DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment submitted September 24, 2025 has been entered.
The amendment has overcome each and every 35 U.S.C. 112(b) rejection presented in the Non-Final Office Action mailed June 25, 2025. Therefore, those rejections have been withdrawn.
Election/Restrictions
Claims 39-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II, III, and IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 30, 2025.
Claim Interpretation
This claim interpretation section is only with respect to claim 37.
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.
With respect to Claim 37, 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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: "electrical connection means" in claim 37.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(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 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.
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 23-30 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 Johnson et al. (US 2018/0243520).
Regarding claim 23, Johnson discloses a cartridge for an aerosol-generating device (Figure 13, disposable vaporizer pod 101, [0037]) comprising:
a downstream end comprising a fluid outlet (Figure 13, top end 103 containing air channels 65, [0034] and [0037]),
wherein the fluid outlet comprises a one-way valve (Figure 13, upper valve 49 and air channels 65 together form valve, [0034]),
an upstream end comprising an air inlet (Figure 13, air channels 31 at bottom end 105, [0034] and [0037]),
wherein the air inlet comprises a one-way valve (Figure 13, lower valve 21 and air channels 31 form valve, [0034]),
a liquid storage portion arranged between the downstream end and the upstream end (Figure 13, liquid stored in area around and in absorbing material 44, [0030]),
wherein the liquid storage portion comprises a liquid sensorial media (Figure 13, absorbing material 44 retains liquid, [0030]),
and a diffuser (Figure 13, absorbing material 44 acts as a diffuser to spread out the aerosol formed within, [0034]),
wherein the diffuser is arranged downstream of the air inlet (Figure 13, absorbing material 44 is downstream of air channels 31, [0030] and [0034]),
and wherein the diffuser is arranged adjacent the air inlet (Figure 13, absorbing material 44 is adjacent to air channels 31 (and air coming through them), [0030] [0034]),
wherein the one-way valve of the fluid outlet has a smaller diameter than the one-way valve of the air inlet (Figure 13, air channels 65 (part of top/outlet valve) are depicted as smaller than air channels 31 (part of bottom/inlet valve) and upper valve 49 is depicted as smaller than lower valve 21 due to the extra space shown between upper valve 49 and upper valve cap 51 that is not present between lower valve 21 and lower valve cap 23, which reasonably suggests the top/outlet valve (combination of upper valve 49 and air channels 65) is smaller than the bottom/inlet valve (combination of lower valve 21 and air channels 31), [0034] and [0037]).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Johnson such that the top/outlet valve (combination of upper valve 49 and air channels 65) is smaller than the bottom/inlet valve (combination of lower valve 21 and air channels 31) because Figure 13 depicts the valves as such as presented above. Also, according to MPEP 2144.04 IV.A. “In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.”
Regarding claim 24, Johnson teaches the cartridge according to claim 23, wherein the diffuser is attached to the air inlet (Figure 7, absorbing material 44 is connected to air channels 31 through inner cap 25 and lower valve cap 23, [0034]).
Regarding claim 25, Johnson teaches the cartridge according to claim 23, wherein the diffuser is fluidly connected with the air inlet (Figure 7, absorbing material is fluidly connected to air channels 31 (see arrows of fluid flow in Figure 7), [0034]) .
Regarding claim 26, Johnson teaches the cartridge according to claim 23, wherein the diffuser is disc-shaped or pad-shaped (absorbing material is cylindrical (i.e. disc-shaped), [0030]).
Regarding claim 27, Johnson teaches the cartridge according to claim 23, wherein the diffuser comprises a plurality of fibers and preferably plurality of interstices (absorbing material can be formed from cellulose (which is fibers), [0030]).
Regarding claim 28, Johnson teaches the cartridge according to claim 23, wherein the diffuser comprises a mesh (absorbing material may be metal mesh, [0030]).
Regarding claim 29, Johnson teaches the cartridge according to claim 23, wherein a fluid path is established between the air inlet, the diffuser, the liquid storage portion and the fluid outlet (Figure 7, one-way channel 69 extends from air channels 31, through absorbing material 44, up through air channels 65 (shown with arrows in Figure 7), [0034]).
Regarding claim 30, Johnson teaches the cartridge according to claim 23, wherein the one-way valve of the fluid outlet protrudes from the downstream end of the cartridge (Figure 7, flap portion 55 of upper valve shown extending above reusable vaporizer pod 1 at least in open position (dotted lines), [0031]),
and wherein the one-way valve of the air inlet protrudes from the upstream end of the cartridge (Figure 7, bulb portion 25 extends below end of reusable vaporizer pod 1, [0027]).
Claim Rejections - 35 USC § 103
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 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2018/0243520) in view of Dai et al. (US 2015/0272216).
Regarding claims 32-33, Johnson discloses the cartridge according to claim 23, as set forth above. Johnson fails to explicitly disclose wherein the one-way valve of the fluid outlet has a diameter of between 0.75 millimeters to 7 millimeters, preferably of between 1 millimeters to 5 millimeters, most preferable of between 1.5 millimeters to 3 millimeters and also wherein the one-way valve of the air inlet has a diameter of between 8 millimeters to 25 millimeters, preferably of between 9 millimeters to 15 millimeters.
