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
Claims 15, 17-18, 25 and 27-28 are amended. Claims 1-14 are cancelled. Claims 14-28 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of 7/23/2025 are overcome.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/21/2025 has been entered.
Claim Interpretation
Regarding claim 28, the claim recites the limitation “configured to be attachable between the top portion and the main body by placing the cartridge between the top portion and the main body and by rotating the cartridge,” which is considered to be a limitation regarding the intended use of the claimed device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the claim will be interpreted as if it required a device that could be operated by placing the cartridge between the top portion and the main body and rotating the cartridge to attach the top portion and main body to the cartridge.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012).
Regarding claims 15 and 26, Jordan, Jr. discloses a device for medicating smoke (page 1, lines 1-10) having a mouthpiece (figure 2, reference numeral 1), which is considered to meet the claim limitation of a top portion, a tube (figure 2, reference numeral 2), and a cylinder that holds the tube within it (page 1, lines 38-69), which is considered to meet the claim limitation of a main body. The tube accommodates a container (figure 2, reference numeral A), which is considered to meet the claim limitation of a flavor cartridge, made from a perforated cylinder (figure 4, reference numeral 15), which is considered to meet the claim limitation of a housing, that contains suitable substances (page 1, lines 101-110, page 2, lines 1-8). The substances are liquids that are absorbed onto a solid such at cotton (page 2, lines 50-60), which is considered to meet the claim limitation of a flavor substrate arranged within the housing. The cartridges render a pleasant taste (page 2, lines 25-42), which is considered to indicate that they contain a flavor. The mouthpiece and cylinder are held together by friction and can be rotated relative to each other (page 1, lines 38-69), indicating that they could also be removed from each other to provide access to the cartridge. No locking structure is provided between the tube, mouthpiece, and cylinder (figure 2), indicating that the tube is removably attached to the other components, and would therefore be replaceable. The cylinder has a tube in its middle that has open upper and lower ends (page 1, lines 101-110, page 2, lines 1-8, figure 2, reference numeral 17), which is considered to define proximal and distal apertures respectively. The tube itself is considered to define a substrate aperture since it extends through the substance (page 1, lines 101-110, page 2, lines 1-8, figure 2). Jordan, Jr. is silent as to any heater for the substance, which is considered to meet the claim limitation of non-heated. These apertures are all aligned (figure 2). Jordan, Jr. does not explicitly disclose (a) the proximal and distal parts of the tube being removably attached to each other and (b) the device containing a power supply.
Regarding (a), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the tube have separate attachable proximal and distal parts. The Courts have held that making known elements separable is within the skill of a person of ordinary skill in the art. See MPEP § 2144.04 V C.
Regarding (b), Lee teaches an aerosol generating device having a cigarette (abstract). The cigarette (figure 1, reference numeral 2) is received in an internal space that contains a heating element (column 4, lines 27-31, figure 1, reference numeral 31). The heater heats the cigarette (column 5, lines 14-19). A vaporizer generates aerosol by heating a liquid composition, and the generated aerosol then passes through the cigarette before delivery to a user (column 5, lines 49-56). The cigarette has a tobacco rod (column 7, lines 17-24, figure 1, reference numeral 21) that contains a flavoring agent (column 7, lines 37-46). The heater is supplied with power from a battery (column 4, lines 59-65).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the mouthpiece of Jordan, Jr. with the cavity, heating element, battery, and cigarette of Lee. One would have been motivated to do so since Lee teaches a cigarette that imparts a flavoring agent to an aerosol that was already generated.
Regarding claim 16, Jordan, Jr. discloses that the air flows through the device in a straight line (figure 2).
Regarding claim 21, Jordan, Jr. discloses that the cylinder and tube are perforated (page 1, lines 101-110, page 2, lines 1-8).
Regarding claim 23, modified Jordan, Jr. teaches that the substances are liquids that are absorbed onto a solid such at cotton (page 2, lines 50-60). The cotton is considered to meet the claim limitation of a retention material, and the liquid is considered to meet the claim limitation of a flavoring liquid.
Regarding claim 24, Jordan, Jr. discloses that air enters the device and mixes with the volatilized substances and is then inhaled into the mouth (page 2, lines 71-79), indicating that the volatilization occurs at ambient temperature since the air is directly received from the ambient environment.
Regarding claim 25, Jordan, Jr. discloses that the bore extends into the mouthpiece, which is considered to meet the claim limitation of a top portion airflow channel, and is in alignment with a reduced short bore (page 1, lines 38-69, figure 2, reference numeral 7), which is considered to meet the claim limitation of a main body airflow channel. The bore extends the entire length of the device (figure 2), indicating that all of the components are in airflow communication, and the tube is between the mouthpiece and cylinder (figure 2).
Regarding claim 28, Jordan, Jr. discloses that the parts are held together by rotating them relative to each other (page 1, lines 38-69).
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012) as applied to claim 15 above, and further in view of Fernando (WO 2019/211789).
Regarding claims 17 and 18, modified Jordan, Jr. teaches all the claim limitations as set forth above. Modified Jordan, Jr. does not explicitly disclose a fluid impermeable foil covering the apertures of the tube that lead into the central part.
Fernando teaches a shisha cartridge (abstract) having first and second removable seals in the form of foils that prevent air flow though inlets and outlets of the cartridge to prevent leakage and extend shelf life (page 16, lines 25-32).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide foil seals at the ends of the tube of modified Jordan, Jr. One would have been motivated to do so since Fernando teaches seals that prevent leakage and extend shelf life.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012) as applied to claim 15 above, and further in view of Mukaddam (US 2012/0042884).
Regarding claim 19, modified Jordan, Jr. teaches all the claim limitations as set forth above. Modified Jordan, Jr. does not explicitly teach all of the smoking compositions being tobacco free.
Mukaddam teaches an electronic atomization hookah [0011] that has a liquid that is turned into a mist [0015] that is inhaled by a smoker [0051]. The liquid is free of tobacco and therefore does not contain the over 4000 harmful products and carcinogens usually found in tobacco products [0051].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the compositions of modified Jordan, Jr. not contain any tobacco. One would have been motivated to do so since Mukaddam teaches that removing tobacco from a liquid for electronic inhalation eliminates the over 4000 harmful products and carcinogens usually found in tobacco products.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012) as applied to claim 15 above, and further in view of von Borstel (US 8,646,461).
Regarding claim 20, modified Jordan, Jr. teaches all the claim limitations as set forth above. Modified Jordan, Jr. does not explicitly teach the smoking mateirals not containing any nicotine.
Von Borstel teaches a device for simulating a chemosensation of smoking (abstract) having a composition that is used in liquid for electronic cigarettes in conjunction with an absence of nicotine to provide an adequate simulation of the chemosensory experience of inhaling aerosols containing nicotine to reduce dependence on, and or craving for, nicotine (column 4, lines 42-53). The composition contains a chemesthetic agent that activated a TRP channel (column 2, lines 20-25) in a human nervous system (column 3, lines 54-61).
It would therefore have been obvious to one of ordinary skill in the art to combine the smoking materials of modified Jordan, Jr. with the chemesthetic agent of von Borstel and to remove all nicotine from the compositions of modified Jordan, Jr. One would have been motivated to do so since von Borstel teaches a composition that reduces dependence on, and craving for, nicotine.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012) as applied to claim 15 above, and further in view of in view of Batista (US 2017/0360095).
Regarding claim 22, modified Jordan, Jr. teaches all the claim limitations as set forth above. Modified Jordan, Jr. does not explicitly teach a Luer connection between the proximal and distal parts of the cylinder.
Batista teaches an aerosol generating system (abstract) having a cartridge that is connected to a housing using a Luer lock type connection [0058].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Luer connection of Batista as the connection between the proximal and distal sections of modified Jordan, Jr. One would have been motivated to do so since Batista teaches that a Luer connection connects two components with a lock.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan, Jr. (US 1,974,242) in view of Lee (US 11,969,012) as applied to claim 26 above, and further in view of in view of Riva Reggiori (WO 2019/115464).
Regarding claim 27, modified Jordan, Jr. teaches all the claim limitations as set forth above. Lee additionally teaches that the heating element is a metal heating wire (column 6, lines 19-29). Modified Jordan, Jr. does not explicitly teach thermally insulating the container from the heating element of the cigarette.
Riva Reggiori teaches an aerosol generating device comprising a heating element that is configured to heat an aerosol forming substrate for forming an aerosol (abstract). The heater is formed by a metal heating wire that is sandwiched between two insulating materials made from glass and ceramic so that the temperature can be monitored during operation (page 6, lines 12-26).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to sandwich the heating element of modified Jordan, Jr. with the insulators of Riva Reggiori. One would have been motivated to do so since Riva Reggiori teaches that sandwiching heating wires with insulators allows the temperature to be monitored during operation.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection are entered as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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