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 25-26, 30, 33-38, and 40 are pending and are subject to this office action. Claim 25 is amended. Claims 28-29, 31, and 39 are cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/05/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 01/20/2026 containing amendments and remarks to the claims.
The Examiner’s comment in the previous office action has been addressed. Claim 31 is correctly listed as a canceled claim in the most recent claim set dated 01/20/2026.
Claims 28-29 have been cancelled. Therefore, the rejection of claims 28-29 under 35 U.S.C. 112(a) has been withdrawn.
Claim 29 has been cancelled. Therefore, the rejection of claim 28 under 35 U.S.C. 112(b) has been withdrawn.
Response to Arguments
Applicant’s arguments, see pg. 5-9, filed 01/20/2026, with respect to the rejection of claim 25 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. The prior rejection relied upon a combination of embodiments discloses by Novak and therefore the anticipation rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of previously applied prior art.
On pg. 6-8, Applicant argues that Novak discloses two alternative and mutually exclusive embodiments to address the problem of liquid ingress. The Examiner disagrees. Novak does not disclose that the embodiment in Fig. 6 employing a light guide (175) in a sealing arrangement and the embodiment in Fig. 7 employing a membrane (180) are mutually exclusive. In contrast, Novak explicitly discloses further embodiments can be defined by various combinations of the disclosed embodiments ([0005-0017]). Therefore, a person having ordinary skill in the art could have reasonably combined elements of the disclosed embodiments to arrive at the claimed invention.
On pg. 7, Applicant further argues that membrane (180) provides a sealing function and therefore the light guide does not need to be formed of an elastomeric material. While Novak discloses the light guide (175) may instead be formed of a rigid plastic to optimize light diffusion when a membrane (180) is included ([0068]), Novak does not require that the light guide be formed of a rigid plastic and does not exclude an elastomeric material from being used.
On pg. 8-9, Applicant argues that Novak does not disclose that the light guide is resiliently deformed between the membrane and the upper surface of the circuit board. The Examiner disagrees. Novak discloses the light guide (175, “membrane support element”) is made of an elastomeric material such as silicone rubber ([0065]) to provide a sealing arrangement with the outer housing (102) and the light guide (175) is sandwiched between the circuit board (141) and the inner wall of housing (102) around the periphery of the light window (160, Fig. 6, [0065]). “A sealing arrangement” with the outer housing reasonably suggests the elastomeric light guide (175) is pushed against the inner surface of the housing (175) and assumes a deformed condition. If the light guide (175) was not pushed against the inner surface of the housing (102) it would allow for a gap between the light guide (175) and the housing (102) which would not be in a sealing arrangement.
The rejections below are modified based on Applicant’s amendment.
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.
Claims 25-26, 30, 33-34, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1, as cited on IDS dated 11/03/2022).
The below rejections are made in reference to the annotated Fig. 7 below.
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Regarding claim 25, Novak discloses an aerosol delivery device (10, Fig. 1), comprising:
An outer housing (102) defining a chamber and having an inner surface facing an interior of the chamber,
A light window (160, “opening in the housing”),
A light source (139) in the outer housing (102) such that light is visible through the light window (160), and;
A printed circuit board (141) mounted in the housing (102), spaced from the light window (160), having an upper surface facing the light window (160), where the light source (139) is provided on the printed circuit board (141, Fig. 6, Fig. 7, [0049-0051, 0061]).
Novak discloses two embodiments for providing water resistance at the light window (160, [0064]).
Embodiment 1:
A membrane (180) extending over the light window (160), the membrane (180) being sufficiently thin and translucent to allow light transmission from the light source (139) to pass through the light window (160, Fig. 7, [0049-0050, 0067-0068]).
The membrane (180) is received inside the chamber and has a periphery that lies in contact with an inner surface of the housing (102, Fig. 7).
Embodiment 2:
A light guide (175, “membrane support element”) located on the upper surface of the circuit board (141), such that the light guide (175) upstands from the circuit board towards the light window (160) and lies in contact with the periphery of the light window (160, Fig. 6, [0065]).
