "filters," "brakes," "clamp," "screwdriver," and "locks" may have sufficiently definite structural meaning even though they encompass broad classes of structures and may take their names from the functions they perform. "Aerosol generating component" likewise names a familiar class of structures to persons of ordinary skill in this art. No resort to the Specification is therefore necessary to supply structure absent from the claim.
Accordingly, the "aerosol generating component" limitation has sufficiently definite structural meaning and should be accorded its broadest reasonable interpretation in light of the Specification, rather than being limited under § 112(f) to particular disclosed structures and their equivalents.
Examiner Response A:
The Examiner respectfully disagrees. 35 U.S.C. § 112(f) is invoked for the limitation, “at least one aerosol generating component configured to perform an aerosolization process on one or more of the portions of aerosol generating material when the article is received in the receptacle” as described in the Claim Interpretation section. This serves to limit the broadest reasonable interpretation of the limitation. As explained in MPEP § 2181, subsection I, claim limitations that meet the three-prong test (quoted below) will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Prong (A) is met with the term “component”, a generic placeholder, Prong (B) is met with the phrase “configured to” and Prong (C) is met because the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Applicant Argument B:
As amended, claim 1 recites that "the control circuitry is configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by a respective increasing amount depending on increasing distance of the portion from the outlet." Thus, claim 1 requires more than merely selecting, activating, or heating different portions of aerosol generating material based on their position. Claim 1 requires the amount by which the respective portions aerosolize to increase as the distance of those portions from the outlet increases.
John does not disclose or suggest this limitation. The Office Action relies on John's disclosure that heater elements 11 a can be powered independently, including sequentially, and that the electrical power drawn by each heater element can be controlled to suit the individual heating requirements of recesses containing aerosol generating material. But independent or sequential powering of heater elements does not disclose that a plurality of respective portions of aerosol generating material aerosolize by respective increasing amounts depending on increasing distance from the outlet.
At most, John describes selecting which heater element or combination of heater elements is powered during a draw. John states that the heater elements can be powered sequentially, one per draw, such that aerosol and/or gas is generated on a consistent basis on each draw. That disclosure is inconsistent with the amended claim language, which requires a respective increasing amount of aerosolization depending on increasing distance from the outlet. A portion that is not active, or is not being aerosolized, cannot satisfy the requirement that the portion aerosolize by a respective increasing amount. Likewise, turning one heater off while turning another heater on does not disclose or suggest that multiple portions aerosolize by increasing amounts based on their increasing distance from the outlet.
The Office Action states that, because John independently heats respective portions of aerosol generating material, "it is inherent" that the controller heats respective portions based on position or location, and that this meets the limitation "depending on the distance from the outlet." Applicant respectfully disagrees. Even if John were understood to select heater elements based on their position or location, claim 1 does not merely require selection or heating based on position. Claim 1 requires that the amount of aerosolization increase with increasing distance from the outlet. The cited portions of John do not disclose that relationship.
John also does not disclose or suggest that more aerosol is generated from portions located farther from the outlet than from portions located closer to the outlet. Instead, John teaches independent, simultaneous, or sequential operation of heater elements, including operation intended to generate aerosol and/or gas on a consistent basis on each draw. Such operation does not anticipate, and would not render obvious, control circuitry configured to cause a plurality of respective portions of aerosol generating material to aerosolize by respective increasing amounts depending on increasing distance of those portions from the outlet.
Applicant Response B:
There appears to be a discrepancy between the Applicant’s arguments and the claimed limitations. The Applicant is stating that the claim states “more aerosol is generated from portions located farther from the outlet than from portions located closer to the outlet” and that multiple portions of the aerosol generating material are generating aerosol, however this is not supported by the claim language.
One portion that is not heated and another portion that is heated, sequentially, meets the claim limitation because the only requirement is “to aerosolize by a respective increasing amount depending on increasing distance of the portion from the outlet”.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In this instance, the original disclosure states “In some implementations, the aerosol generating component is a heater capable of interacting with the aerosolisable material so as to release one or more volatiles from the aerosolisable material to form an aerosol. In some embodiments, the aerosol generating component is capable of generating an aerosol from the aerosolisable material without heating. For example, the aerosol generating component may be capable of generating an aerosol from the aerosolisable material without applying heat thereto,” which serves to limit the broadest reasonable interpretation of the limitation “at least one aerosol generating component configured to perform an aerosolization process on one or more of the portions of aerosol generating material when the article is received in the receptacle”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim states that “the control circuitry is configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by a respective increasing amount depending on increasing distance of the portion from the outlet.”
