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 .
Status of the Claims
Claims 1-6, 9, and 16-20 are currently pending and are subject to this office action. Claims 1 and 9 are amended. Claims 7-8 and 10-15 are canceled. This office action is in response to Applicant’s amendment filed on 02/26/2026.
Response to Amendments
Examiner acknowledges Applicant’s response filed on 02/26/2026 containing amendments and remarks to the claims.
In response to Applicant’s amendments filed 02/26/2026, the Examiner withdraws the 35 U.S.C. 112(d) rejection for being improperly dependent.
Response to Arguments
Applicant’s arguments, on pages 5-6, filed 02/26/2026, with respect to the rejection of claims 1 under 35 U.S.C. 102 have been fully considered and are not persuasive. The Applicant argues that Figures 6 and 7 provide alternative ways of providing a seal, and one would see no reason to combine them to meet the claimed invention. Further, Novak does not mention how the light guide is held in position between the circuit board and liquid resistive member.
The Examiner respectfully disagrees. Novak teaches a light guide, that can be configured to function as a seal, where the light guide may be formed of elastomeric material and provides a waterproof seal [0065]. The light guide (Fig. 7: #175) is described as a waterproof seal [0065], not an airtight or gas blocking structure. The liquid resistive member (Fig. 7: #175) is also used for waterproofing, showing that both components solve the same problem to improve sealing and waterproofing capabilities within the device. The use of an elastomeric material would have been understood by one of ordinary skill in the art to permit deformation under compression when assembled within the device housing, as elastomeric sealing members are known to be compressible to form fluid tight interfaces. Further, Novak discloses where the use of this light guide can be in one or more embodiments [0065], showing the possibility for combination with other components (MPEP 2143).
Furthermore, Figure 7 illustrates a layered configuration of components within the housing, including the light guide (Fig. 7: #175) and the liquid resistive member (Fig. 7: #180). The light guide (Fig. 7: #180) is arranged between the circuit board (Fig. 7: #141) and the liquid resistive member (Fig. 7: #180). Thus, Novak does disclose the positioning of the light guide within the device. Given that the light guide (Fig. 7: #175) may be formed of elastomeric material [0065], it would have been understood that the component can be retained through compression and engagement with its surrounding components.
Applicant’s arguments, on pages 6-8, filed 02/26/2026, with respect to the rejection of claims 1 under 35 U.S.C. 102 have been fully considered and are not persuasive. The Applicant has amended claims 1 to include a limitation that was not previously presented, specifically, “second regions that do not lie in contact with said portion to provide spaces between said second regions of the upper surface of the membrane support and said portion of the peripheral region of the sheet for the passage of gas out of the housing through the vent opening”. However, upon further consideration, a new ground(s) of rejection is made in view of Liu (US 20140311506 A1).
The following are modified rejections based on Applicant’s amendments to the claims.
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 1, 2, 6, 9, 16, 17, 18, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1), and further in view of Liu (US 20140311506 A1).
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With regard to Claim 1, Novak teaches (i) an aerosol delivery device comprising an outer housing (Fig. 7: #102) with an inner surface, comprising a light window (Fig. 7: #160), meeting the claim limitation of a vent opening. (ii) The device comprises a battery inside the housing (Fig. 7: #102, [0061]). (iii) A liquid resistive member (Fig. 7: #180), with a venting function, is formed from a GORE-TEX membrane and extends over the light window (Fig. 7: #160, [0068]). The liquid resistive member may be in the form of sheet material [0068] and comprises a border, shown by the outer lines of the liquid resistive member (Fig. 7: #180), that extends past the sides of the light window (Fig. 7: #160) to an end of the liquid resistive member (Fig. 7: #180).
(iv) The top surface of the border of the liquid resistive member (Fig. 7: #180) is in contact with the inner surface of the housing (Fig. 7: #102), past the window ends (Fig. 7: #164 & #166). (v) A printed circuit board (Fig. 7: #141) is located within the housing (Fig. 7: #102) and spaced from the liquid resistive member (Fig. 7: #180). The upper surface of the circuit board (Fig. 7: #141) faces the liquid resistive member (Fig. 7: #180) and the lower surface of the circuit board (Fig. 7: #141) faces the battery (Fig. 9: #116). (v) The device further includes a light guide (Fig. 7: #175), relating to the membrane support of the claimed invention. The light guide (Fig. 7: #175) is positioned with an upper surface facing the liquid resistive member (Fig. 7: #180) and located on an upper surface of the printed circuit board (Fig. 7: #141), such that the light guide (Fig. 7: #175) rises towards the liquid resistive member (Fig. 7: #180).
(vi) The border of the liquid resistive member (Fig. 7: #180) comprises a second surface on the bottom of the member and the upper surface of the liquid guide (Fig. 7: #175) is adjacent with the second surface on the bottom of the liquid resistive member (Fig. 7: #180). While Figure 7 only illustrates the light guide (Fig. 7: #175) and liquid resistive member (Fig. 7: #180) in close proximity, based on the elastomeric material of the light guide [0065], the light guide can be compressed to contact the bottom of the liquid resistive member (Fig. 7: #180). (vii) The outer border of the liquid resistive member (Fig. 7: #180) comprises a region (Fig. 7: "S") that does not lie in contact with the bottom surface of the liquid resistive member (Fig. 7: #180), creating a space between the upper surface of the liquid guide (Fig. 7: #175) and bottom surface of the liquid resistive member (Fig. 7: #180). Further, the liquid resistive member (Fig. 7: #180) may be configured to function as a vent [0068-0069] and is positioned over the light window (Fig. 7: #160), which may be formed as a cut out, slot, or cut away [0050].
(vii) The light guide (Fig. 7: #175) can be made of elastomeric material to provide a waterproof seal, which can be present in one or more embodiments [0065]. One of ordinary skill in the art would find it obvious that such elastomeric materials are capable of deforming under compression. Based on the layered configuration of the components in Novak and the material of the light guide, the light guide would be able to deform between the liquid resistive member (Fig. 7: #180) and the light source (Fig. 7: #139) of the printed circuit board (Fig. 7: #141), to support holding the upper surface of the border of the liquid resistive member (Fig. 7: #180) towards the housing (Fig. 7: #102) and to maintain a sealing engagement [0065]. Further, one would be motivated to use both the light guide (Fig. 7: #175) and the liquid resistive member (Fig. 7: #180) in a single embodiment, as they are both prevent liquid entry [0065 & 0068]. Novak teaches all the limitations of the claims as set forth above, however Novak is silent to:
Spaces for the passage of gas out of the housing through the vent opening
In regards to i., Liu, directed to a disposable electronic cigarette, teaches an indicator light embedded within an air inlet hole (Fig. 4: #21), wherein internal gaps are defined between the indicator light (Fig. 4: #210) and the air inlet hole (Fig. 4: 321), to facilitate airflow through the structure [0046]. One of ordinary skill in the art would have been motivated to configure the spaces in Novak to allow passage of gas using the technique of Li to improve airflow performance [0004], as Novak already places the structure in a position for gas flow to occur with the liquid resistive member functioning as a vent and being positioned behind an opening.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the vent opening of modified Novak to comprise spaces for the passage of gas out of the housing through the vent opening because both Novak and Liu are directed to maintaining efficient airflow during use in aerosol generating devices. Liu teaches internal gaps between and indicator light and inlet hole to improve airflow performance [0004] and this merely involves combining prior art elements according to known airflow methods to yield predictable results.
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With regard to Claim 2, Novak teaches wherein the liquid resistive member (Fig. 7: #180) is substantially water resistive or water-proof [0068].
With regard to Claim 6, Novak teaches wherein the liquid resistive member (Fig. 7: #180) may be glued to an inner surface of the housing (Fig. 7: #102, [0068]).
With regard to Claim 9, Novak teaches wherein the light guide (Fig. 7: #175) is coupled to a second surface on the bottom of the liquid resistive member (Fig. 7: #180).
With regard to Claim 16, Novak teaches wherein a light source (Fig. 7: #139) is positioned on the printed circuit board (Fig. 7: #141, [0061]) and positioned beneath the light window (Fig. 7: #160) such that, when on, light from the light source (Fig. 7: #139) is visible through the liquid resistive member (Fig. 7: #180) extending over the light window (Fig. 7: #160, [0068]).
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With regard to Claim 17, Novak teaches wherein the liquid resistive member (Fig. 7: #180) can be made of translucent material to allow LED light transmission through the member [0068] and thick, providing diffusion of the light [0069].
With regard to Claim 18, Novak teaches wherein the light guide (Fig. 6: #175) is positioned so that it extends over the light source (Fig. 6: #139). Figure 6 illustrates wherein the light guide (Fig. 6: #175) forms a recess to contain the light source (Fig. 6: #139) on the printed circuit board (Fig. 6: #141).
With regard to Claim 19, Novak teaches wherein the light guide (Fig. 7: #175) can be formed from transparent or translucent material to aid in the diffusion or light as it passes through the material [0053].
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With regard to Claim 20, Novak teaches wherein the device comprises (i) a cartridge (Fig. 4: #200) including a heater (Fig 4: #219) and liquid (Fig. 4: #223, [0083]). (ii) A control device with the printed circuit board (Fig. 7: #141) can signal a draw on the device and cause the battery to deliver power to the heater in the cartridge for atomization [0060].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1) and Liu (US 20140311506 A1), as applied to claim 1 above, and further in view of Giglia (EP 3078412 A1).
With regard to Claim 3, modified Novak teaches all of the limitations in the claims as set forth above, however modified Novak is silent to:
Wherein the membrane has a pore size in the region of 0.65 µm
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Giglia, directed to enhanced aerosol testing, teaches a comparison of membrane samples with different pore ratings and the percent of particle penetration for each rating wherein the membrane has a pore size in the region of 0.65 µm (Table 1, Pg. 4, [0014]). Based on Table 1, it can be seen that for the membrane with a pore size of 0.65 µm, there was a 0% particle penetration point, showing that 0.65 µm was a predetermined pore size in the claimed invention, meeting the claim limitation of wherein the membrane has a pore size in the region of 0.65 µm.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the membrane of modified Novak, by including a pore size of 0.65 µm because both Novak and Giglia are directed to the control and use of aerosol with membranes. Giglia teaches a pore rating of 0.65 µm to determine where the retention efficiency of a membrane is 100% and this merely involves applying a known technique to a known aerosol delivery device to yield predictable results.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1) and Liu (US 20140311506 A1), as applied to claim 1 above, and further in view of Harada (EP 3220453 A1)
With regard to Claim 4, modified Novak teaches a membrane and all of the limitations in the claims as set forth above, however modified Novak is silent to:
Wherein the membrane has a thickness of between 0.11mm – 0.19mm
Harada, directed to an electrolyte battery, teaches wherein a thickness of a laminate film, similar to the membrane in the claimed invention, is 0.2mm or less [0092], showing a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious, meeting the claim limitation of the membrane having a thickness of between 0.11mm – 0.19mm.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the membrane of modified Novak by including a thickness between 0.11mm – 0.19mm because both Novak and Harada are directed to batteries in portable systems. Harada teaches a film with a thickness of 0.2mm or less to protect a member from contaminants and this merely involves applying known work prompting variations of a protective membrane or film to use in a similar field based on batteries in portable systems.
With regard to Claim 5, Novak teaches a vent comprising a breathable membrane material [0068], however, Novak does not appear to explicitly disclose that the membrane has a venting capacity of 1900- 2400ml/cm2 /min at a pressure of 7kpa.
However, a person of ordinary skill in the art would recognize that the venting membrane would have to include some amount of venting capacity to allow gas and air to be vented from the housing. Given that the purpose of the membrane is to allow venting of gas and air, it would be obvious for one having ordinary skill in the art to optimize the venting capacity of the membrane to allow for suitable passage of gas and air through the membrane and determine a workable range of venting capacities for the membrane to be used in the housing, absent evidence to the contrary.
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 OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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