The light guide (175) has an upper surface that faces the light window (160, Fig. 6).
The light guide (175, “membrane support element”) is made of an elastomeric material (“a resiliently deformable material”) to provide a sealing arrangement with the outer housing (102, Fig. 6, [0065]).
Novak does not explicitly disclose an embodiment having both a membrane (180) extending over the light window (160, Fig. 7) and the light guide (170) in a sealing arrangement with the light window (160, Fig. 6).
However, Novak discloses further embodiments can be defined by various combinations of the disclosed embodiments ([0005-0017]).
Therefore, a person having ordinary skill in the art could have reasonably arrived at an aerosol delivery device (10) comprising elements of both embodiment 1 and embodiment 2, such the aerosol delivery device (10) comprises a membrane (180) having a periphery in contact with an inner surface of the housing (102) and extending over the light window (160) and a light guide (175) provided between the circuit board (141) and the membrane (180), where an upper surface of the light guide (175, “membrane support element”) lies in contact with the periphery of the membrane (180) in contact with the inner surface of housing (102, Fig. 6, Fig. 7).
In regards to the limitation requiring the membrane support element assuming a deformed condition between the periphery of the membrane and the upper surface of the circuit board such that the membrane support element applies a biasing force against the peripheral region of the membrane to push it against the inner surface of the housing, Novak discloses the light guide (175, “membrane support element”) is made of an elastomeric material such as silicone rubber to provide a sealing arrangement with the outer housing (102) and the light guide (175) is sandwiched between the circuit board (141) and the inner wall of housing (102) around the periphery of the light window (160, Fig. 6, [0065]). “A sealing arrangement” with the outer housing reasonably suggests the elastomeric light guide (175) is pushed against the inner surface of the housing (175) and assumes a deformed condition.
Regarding claim 26, Novak discloses the membrane (180) is sufficiently thin and translucent to allow light transmission (“diffuses light”) through the light window (160, Fig. 7, [0049, 0068]).
Regarding claim 30, Novak discloses the light guide (175, “membrane support element”) is made of a light conducting material ([0053]).
Regarding claim 33, Novak discloses the membrane (180) extending over the light window (180, “opening in the housing”) is formed of a breathable material and provides venting (Fig. 7, [0068-0069]) and therefore is considered to provide egress of gas from the housing (102).
Regarding claim 34, Novak discloses the membrane (180) is formed of a breathable (“gas permeable”) material such as a GORE-TEX® membrane (Fig. 7, [0068-0069]).
Regarding claim 38, Novak discloses a battery (116) received in carrier within the housing (102, Fig. 5) as shown in Fig. 5 below. The carrier has open regions. A person having ordinary skill in the art would recognize that the open regions would allow gas emitted by the battery (116) to circulate within the housing (102).
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Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1, as cited on IDS dated 11/03/2022), in view of Sanders (US 20140083296 A1).
Regarding claim 35, Novak disclose the membrane is a breathable PTFE membrane and that the membrane achieves water proofing and venting to a desired standard ([0068]).
Novak does not explicitly disclose the pore size of the membrane (180).
However, Sanders, directed to a venting assembly (30) for electronic enclosures (50, Fig. 1, [0003]), discloses:
A venting assembly (30) comprising a membrane (100) configured to prevent water and particles from entering the enclosure (50) and allow gas flow for pressure equalization ([0030]).
The membrane is an expanded polytetrafluoroethylene (ePTFE) membrane having an average pore size between 0.001 and 0.8 microns ([0054]). The claimed pore size lies within the range taught by the prior art and is therefore considered prima facie obvious. The limitation “in the region of 0.65um” in interpreted as about 0.65 um.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Novak, by providing a membrane with a pore size of 0.001 - 0.8 microns as taught by Sanders because both Novak and Sanders are directed to pressure equalization in an electronic enclosure, Novak is silent to the pore size of the ePTFE membrane, Sanders teaches known pore size ranges of an ePTFE membrane used for pressure equalization, and one having ordinary skill in the art would be motivated to look to similar membranes for workable ranges of pore size and this involves applying a known pore size to a similar membrane in a similar device to yield predictable results.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1, as cited on IDS dated 11/03/2022) in view of Ouyang (US 20200128881 A1).
