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
This office action is in response to the Applicants’ arguments/remarks filed 1-02-2026
Claim 1 is currently amended.
Claims 1-3, 5-14 are presently examined.
Claim 15 is withdrawn.
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.
Claims 1 and 12-14 are 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.
Amended Claim 1 requires a cigarette insertion passage, a first heating element configured to heat a cigarette inserted into the cigarette insertion passage, and the aerosol-generating device includes a support part for supporting the first heating element, and the sealing member (which is required to be in the cigarette insertion passage) is in contact with both the first heating element and the support part.
Thus Claim 1 requires the sealing member in the cigarette insertion passage to be in contact with both the first heating element and the support part (also in the cigarette insertion passgage) while claim 13 requires the sealing element to be disposed on one end of the liquid delivery element. Its unclear how the sealing member 250, that is in the claimed cigarette insertion passage in claim 1, can be both in contact with the first heating element 230 which is in the insertion passage, and also in contact with the liquid delivery element 340 shown in FIG 3B that is not found in the cigarette insertion passage. These requirements are not found in the written description as filed. Therefore, the claim amendment introduces new matter.
Claims 7-10 are rejected under 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.
Claim 1 as amended requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part. (see instant FIG 2)
Claim 7 requires the sealing member is arranged above the liquid delivery element such that the sealing member presses the liquid delivery element. (its unclear how the sealing element 250 of FIG 2 is arranged above the liquid delivery element of FIG 4, when the sealing element 250 of FIG 2 is absent from FIG 4 because claim 1 requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part.)
Claim 8 requires the sealing member obstructs a flow of a generated aerosol in a predetermined direction. (which agrees with the sealing member of claim 1 and instant FIG 2 but contradicts FIG 4 and claim 7 which doesn’t appear to include sealing element 250 of FIG 2, because claim 1 requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part.)
Claim 9 requires an outlet for discharging aerosol towards the outside of the aerosol generating device and that the sealing member (e.g., sealing element 250 instant FIG 2) is disposed between the movement passage and the outlet, however claim 1 requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part. It is unclear how the sealing element 250 which claim 1 now requires is found in the cigarette insertion passage, is found between the movement passage and the outlet.
Claim 10 requires the sealing member to be arranged surrounding the at least one hole, however claim 1 requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part.
Claim 11 requires the sealing member to be in contact with an inner wall of the movement passage, however claim 1 requires the sealing member to be in the cigarette insertion passage in contact with both the first heating element (in the cigarette insertion passage) and the support part.
These limitations are not supported by the written description as filed. Therefore, the claim amendment introduces new matter.
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 1-3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20200086068) in view of Ajbani (US20050148727A1)
Regarding Claim 1, Lee teaches an aerosol-generating device comprising:
a battery (11000);
an atomizer (10000) configured to generate an aerosol by atomizing an aerosol- generating material [0041]; and
a sealing member (20 see [0136] and FIG 11) disposed on one end of the atomizer (see FIG 11)
the atomizer includes a first heating element (13000, FIG 1) and a cigarette insertion passage (see FIG 1, the cigarette is inserted into the passage),
the first heating element is configured to heat a cigarette inserted into the cigarette insertion passage [0044], and
the aerosol-generating device includes a support part (30) for supporting the first heating element (10), and the sealing member (20) is in contact with both the first heating element and the support part (see FIG 11 below).
PNG
media_image1.png
530
603
media_image1.png
Greyscale
Lee teaches the sealing element 20 is made of a heat-resistant polymer material (thermoplastic) [0076] but is silent to suitable heat-resistant polymers (and their respective properties) for use in sealing elements and therefore fails to explicitly disclose and including a thermoplastic elastomer (TPE), wherein the thermoplastic elastomer has a melt flow index of 1.8 g/10min to 80.0 g/10 min,
Ajbani teaches known thermoplastic elastomer properties well known in the art and teaches suitable thermoplastic elastomer melt flow indexes that are suitable for use in sealing members (O-rings e.g., gaskets and seals [0002]) and teaches a suitable melt flow index of at least 1g/10min (See [0026]) for thermoplastic elastomer sealing members which overlaps with the claim limitation of a melt flow index of 1.8 g/10 min to 80.0 g/10 min. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the sealing member of Lee to have a melt flow index of at least 1g/10min as taught by Ajbani, because both Lee and Ajbani are drawn to thermoplastic elastomeric sealing members, Lee is silent to suitable melt flow indexes for use in sealing members, and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable melt flow indexes for a similar sealing member, Ajbani teaches known melt flow indexes for a similar sealing member, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 2, modified Lee teaches the claim limitations as set forth above. Lee fails to explicitly disclose the thermoplastic elastomer as set forth above.
