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 .
This action is in response to the filing on 2/17/2026. Since the previous filing, claims 1, 19 and 24 have been amended, claims 11 and 12 have been cancelled and no claims have been withdrawn. Thus, claims 1-10, 13-19 and 24 are pending in the application.
In regards to the previous 112 Rejection, Applicant has amended to overcome these rejections and they are withdrawn with new rejections entered below.
In regards to the previous 102 and 103 Rejections, Applicant has amended to overcome these rejections and they are therefore withdrawn with new rejections entered below.
Claim Objections
Claims 13, 14 and 16 are objected to because of the following informalities:
Claim 13 should now depend from claim 1
Claim 14 should now depend from claim 1
Claim 16 should not depend from claim 1
Appropriate correction is required.
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 17 is 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.
Claim 17 recites the limitations that “at least a portion of an external surface of the spacer is configured to be bonded to at least a portion of one or more of the boundary walls of the reservoir, using a process selected from the set consisting of an adhesive bonding process, a welding process, or a solvent bonding process”. However, amended claim 1 recites “wherein the spacer is configured to be attached to one or more internal boundary walls of the reservoir housing; and wherein at least a portion of an external surface of the spacer is configured to interact mechanically with at least a portion of one or more of the internal walls of the reservoir housing so as to retain the spacer in a fixed position relative to the reservoir”. As dependent claims must incorporate all the limitations of the preceding claims, the space of claim 17 is therefore both mechanically attached to the boundary walls and attached using adhesive bonding process, a welding process, or a solvent bonding process. This combination of attachments does not appear to be taught within the instant specification. The instant specification appears to teach either a mechanical connection or adhesive bonding process, a welding process, or a solvent bonding process, but not both in tandem.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8, 13-16, 19 and 24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Daryani (US 2018/0249762).
In regards to claim 1, Daryani discloses an article for use with a non-combustible aerosol delivery system (electronic smoking device 210), the article comprising a reservoir configured to hold a supply of aerosolizable material (liquid reservoir 324/334); wherein the reservoir comprises a reservoir housing having one or more internal boundary walls defining a first volume (rigid hollow cylindrical body 141), and wherein the article further comprises a spacer fully or partially located within the first volume of the reservoir housing (piston 60), the spacer being configured to reduce an available fill volume of the reservoir, such that a second volume of the reservoir housing available for storing aerosolizable material is smaller than the first volume (paragraph 38, Fig 6A), wherein the spacer is configured to be attached to one or more internal boundary walls of the reservoir housing (Fig 6A), wherein at least a portion of an external surface of the spacer is configured to interact mechanically with at least a portion of one or more of the internal walls of the reservoir housing so as to retain the spacer in a fixed position relative to the reservoir (piston 60 mechanically connected to blocking unit 62, 64, 66, paragraph 39, Fig 5A-5C and 6A).
In regards to claim 2, Daryani discloses the device of claim 1 and Daryani further discloses wherein the article further comprises an aerosol generating component (atomizer 26, paragraph 19, Fig 6A).
In regards to claim 3, Daryani discloses the device of claim 2 and Daryani further discloses wherein the aerosol generating component is not located within the reservoir (Fig 6A).
In regards to claim 4, Daryani discloses the device of claim 1 and Daryani further discloses configured such that the spacer cannot be removed from the article without damaging the article (piston 60 cannot be removed without rendering the device nonfunctional, paragraph 38-39, Fig 6A).
In regards to claim 5, Daryani discloses the device of claim 4 and Daryani further discloses wherein configuring the article such that the user cannot remove the spacer without causing damage to the article comprises locating the spacer within the reservoir housing during manufacture of the reservoir housing (piston 60 built into reservoir, paragraph 38-39, Fig 6A).
In regards to claim 6, Daryani discloses the device of claim 1 and Daryani further discloses wherein the reservoir housing is configured with an aperture via which the spacer can be introduced to the reservoir housing (see Annotated Fig 6A), and wherein the aperture is configured to be non-reversibly sealed following the introduction of the spacer such that the spacer cannot be removed from the reservoir via the aperture (paragraph 38-39).
PNG
media_image1.png
450
360
media_image1.png
Greyscale
Annotated Fig 6A
In regards to claim 8, Daryani discloses the device of claim 6 and Daryani further discloses wherein the aperture comprises a one-way valve which permits the spacer to be introduced into the reservoir but prevents the spacer being removed from the reservoir (piston moves into reservoir but cannot be removed without destroying the device, paragraph 38-41, Fig 6A).
In regards to claim 13, Daryani discloses the device of claim 1 and Daryani further discloses wherein at least one of the spacer and the reservoir housing is formed of a resilient material, such that at least one of the topology of one or more portions of the outer surface of the spacer and the topology of one or more portions of the internal walls of the reservoir deform when the spacer is introduced to the reservoir, such that a portion of the outer surface of the spacer and a portion of one or more of the boundary walls of the reservoir are biased into contact with one another when the spacer is located within the reservoir housing (spring based blocking element 62 on piston 60 interacts with in recesses 64 on exterior of hollow body 141, paragraph 39).
In regards to claim 14, Daryani discloses the device of claim 1 and Daryani further discloses wherein the spacer comprises at least one latching feature configured to engage mechanically with at least one co- operating latching feature on a boundary wall of the reservoir when the spacer is located within the reservoir housing (spring based blocking element 62 on piston 60 interacts with in recesses 64 on exterior of hollow body 141, paragraph 39, Fig 6A).