Regarding claim 36, Novak disclose the membrane is a breathable PTFE membrane ([0068]).
Novak does not explicitly disclose the thickness of the membrane.
However, Ouyang, directed to an electronic cigarette (abstract), discloses:
A waterproof and breathable membrane (50) disposed in the air inlet (121) of an atomizing device (Fig. 2, [0029]).
The base material (51) of the waterproof and breathable membrane (50) is made of polytetrafluoroethylene and has a thickness between 0.1 mm to 0.5 mm (Fig. 5, [0031, 0037]). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Novak, by providing a membrane with a thickness of 0.1 to 0.5 mm as taught by Ouyang because both Novak and Ouyang are directed to electronic cigarettes, Novak is silent to the thickness of the ePTFE membrane, Ouyang teaches known thicknesses of a PTFE membrane, and one having ordinary skill in the art would be motivated to look to similar membranes for workable ranges of thickness and this involves applying a known thickness to a similar membrane in a similar device to yield predictable results.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1, as cited on IDS dated 11/03/2022) in view of Zero (US 20190268692 A1).
Regarding claim 37, Novak disclose the membrane is a breathable PTFE membrane and that the membrane achieves water proofing and venting to a desired standard ([0068]).
Novak does not explicitly disclose the venting capacity of the membrane.
However, Zero, directed to a membrane for protecting electronic components (abstract, [0003]), discloses:
A protective cover assembly (100) comprising an ePTFE membrane (120) extending over an opening (116) in a housing (108, Fig. 1, [0030-0033, 0035])
The membrane has an airflow of at least 10L/hr per 2.0cm2 at 1.2 kPa ([0010, 0067]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Novak, by providing a membrane with an airflow of at least 10L/hr per 2.0cm2 at 1.2 kPa as taught by Zero because both Novak and Zero are directed to protective membranes in electronic devices, Novak is silent to the venting capacity of the ePTFE membrane, Zero teaches known airflow ranges of a ePTFE membrane, and one having ordinary skill in the art would be motivated to look to similar membranes for workable ranges of venting capacity and this involves applying a known airflow to a similar membrane in a similar device to yield predictable results.
Zero discloses an airflow of greater than 10L/hr per 2.0cm2 at 1.2 kPa while the claimed venting capacity is specified at 7kPa. A person having ordinary skill in the art would reasonably expect the membrane disclosed by Zero to have a higher airflow when tested at 7kPa, but still be in a range that overlaps with the claimed range.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Novak (US 20200154789 A1, as cited on IDS dated 11/03/2022) in view of Beer (US 20150334863 A1).
Regarding claim 40, Novak discloses the light guide (175, “membrane support element”) is formed of a light conducting material to allow light to pass through ([0053]) and a membrane (180) for providing a venting function ([0068]).
Novak does not explicitly disclose an opening formed in the light guide (175, “membrane support element”).
However, Beer, directed to a pressure compensation enclosure for a control unit ([0014]), discloses:
A housing (1) comprising a membrane (3) covering an opening (2) in the housing (1, Fig. 5, Fig. 6, [0040]). The portion of the housing supporting the membrane (3) is considered to be a membrane support element.
The opening (2) forms a pressure compensation opening which allows pressure to be released from the housing (1) to prevent damage to the housing or failed seals from pressure build up ([0042]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Novak, by providing an opening in the light guide/membrane support element as taught by Beer because both Novak and Beer are directed to pressure equalization in an electronic enclosure, Novak teaches the membrane provides a venting function for the device and Beer teaches an opening in a membrane support element for pressure compensation to prevent damage to the housing and this involves applying a known pressure compensation hole in a similar electronic enclosure to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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