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 Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
Applicant arguments concerning claim amendments (e.g. “a single mouthpiece configured to delivery emissions from the HNB stick and the ECIG pod into an adult user’s mouth…”) are addressed in the rejections below.
Election/Restrictions
Claims 26-28 and 30-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. The species elected was not “a distinct mouthpiece that encompasses the first mouthpiece and the second mouthpiece”. Election was made without traverse in the reply filed on 7/28/2025.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 4, 5, 11-13, 15, and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanchez et al. (US 20160135506).
Regarding claims 4, 5, 11, 12, and 29, Sanchez et al. disclose a hybrid aerosol generating article with:
a housing (external and internal surfaces and a cavity within inherently having proximal and distal ends, see figure 1), the housing receives
a second fragrance insert (i.e. HNB Stick, see figure 19, 203)
a housing (external and internal surfaces and a cavity within inherently having proximal and distal ends, see figure 19, 221)
a non-liquid aerosol forming material (220)
an air intake and air inlet (217)
a mouthpiece that delivers emissions from both aerosol generators (222) in a single air stream
a heating element [0055]
a first aerosol forming cartridge (i.e. ECIG pod, see figure 19, element 202)
an aerosol forming liquid
a heater [0014] [0008] (211)
an air intake (210)
mouthpiece (opposite the air intake end)
a battery (206)
PNG
media_image1.png
265
600
media_image1.png
Greyscale
PNG
media_image2.png
334
618
media_image2.png
Greyscale
Regarding claim 13, Sanchez et al. disclose that the heater located in the fragrance delivery segment is added to “control the release of fragrance”. This implies that the heater controls the release of fragrance by controlling heat (i.e. temperature) allowing the user to control temperature to control fragrance release.
Regarding claim 15, Sanchez et al. disclose multiple segements in the heat not burn stick [0105](figure 28b, 28c)
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez et al. (US 20160135506) as applied to claim 5 above, and further in view of Sampson et al. (US 20160007649).
Sanchez et al. do not disclose ventilation in the mouthpiece. However, ventilation in the mouthpieces of smoking articles is notoriously well known. Dilution of smoke with outside air through vents is a well-known technique. For instance, Sampson et al. disclose a smoking device with a mouthpiece that draws air in through ventilation holes and mixed it with emissions generated by the device. The ventilation, “results in greater dilution of the smoke stream and thus provides yet further different smoking sensory experience to the user for each inhalation.” [0085]. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use ventilation in the mouthpiece as described by Sampson et al. in the device of Sanchez et al. to provide users with different sensory experiences and dilution of the smoke stream.
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 J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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 at 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.
/Michael J Felton/Primary Examiner, Art Unit 1747