The specification has support for “the control circuitry 23 will be configured to cause the aerosol generating component 24 to generate an increasing amount of aerosol from the respective portion of aerosol generating material 44 the further away the respective portion of aerosol generating material 44 is located from the outlet 28” and “the control circuitry is configured to cause the aerosol generating component to generate an increasing amount of aerosol from the respective portion of aerosol generating material the further away the respective portion is located from the outlet”.
There is no support that the control circuitry is configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by a respective increasing amount.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is an unclear what it means for the plurality of respective portions of the aerosol generating material to aerosolize by a respective increasing amount. How does an aerosol generating material aerosolize by an increasing amount? Are the respective portions of the aerosol generating material generating an increasing amount of aerosol? Or are an increasing amount of respective portions of the aerosol generating material aerosolizing?
For purposes of examination, it is interpreted that the respective portions of the aerosol generating material are generating an increasing amount of aerosol.
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.
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.
Claim(s) 1, 6, 7, 9, 11, 12 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2016120344 (John hereinafter).
Regarding claim 1, John discloses an aerosol provision device for generating aerosol from an article comprising portions of aerosol generating material (abstract), the device comprising:
a receptacle (7) for receiving the article comprising portions of aerosol generating material (9);
an outlet (in “mouthpiece,” 3 in Fig. 2) fluidly coupled to the receptacle;
at least one aerosol generating component configured to perform an aerosolization process on one or more of the portions of aerosol generating material when the article is received in the receptacle (“heater,” 11); and
control circuitry (15) for controlling the aerosol generating component, wherein the control circuitry is configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by a respective increasing amount depending on increasing distance of the portion from the outlet, specifically John states that, “The electrical control circuitry 15 and the power connections 11b to the heater elements 11a are preferably arranged such that at least two, and more preferably all, of the heater elements 11a can be powered independently of each other, for example in turn (over time) or together (simultaneously) as desired,” (page 7, lines 29-32) and “In examples in which the heater elements 11a can be powered independently of each other, the particular heating element 11a or combination of heating elements 11a that are powered on each given draw may vary from draw to draw in accordance with a predetermined power control sequence controlled by the control circuitry 15,” (page 10, lines 20-24) and “Preferably, the heating elements 11a can be powered sequentially, one per draw by a user, such that aerosol and/or gas is generated in a consistent basis on each draw,” (page 10, lines 26-27) and “The electrical power drawn by each heating element 11a can be controlled by pre-programming the electrical control circuitry 15 to suit the individual heating requirements of each of the plurality of recesses 7a containing aerosol generating material 9 formed in the receptacle 7,” (page 11, lines 6-9) thus while John does not expressly state the term “depending on increasing distance… from the outlet” given that the controller independently heats respective portions of aerosol generating material, including sequentially, it is inherent that the controller is heating respective portions of aerosol generating material based on their position, or location, which meets the limitation, “depending on increasing distance… from the outlet.”
Regarding claims 6 and 7, John teaches that “The electrical control circuitry 15 and the power connections 11b to the heater elements 11a are preferably arranged such that at least two, and more preferably all, of the heater elements 11a can be powered independently of each other, for example in turn (over time) or together (simultaneously) as desired,” (page 7, lines 29-32) and “Preferably, the heating elements 11a can be powered sequentially, one per draw by a user, such that aerosol and/or gas is generated in a consistent basis on each draw,” (page 10, lines 26-27).
Thus, the controller of John is configured to set the temperature of the heating elements closer to the outlet to be lower, specifically powered off, than the operational temperature of the heating elements further from the outlet, which are powered on.
Regarding claim 9, John teaches that the portions of aerosol generating material are arranged in an N x M array, wherein N is rows and M is columns, with respect to the outlet when received in the receptacle (page 7, lines 6-12 and Fig. 3).
John teaches that all the portions of the aerosol generating material are independently heated (page 7, lines 29-32). Thus, the controller is configured to heating each portion to a different temperature, which results in each portion generating a different amount of aerosol. Therefore, the number of portions of the aerosol generating material is the same as the maximum number of different amounts of aerosol. The controller is also configured to heat just one portion of the aerosol generating material, or just two portions of the aerosol generating material, or just three portions of the aerosol generating material, etc. up to all of the portions of the aerosol generating material. Since X is less than or equal to the number of portions of the aerosol generating material, this limitation is met.
Regarding claims 11 and 12, John teaches that the system comprising the aerosol provision device according to claim 1 (see rejection of claim 1, above) and further comprising an article (9) comprising portions of aerosol generating material (9), wherein each portion of aerosol generating material is substantially identical (Fig. 7a-7c and Fig. 8a).
Regarding claim 14, John teaches that the aerosol generating material is an amorphous solid, specifically a wet gel or slurry (page 22, lines 16-17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights