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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/30/2025 has been entered.
Status of the Claims
Claims 16-35 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 7/30/25.
Claims 16 and 19-22 are amended.
Claims 31-35 are new.
Election/Restrictions
Newly submitted Claims 31-35 are directed to an invention that lacks unity with the invention originally claimed for the following reasons: as provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Group I, Claims 16-31, drawn to a holder product for an aerosol generating device.
Group II, Claims 32-35, drawn to an aerosol generating system product.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a holder for an aerosol-generating device as claimed in Claim 16; this technical feature is not a special technical feature as it does not make a contribution over the prior art over Li (US 20170208862 A1) in view of Liu (US 20160091194 A1) and Keen (US 20160120223 A1) as discussed in detail below in regard to the rejection of Claim 16 under 35 U.S.C. 103.
Since the “special technical feature” linking Groups I and II is disclosed by Li in view of Liu and Keen, the “special technical feature” lacks novelty or inventive step and does not make a contribution over the prior art. Therefore, no single general inventive concept exists and restriction is appropriate.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claim 32-35 withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments (filed 7/30/25, pages 8-14) have been fully considered but are not persuasive. Applicant argues: (1) Li does not teach a seal formed between the retainer and the rim and it would not be obvious to modify Li to comprise a seal, (2) the aerosol generating device of Li does not comprise an opening or recess configured to receive an aerosol generating article and it would not be obvious to modify the device of Li to comprise the recess, and (3) Li does not teach a hemispherical shaped retainer and it would not be obvious to modify Li to comprise a hemispherical shaped retainer. The Examiner respectfully disagrees.
(1) The Applicant argues that the Examiner’s interpretation that Li [0046] discloses a forming seal at both ends of the device is incorrect. While the Applicant provides an alternative interpretation of Li [0046], Applicant’s argument appears to rely on a specific interpretation of the term “seal.” 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. Here, the phrase “a seal is formed by interaction between the second surface of the retain and the rim or lip” and specifically the term “a seal” are given their broadest reasonable interpretation. Generally, the term seal is used to refer to a component which is used to join two other components together. Furthermore, Applicant’s Specification states “the seal may reduce an amount of dust or debris from entering the opening or recess of the device.” (Page 5, lines 14-15). Thus, “a seal” is broadly interpreted to mean a component which joins two components of the device together such that it reduces an amount of dust or debris from entering the opening or recess of the device.
Under the broadest reasonable interpretation of the term “seal,” both the Examiner’s and the Applicant’s interpretation of Li [0046] disclose a “seal.” Without conceding the Examiner’s interpretation of Li [0046], Applicant’s interpretation of Li [0046] to mean that “by positioning both ends of the cigarette, rocking of the smoking set is prevented, and thus damage and oil leakage may be prevented” (Applicant's arguments filed 7/30/25, page 3) describes a component which connects two components. Furthermore, it is clear from Li Fig 3 that the device comprises elastic locking mechanisms which fit into grooves of the cigarette. Thus, where the elastic locking mechanism fits into a groove of the device, the elastic locking mechanism joins the device and the holder together such that the rocking of the smoking set and oil leaking is prevented in such a way which would further prevent dust and debris from entering into the groove. Therefore, by Applicant’s interpretation of Li [0046] and under the broadest reasonable interpretation of “a seal” as limited by the Specification, Li [0046] and Fig 3 disclose a seal as claimed in amended Claim 16.
(2) Li comprises an opening or recess in the aerosol generating device but does not explicitly disclose wherein the device comprises an aerosol generating article or wherein the opening or recess is configured to receive an aerosol-generating article. However, Claim 16 is directed to a holder for an aerosol-generating device and not the aerosol-generating device itself. Rather, the inclusion of the aerosol-generating device comprises the intended use of the holder. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Moreover, the limitation of “wherein the opening or recess [of the aerosol-generating device] is configured to receive an aerosol-generating article” is an intended use limitation of the device, which is itself an intended use of the holder. Here, the intended use of the opening or recess of the aerosol-generating device does not result in a structural difference on the claimed holder. Therefore, while Li does not explicitly disclose wherein the device comprises an aerosol generating article, the claimed holder is not structurally limited by the amended limitation and is not structurally distinguished from the holder of Li.
(3) While Li does not teach a hemispherical shaped retainer, it would be obvious to modify Li to comprise a hemispherical shaped retainer. First, the end of the retainer of Li is depicted substantially similar to a semicircle. As seen below in annotated Li Figs 3 and 4, the end of the retaining mechanism is cylindrical with rounded edges (See arrow 1). Second, it would be obvious to one having ordinary skill in the art that the particular shape of the end of the retainer is a matter of design choice, such as a further rounding of the edges. See MPEP 2144.04(IV)(B). To the extent the edges were further rounded, the retainer would comprise a “substantially hemispherical” shape, similarly as claimed. Therefore, a person having ordinary skill in the art, through reshaping of the retainer disclosed in retainer, would arrive at the hemispherical shaped retainer as claimed, absent evidence to the contrary.
The following rejections are modified where necessitated by Applicants amendments.
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Claim Interpretation
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. In Claim 16, the phrase “a seal is formed by interaction between the second surface of the retain and the rim or lip” and specifically the term “a seal” are given their broadest reasonable interpretation. Generally, the term seal is used to refer to a component which is used to join two other components together. Furthermore, Applicant’s Specification states “the seal may reduce an amount of dust or debris from entering the opening or recess of the device.” (Page 5, lines 14-15). Thus, “a seal” is broadly interpreted to mean a component which joins two components of the device together such that it reduces an amount of dust or debris from entering the opening or recess of the device.
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 16-31 are rejected under 35 U.S.C. 103 as obvious over Li (US 20170208862 A1) in view of Liu (US 20160091194 A1) and Keen (US 20160120223 A1).
Regarding Claims 16 and 18, Li discloses a holder for an aerosol-generating device ("an electronic cigarette case for accommodating a cigarette" [0006]), the holder comprising:
a docking arrangement configured to engage with the aerosol-generating device ("the housing main body further comprises a container formed therein, and the container is communicated with the opening and configured for accommodating the cigarette" [0009]),
the docking arrangement comprising a docking space defined between a first end and an opposing second end spaced from and fixed relative to the first end (Adapter 23 is affixed to one end of the accommodating dock space, opposite the space to elastic charging base 40. [0041], [0046], Fig 3),
the docking space being configured to accommodate a longitudinal dimension of the aerosol-generating device (The docking space, adapter 23, and elastic charging base 40 are configured to hold the device therein. [0046], Fig 3); and
a retainer configured to engage with an end of the aerosol-generating device to releasably retain the aerosol-generating device in the docking space (The elastic charging base 40 is configured to engage with an end of the device and to apply longitudinal force, thus clamping the device into the docking space. [0015], [0046]-[0048], Fig 3)),
the retainer having a first surface fixed relative to the first end (The elastic charging port 40 is attached to the inner surface of the housing bottom face 14. [0046]), and
a second surface projecting away from the first end into the docking space (A portion of the elastic charging base mechanism positioned away from the housing bottom face 14 is depicted as a spring mechanism, providing the elastic deflection longitudinal to the docking space. [0046], Fig 3),
the second surface being deflectable relative to the first end on engagement with the end of the aerosol-generating device (Upon insertion of a device, the elastic charging base 40 compresses away from the docking space, compressing towards the bottom face 14 to accommodate the insertion of the device. [0046]-[0048], Fig 4),
wherein the second surface of the retainer comprises, or is formed from, a resiliently deformable elastic or elastomeric material (The elastic charging base 40 is configured to compress upon the application of force and clamp the device into place at rest; the elastic charging base 40 is depicted with a spring mechanism which would be capable of providing the resiliently deformable elastic characteristic quality described. [0015], [0046]-[0048], Fig 3. Such a spring mechanism is deformable along its length. [0015], [0046]-[0048], Fig 3.),
wherein resilient deformation of the resiliently deformable elastic or elastomeric material allows the second surface of the retainer to be deflectable relative to the first end (The depicted spring mechanism provides the previously discussed elastic characteristic to the elastic charging base 40. [0015], [0046]-[0048], Fig 3).
wherein an opening or recess is defined at the end of the aerosol-generating device, the opening or recess being bounded by a rim or lip (The elastic charging base 40 is shaped as to fit into a groove depicted in the bottom of the device. [0046], Fig 3. The groove in the bottom of the device is depicted as a center groove surrounded by a ridge or lip running about the circumference of the device. [0046], Fig 3),
wherein the retainer is further configured such that, when the aerosol-generating device is retained in the docking space, a seal is formed by interaction between the second surface of the retainer and the rim or lip (The fit between the elastic charging device and the device groove is sufficient to prevent the device from moving from charging or prevent leaking oil from entering the device, thus the elastic charging connects the lower device groove to the holder. [0046], Fig 3. Under the broadest reasonable interpretation of “a seal” as limited by the Specification, Li [0046] and Fig 3 disclose a seal similarly as claimed.), and
wherein the opening or recess is configured to receive an aerosol-generating article. (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The limitation of “wherein the opening or recess [of the aerosol-generating device] is configured to receive an aerosol-generating article” is an intended use limitation of the device. Here, the intended use of the opening or recess of the aerosol-generating device does not result in a structural difference on the claimed holder.)
Li does not explicitly disclose a retainer wherein the retainer comprises a nitrile/nitrile rubber. However, Liu discloses a holder wherein an elastic spring may alternatively comprise of an elastic rubber (The device charging case comprises a latching mechanism comprising a damping element 44 which utilizes the elastic compressive force of a spring to provide longitudinal force to the latching mechanism. [0036]-[0037], Figs 2 & 4. However, the damping element 44 may alternatively comprise a high elasticity rubber material to provide the longitudinal compressive force. [0037]), and Keen teaches that, in an aerosol-delivery device, an elastic rubber component may specifically comprise a nitrile rubber where the rubber must be resilient and apply a compressive force (The device comprises a gasket 9 which comprises a resilient material to provide a compressive spring force such as nitrile rubber. [0055]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the elastic component of the elastic charging base of Li with an elastic rubber component such as nitrile rubber as taught by Liu and Keen because Li, Liu, and Keen are all directed to aerosol generating device accessories, Liu teaches the use of an elastic rubber as a known alternative to a spring, Keen teaches the specific use of nitrile rubber as a compressively resistive rubber compound, and this merely involves applying a known elastic material compounds to a similar aerosol generating device accessory component to yield predictable results.
Regarding Claim 17, Li discloses a holder
wherein the retainer is formed from the resiliently deformable elastic or elastomeric material (The elastic charging base 40 is depicted with a spring mechanism and thus comprises a material capable of deformation along its length upon the application of a compressive force. [0015], [0046]-[0048], Fig 3), and
the first surface of the retainer is a first surface of the resiliently deformable elastic or elastomeric material (The first surface of the elastic spring of the elastic charging base 40 connects to a surface of the bottom face 14. [0046] Fig 3).
Regarding Claim 19, Li discloses a holder wherein the retainer is configured to apply a force to the aerosol-generating device retained in the docking space, the force acting to urge the aerosol-generating device away from the first end and towards the second end (The elastic charging base 40 applies a longitudinal force to the device, clamping the device between the elastic charging base 40 and adapter 23. [0046], Fig 3).
Regarding Claim 20 and 21, Li discloses a holder wherein the retainer is further configured to engage with the opening or recess defined at the end of the aerosol-generating device and/or wherein the retainer engages with the rim or lip (The elastic charging base 40 is shaped as to fit into a groove depicted in the bottom of the device. [0046], Fig 3).
Regarding Claim 22, Li further discloses a device wherein the rim or lip is a continuous rim or lip bounding the opening or recess (The lip and groove in which the elastic charging base 40 is inserted is depicted as a circumferential groove about the base of the device. Fig 3).
Regarding Claim 23, Li discloses a holder wherein the second surface of the retainer is substantially hemispherical in shape (The elastic charging base is depicted in a rounded tubular shape configuration. Fig 3. However, modifying the surface of the elastic charging base to a hemispherical configuration merely involves a slight change in shape which is an obvious matter of design choice and would not significantly or detrimentally modify the functionality of the component. MPEP 2144.04(IV)(B)).
Regarding Claim 24, Li discloses a holder wherein the aerosol-generating device is an elongate aerosol-generating device defining a longitudinal dimension, and the docking space is configured to accommodate the longitudinal dimension of the elongate aerosol- generating device (The accommodating space is enclosed by a rotating arc-shaped housing face, thus defining a tubular elongate docking space. [0045]-[0046], Fig 4).