In regards to claim 15, Daryani discloses the device of claim 14 and Daryani further discloses wherein the latching feature comprises a tab, groove or depression formed in the spacer (spring based blocking element 62 on piston 60 interacts with in recesses 64 on exterior of hollow body 141, paragraph 39, Fig 6A).
In regards to claim 16, Daryani discloses the device of claim 1 and Daryani further discloses wherein at least a portion of an external surface of the spacer is configured to be bonded to at least a portion of one or more of the boundary walls of the reservoir (spring based blocking element 62 on piston 60 interacts with in recesses 64 on exterior of hollow body 141, paragraph 39, Fig 6A, wherein “bond” is “something that binds or restrained” as defined by the Merriam-Webster Dictionary, the piston is retrained from free movement by the recesses).
In regards to claim 19, Daryani discloses the device of claim 1 and Daryani further discloses wherein the spacer engages with the internal walls of the reservoir housing so as to partition the first volume (rigid tank 41) into two partitioned volumes (fist chamber 40 and second chamber 42), such that aerosolizable material introduced to a first one of the two partitioned volumes is substantially prevented from passing into the second one of the two partitioned volumes, and wherein the article is configured such that the volume of the first one of the two partitioned volumes is smaller than the first volume (Fig 6A).
In regards to claim 24, Daryani discloses a spacer for use with an non-combustible aerosol delivery system (piston 60) comprising a reservoir (liquid reservoir 324) configured to hold a supply of aerosolizable material, wherein the reservoir comprises a reservoir housing having one or more internal boundary walls defining a first volume (rigid hollow cylindrical body 141), wherein the spacer is configured to be fully or partially located within the first volume of the reservoir housing (Fig 6A); and wherein the spacer is configured to occupy a portion of the first volume of the reservoir housing, such that a second volume of the reservoir housing not occupied by the spacer is smaller than the first volume (paragraph 38, Fig 6A) wherein the spacer is configured to be attached to one or more internal boundary walls of the reservoir housing (Fig 6A), wherein at least a portion of an external surface of the spacer is configured to interact mechanically with at least a portion of one or more of the internal walls of the reservoir housing so as to retain the spacer in a fixed position relative to the reservoir (piston 60 mechanically connected to blocking unit 62, 64, 66, paragraph 39, Fig 5A-5C and 6A).
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.
Claim(s) 7, 9, 10 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daryani (US 2018/0249762).
In regards to claim 7, Daryani discloses the device of claim 6 and Daryani further discloses that the aperture is sealed (paragraph 38).
With regard to Claim 7 which is a product by process claim, the product disclosed by the prior art is identical to the claimed product, even though (it is made by a somewhat different process/the prior art is silent on the method of making). There is no evidence to show that the claimed process imparts any patentable distinction between the claimed product and that of the prior art. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). (MPEP 2113). Therefore, while Daryani does not explicitly disclose wherein the aperture is sealed via a process selected from the set consisting of welding, adhesive bonding and mechanical fastening, claim 7 recites a product-by-process claim and patentability of the produce created by the process is determined by differences between the claimed product and the prior art product rather than the process of making the product.
In regards to claim 9, Dyrani discloses the device of claim 1.
Further, with regard to Claim 9 which is a product by process claim, the product disclosed by the prior art is identical to the claimed product, even though (it is made by a somewhat different process/the prior art is silent on the method of making). There is no evidence to show that the claimed process imparts any patentable distinction between the claimed product and that of the prior art. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). (MPEP 2113). Therefore, while Daryani does not explicitly disclose wherein assembling the reservoir housing comprises joining together a plurality of reservoir housing portions via one or more assembly steps to form the reservoir housing, and wherein the spacer is incorporated into the internal volume of the reservoir housing during assembly of the reservoir, claim 9 recites a product-by-process claim and patentability of the produce created by the process is determined by differences between the claimed product and the prior art product rather than the process of making the product.
In regards to claim 10, Daryani teaches the device of claim 9.
With regard to Claim 10 which is a product by process claim, the product disclosed by the prior art is identical to the claimed product, even though (it is made by a somewhat different process/the prior art is silent on the method of making). There is no evidence to show that the claimed process imparts any patentable distinction between the claimed product and that of the prior art. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). (MPEP 2113). Therefore, while Daryani does not explicitly teach wherein the reservoir housing portions are joined together via processes selected from the set consisting of welding, adhesive bonding, solvent bonding, and mechanical fastening, claim 10 recites a product-by-process claim and patentability of the produce created by the process is determined by differences between the claimed product and the prior art product rather than the process of making the product.
In regards to claim 18, Daryani discloses the device of claim 1.
With regard to Claim 18 which is a product by process claim, the product disclosed by the prior art is identical to the claimed product, even though (it is made by a somewhat different process/the prior art is silent on the method of making). There is no evidence to show that the claimed process imparts any patentable distinction between the claimed product and that of the prior art. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). (MPEP 2113). Therefore, while Daryani does not explicitly disclose wherein a portion of the reservoir is formed via a molding process, and wherein the spacer is introduced to the mold before or during the molding process such that a portion of the reservoir housing is formed around the spacer, claim 18 recites a product-by-process claim and patentability of the produce created by the process is determined by differences between the claimed product and the prior art product rather than the process of making the product.
Response to Arguments
With regards to the arguments concerning the independent claim, these arguments are addressed in the new grounds of rejection entered 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 Arielle Wolff whose telephone number is (571)272-8727. The examiner can normally be reached Mon-Fri 8:00-4:00.
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, Kendra Carter can be reached at (571) 272-9034. 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.
/ARIELLE WOLFF/ Examiner, Art Unit 3785
/KENDRA D CARTER/ Supervisory Patent Examiner, Art Unit 3785