However Ajbani teaches the thermoplastic elastomer includes at least one of thermoplastic styrenic copolymer [0047], thermoplastic polyurethane [0066], thermoplastic polyolefin (TPO) [0065].
Regarding Claim 3, modified Lee teaches the claim limitations as set forth above. However, Lee is silent to a suitable hardness of the thermoplastic elastomer,
However Ajbani teaches the thermoplastic elastomer has a hardness of less than about 50 shore A [0042], which overlaps with the thermoplastic elastomer has a hardness of 20 shore A to 85 shore A. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the thermoplastic elastomer of Lee to have the hardness properties of the thermoplastic elastomer as taught by Ajbani, because both Lee and Ajbani are drawn to thermoplastic elastomeric sealing members, Lee is silent to suitable thermoplastic elastomer hardness for use in sealing members, and one of ordinary skill in the art would be motivated to look to a similar reference to find a suitable hardness for a similar sealing member. Ajbani teaches known hardnesses for a similar sealing member, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 5, modified Lee teaches the claim limitations as set forth above. Additionally, Lee teaches the sealing member has an O-ring shape with a hollow formed in a center thereof, and the sealing member surrounds the first heating element (see FIG 1).
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20200086068) and Ajbani (US20050148727A1) as applied to claim 1 above, and further in view of Robinson (US 7726320 B2)
Regarding Claim 6, modified Lee teaches the claim limitations as set forth above. However, Lee fails to explicitly disclose teaches the atomizer includes a cartridge, wherein the cartridge includes: a liquid storage containing a liquid composition; a second heating element; and a liquid delivery element.
Robinson teaches a similar aerosol generating device with a tobacco rod inserted into a cigarette insertion passageway and also teaches the atomizer includes a cartridge (see column 6 line 63), wherein
the cartridge includes: a liquid storage containing a liquid composition (aerosol generating material, (cartridge, see column 6 line 63-64; liquid, see column 13 lines 53-54); a second heating element (second resistive heating element); Robinson teaches that the aerosol forming material can produce a visible aerosol upon application of sufficient heat to an aerosol generating material that produces a smoke like aerosol using the aerosol generating liquid (see column 13 lines 29-43) and a liquid delivery element (soaked within absorbent fibrous materials or sponge like materials (column 13 lines 55-56).
It would be obvious to a person of ordinary skill in the art to modify the smoking device of Lee to include the liquid storage cartridge of Robinson in order for the aerosol produced to produce a visible aerosol upon application of sufficient heat to the material that produces a smoke like aerosol using the aerosol generating liquid.
Regarding Claim 7, modified Lee teaches the claim limitations as set forth above. As set forth above, Lee teaches the sealing member is arranged under the cigarette, As taught by Robinson the cartridge is before the cigarette. Thus an ordinary artisan would appreciate that rotating Robinson to the same orientation as modified Lee, the cartridge, the sealing member below the cigarette would be above the liquid delivery element such that the sealing member presses (is adjacent to) the liquid delivery element.
Regarding Claim 8, modified Lee teaches the claim limitations as set forth above. As set forth above, Lee teaches the sealing member under the cigarette. An ordinary artisan would appreciate the purpose of the seal is to seal an airflow in the cigarette insertion passage. Therefore, the sealing member obstructs a flow of a generated aerosol in a predetermined direction (through the cigarette and out the device).
Regarding Claim 9, modified Lee teaches the claim limitations as set forth above. Additionally, as explained above, Lee is modified by Robinson and teaches a movement passage through which the generated aerosol moves toward outside of the aerosol-generating device (e.g., the cartridge of Robinson generates aerosol which passes towards the cigarette insertion chamber, the passage between the cartridge of Robinson and the cigarette insertion passage is the movement passage), wherein
the cartridge includes an outlet for discharging the aerosol toward the movement passage (e.g., aerosol travels from the cartridge to the cigarette), wherein
the sealing member (seal 20 of Lee) is disposed between the movement passage (the exit from the cartridge) and the outlet.
Regarding 10, modified Lee teaches the claim limitations as set forth above. Additionally, Robinson teaches a movement passage (space between cartridge and cigarette rod) through which the generated aerosol moves toward outside of the aerosol-generating device (aerosol on its way out), wherein
at least one hole (air passageway) is formed in an inner wall of the movement passage, wherein the sealing member is arranged to surround the at least one hole (e.g., Robinson teaches the cartridge is positioned before the tobacco rod, therefore an ordinary artisan would appreciate the vapor from the cartridge would need to enter the cigarette in the cigarette insertion passage and its corresponding airflow, therefore it would be obvious to a person of ordinary skill in the art to modify the movement passage to include at least one air passageway to allow the vapor from the cartridge to contribute vapor to the cigarette in the cigarette insertion passage.
Regarding Claim 11, modified Lee teaches the claim limitations as set forth above. Additionally, Robinson teaches a movement passage through which the generated aerosol moves toward outside of the aerosol-generating device, wherein the sealing member has a hollow formed in a center thereof (it has a hole that accommodates the heating element, see FIG 11 above), and is in contact with an inner wall of the movement passage (the air passes through the inner wall to enter the cigarette insertion passage.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 20200086068) and Ajbani (US20050148727A1) as applied to claim 1 above, and further in view of Robinson (US 7726320 B2) and Yamada (US20190247598A1).
Regarding Claim 12, modified Lee teaches the claim limitations as set forth above. However Lee fails to explicitly disclose the atomizer includes:
a liquid storage containing a liquid composition;
Robinson teaches a similar aerosol generating device to Lee with a tobacco rod inserted into a cigarette insertion passageway and also teaches the atomizer includes a cartridge (see column 6 line 63), wherein
the cartridge includes: a liquid storage containing a liquid composition (aerosol generating material, (cartridge, see column 6 line 63-64; liquid, see column 13 lines 53-54); Robinson teaches that the aerosol forming material can produce a visible aerosol upon application of sufficient heat to an aerosol generating material that produces a smoke like aerosol using the aerosol generating liquid (see column 13 lines 29-43) and a liquid delivery element (soaked within absorbent fibrous materials or sponge like materials (column 13 lines 55-56).
It would be obvious to a person of ordinary skill in the art to modify the smoking device of Lee to include the liquid storage cartridge of Robinson in order for the aerosol produced to produce a visible aerosol upon application of sufficient heat to the material that produces a smoke like aerosol using the aerosol generating liquid.
However, Lee and Robinson fails to explicitly disclose a vibrator; a vibration-receiving unit; and a liquid delivery element.
However, Yamada teaches a liquid storage (116) containing a liquid composition [0098];
the atomizer includes a vibrator (See [0099] ultrasonic atomizer is the atomizing part 118); a vibration-receiving unit (the aerosol source, which is carried by the wick to the atomizing part [0099]); and a liquid delivery element (the wick, see [0099]).
Yamada also teaches that the atomizing done by the atomizing part 118 has improved aerosol generation response to the users puffing action and providing an inhaling experience without any feeling of strangeness [0139].
Thus, a person of ordinary skill in the art would be motivated to combine the aerosol generating device of modified Lee with aerosol atomizing part of Yamada in order benefit from an atomizing part that has improved aerosol generation response to the users puffing action and providing an inhaling experience without any feeling of strangeness.
Regarding Claim 13, modified Bless teaches the claim limitations as set forth above. Additionally, Bless teaches the sealing member is disposed on one end of the liquid delivery element, see annotated FIG 4, the sealing member is disposed on one end of the liquid delivery element (e.g., not in the mouthpiece end).
Regarding Claim 14, modified Bless teaches the claim limitations as set forth above. Additionally, Bless teaches the sealing member has a disc shape (See FIG 4, the sealing member part 518 has a shape similar to a disk brake and therefore has a disk shape) and surrounds the liquid delivery element (when assembled the liquid delivery element which is wrapped around by the heating element is surrounded by the sealing member part 518) and at least a portion of the vibrator (Bless teaches that the sealing member is wrapped around the heating element, and since modified Bless comprises the ultrasonic atomizer/vibrator, it is reasonable for one of ordinary skill to conclude that the sealing member of Bless would surround at least a portion of the vibrator.)
Response to Arguments
Applicants’ amendments to claim 8 on 6/21/2025 have been considered and are persuasive. The claim objection to claim 8 has been withdrawn.
Applicant’s arguments, and most specifically claim amendments see Applicant Arguments/Remarks and claim amendments, filed 1/02/2026, with respect to the rejection(s) of claim(s) under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lee and Ajbani as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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, Michael H Wilson can be reached on 571-270-3882. 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.
/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747