Regarding Claim 25, Li discloses a holder wherein retention of the aerosol- generating device in the docking space is effected by relative movement of the aerosol- generating device and the docking space in a direction perpendicular to the longitudinal dimension of the aerosol-generating device (The clamping force applied by the elastic charging base in the longitudinal direction also prevents movement of the charging device in a direction perpendicular to the longitude of the device. [0046], Fig 3).
Regarding Claim 26, Li discloses a holder wherein the retention of the aerosol- generating device in the docking space causes elastic deformation of the retainer (The clamping force achieved by the elastic charging base is achieved by the compressive force applied by the depicted spring, applying a compressive force into the base of the device. [0046]-[0048], Fig 3).
Regarding Claim 27, Li discloses a holder wherein the retainer is in a first state when the aerosol-generating device is not retained in the docking space, and the retainer is in a deformed second state when the aerosol-generating device is retained in the docking space (Wherein the previously described state of the elastic charging base provides a clamping force onto the device upon insertion, a second state reasonably exists in which the device is not inserted into the charging holder and the compressive spring is further extended compared to the first state. [0046]-[0048]).
Regarding Claim 28, Li discloses a holder
further comprising a power source (Lithium battery 30 and the circuit plate 50. [0047], Fig 3),
wherein the end of the holder comprises an electrical contact electrically connected to the power source (The elastic charging base is connected to the battery 30 in order to charge the device upon insertion and application of the clamping. [0047], Fig 3),
the electrical contact configured to engage with a corresponding electrical contact of the aerosol-generating device to supply power from the power source to the aerosol-generating device when the aerosol-generating device is retained in the docking space (Wherein the elastic charging base is connected to the battery 30, the electrical connection formed with the device exists between the elastic charging base and the bottom groove of the device, thus charging the device while it is clamped between the electric charging base and the adapter. [0047], Fig 3).
Li does not explicitly disclose a holder wherein the retainer is positioned at the opposite end of the holder from the electrical contact. However, at which end of the holder the device is charged is an obvious matter of design choice (See MPEP 2144.04(VI)(C)). Specifically, given that the elastic charging base of Li explicitly comprises two functions, charging and clamping a device, the arrangement of the electrical contact to the opposing end/the adapter end of the holder (Adapter 23. [0041]-[0043], Fig 3) would not require a change in shape or clamping functionality of the elastic base. Moreover, the adapter forms a similarly shaped component to the elastic base, demonstrating the adapter could equally function as a charging adapter through the rearrangement of the electrical wires and charging connection (Compare elastic charging base 30 to adapter 23, Fig 3). The choice of which end of the holder comprises the electrical charging contact does not impact the operation of the remainder of the holder components and is thus an obvious matter of design choice.
Regarding Claim 29, Li discloses a holder wherein, when the aerosol-generating device is retained in the docking space, the retainer urges the aerosol-generating device towards the electrical contact (The elastic spring in the elastic charging base urges the electrical contact surface of the elastic charging base, which is connected to the battery, into a groove of the device. [0047], Fig 3).
Regarding Claim 30, Li discloses a holder wherein the aerosol-generating device comprises a body extending between a proximal end and a distal end, and wherein, when the aerosol-generating device is accommodated in the docking space, a first side portion of the body faces the holder and a second side portion of the body faces away from the holder and is exposed ("one end of the cigarette is clamped into the elastic charging base and the other end of the cigarette is clamped into the protrusion portion of the adapter" [0015]).
Regarding Claim 31, Li discloses a holder:
wherein the retainer is cylindrical with rounded edges (Figs 3 and 4),
wherein the second end of the holder comprises an electrical contact (The elastic charging base is connected to the battery 30 in order to charge the device upon insertion and application of the clamping. [0047], Fig 3), and
wherein the retainer is further configured to apply a force to an aerosol-generating device retained in the docking space to act to urge the aerosol-generating device away from the first end and towards the second end (The elastic spring in the elastic charging base urges the electrical contact surface of the elastic charging base into a groove of the device. [0047], Fig 3).
Li does not disclose wherein the second surface of the retainer is explicitly hemispherical in shape. However, given that the hemispherical shape merely involves a change in shape of the retainer, the modification would be obvious to one having ordinary skill in the art. A person having ordinary skill in the art would find the particular shape of the retainer an obvious matter of design choice. See MPEP 2144.04(IV)(B). Therefore, it follows that a person having ordinary skill in the art, through reshaping of the retainer disclosed in Li, would arrive at the substantially hemispherical shape as claimed, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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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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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755