Dai teaches a similar vaporizer with an air duct with a diameter between about 1-3 mm (Figure 4, throat diameter of air duct less than 3mm, such as 1 mm, [0060]). One of ordinary skill in the art is reasonably suggested with respect to Johnson to relate the teachings of the air duct diameters of Dai to the inlet and out diameters of the valves of Johnson to the determine the reduced pressure differential to open the one way valves of Johnson (see rejection of claim 23 above and [0056] of Dai for pressure differential needed to open one way valves). Furthermore, Dai teaches (see [0027]) that the device (electronic cigarette) may have a diameter of about 10 mm, and while Johnson does not specifically teach or suggest the size of the pods used, one of ordinary skill in the art is reasonably suggested that the inlet hole could be on the order of 10 mm because Dai teaches this size of electronic cigarette and it logically follows that the size of the inlet and the mouthpiece are about the same as these both go into the user’s mouth in order to use the device.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Johnson such that the apertures of air channels 65 and 31 (see Figure 13 and [0034]) of 10 mm or less because Dai reasonably suggests this size of the mouthpiece inlet for a user that may use the vaporizer pods of Johnson, and Dai also teaches that the sizes of the air inlets and outlets from the vaporization chamber must be sized such that the inlet and outlet are at the maximum mouthpiece diameter or less to provide the necessary reduced pressure to activate one way valves. Therefore, the range of apertures 65 and 31 of Johnson being a diameter of 10 mm or less which overlaps the claimed ranges in claims 32 and 33. As in claim 23 (rejection above), one of ordinary skill in the art is reasonably suggested that the outlet valve is smaller than the inlet valves (and therefore the associated apertures thereof). Applicant presents no demonstration of unexpected results with respect to the numerical size of either of the inlets and outlets claimed.
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2018/0243520) in view of Goldstein et al. (US 2018/0263288).
Regarding claims 34-36, Johnson discloses the cartridge according to claim 23, wherein the cartridge comprises a housing. Johnson fails to disclose wherein the housing preferably comprises a transparent plastic or glass, preferably borosilicate glass, wherein the housing is at least partly opaque or transparent, and wherein the opaque or transparent part of the cartridge is UV-resistant, wherein preferably the opaque or transparent part of the cartridge comprises a UV-resistant polymer or a UV-resistant coating.
Goldstein discloses a similar cartridge for an electronic vaporizer made out of borosilicate glass ([0097], this is the preferred material in the as-filed specification for the housing and the material that gives the claimed properties of “at least partly opaque or transparent” as well as “UV-resistant”). Goldstein also teaches that the material of the cartridge such as borosilicate glass should be capable of heat conduction while maintaining structural integrity during heating cycles and long-term exposure to heat ([0097]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to incorporate the teachings of Goldstein to make the cartridge out of borosilicate material because doing so would make the cartridge capable of heat conduction while maintaining structural integrity during heating cycles and long-term exposure to heat, as recognized by Goldstein [0097].
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2018/0243520) in view of Xu (US 2018/0084829).
Regarding claim 37, Johnson discloses the cartridge according to claim 23, as set forth above. Johnson fails to disclose wherein the downstream end of the cartridge comprises electrical connection means, and wherein the upstream end of the cartridge comprises electrical connection means.
Xu teaches a similar single-use cartridge for a microvaporizer with a conductive material (i.e. “electrical connection means”) connected to the downstream and upstream ends of the cartridge (Figure 4, conductive material 320 (mislabeled as 370 in Figure 4), [0032]). Xu also teaches that this conductive material (in part) provides for cost effective versions of disposable cartridges because the cartridges do not include the atomizer themselves, [0043].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to incorporate the teachings of Xu to provide a conductive material on the upstream and downstream ends of the cartridge because doing so would provide for cost effective versions of disposable cartridges because the cartridges do not include the atomizer themselves, as recognized by Xu [0043].
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2018/0243520) in view of Watanabe (WO 2019/220904, reference to US 2021/0112855).
Regarding claim 38, Johnson discloses the cartridge according to claim 23,as set forth above. Johnson fails to disclose wherein the liquid sensorial media comprises one or more of: flavorant, nicotine and water.
Watanabe teaches a similar cartridge for an electronic cigarette including a flavorant (examples given in [0141] include chocolate, vanilla, orange, lemon, and others) and water (see at least [0049] and [0050]). Watanabe also teaches that the advantage of a cartridge including these substances and non-tobacco substances is that harmful materials to the human body are not generated, [0141].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Johnson to incorporate the teachings of Watanabe to include water and a flavorant in the cartridge because doing so would stop harmful materials to the human body from being generated, as recognized by Watanabe [0141].
Response to Arguments
Applicant's arguments filed September 24, 2025 have been fully considered but they are not persuasive.
Applicant argues (see pages 7-9 of Remarks) that Johnson does not disclose a “diffuser” as claimed, however examiner contends that the absorbing material of Johnson (especially if formed glass frit, metal mesh, or similar as in [0030]) can perform the function of a “diffuser” in the device order to diffuse the liquid material to send the diffused material through the holes of the screen 45. Therefore, this argument is not persuasive.
Applicant also argues (see pages 9-14 of Remarks) that Johnson does not disclose wherein the one-way valve of the fluid outlet has a smaller diameter than the one-way valve of the air inlet, however the top/outlet valve (combination of upper valve 49 and air channels 65 in Johnson Figure 13) is shown as smaller than the bottom/inlet valve (combination of lower valve 21 and air channels 31 in Johnson Figure 13) as explained further in the rejection above. Additionally, Figure 13 of Johnson is being relied upon in the rejection only for the relative dimensions of the two parts and not any specific dimensions, which Examiner contends would reasonably suggest to one of ordinary skill in the art that the outlet valve diameter is smaller than the inlet valve diameter (especially relative to the sizes of the air channels). Therefore, this argument is not persuasive.
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 Adam Z. Baratz whose telephone number is (703)756-1613. The examiner can normally be reached Monday-Thursday 6:30 - 4:30 CT.
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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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/A.Z.B./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747