DETAILED ACTION
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 .
Election/Restrictions
Claims 21–22 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected assembly for insertion into a housing of a delivery device, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/10/2025.
Information Disclosure Statement
The foreign references identified in the Information Disclosure Statements filed on 11/03/2022 and 01/10/2025 were searched for corresponding US Patents, Publications, or other English equivalents. Please see below:
CN 101390659 = No US or other English equivalents;
CN 102266125 = No US or other English equivalents;
WO 2020001252 = No US or other English equivalents;
EP 3479585 = US 20180007393;
EP 3590368 = US 20200008479;
EP 3607985 = US 20190021400;
JP 2000122793 = US 20010021098; and
WO 2020104880 = US 20200154789.
Of the above, US 20200008479, US 20190021400, US 20180007393, and US 20010021098 are being cited in the attached PTO-892 because they are not already of record.
Information Disclosure Statement
The IDS filed on 11/03/2022 lists EP 9479585, but Applicant supplied EP 3479858 (note: the last three numbers are different). Accordingly, EP 3479858 and its US equivalent, US 20190124983, are being cited in the attached PTO-892 because they are not already of record.
The IDS filed on 11/03/2022 lists JP 2000122793, but did not supply an English summary (two copies of the foreign reference are provided in the file wrapper but no English summary). Examiner’s inclusion of JP 2000122793’s US counterpart, US 20010021098, remedies the above issue.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification fails to provide antecedent basis for the “vibrating transmission member” in claims 18–19.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “vibrating transmission member” in claims 18–19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the “vibrating transmission member” in claims 18 and 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112 (Written Description)
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 18–19 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.
As demonstrated herein, the specification fails to disclose sufficient corresponding structure(s) to perform function(s) of claim 18 and 19’s recitations of “vibration transmission member.” This/these limitation(s) is/are indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention(s) as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Such a limitations also lack an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. (See MPEP 2163.03 (VI)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14 and 17–20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites “the first major end face” and the “the second major end face.” Both of these limitations lack antecedent basis.
Claim 17 recites “the charge board.” This limitation lacks antecedent basis.
Claims 18–19’s recitations of “vibration transmission member”” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 20 recites “the control module.” This limitation lacks antecedent basis.
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)(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.
(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) 1–3, 10, 12–13, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FORNARELLI US 20190021400.
As to claim 1, FORNARELLI discloses a delivery device comprising;
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a housing (Fig. 3, 10),
a vibration motor (9) for generating haptic feedback to a user ([0086]), and
an elastomeric support (5; [0094]) member received in the housing ([0086]), wherein the vibration motor is mounted within the support member ([0094–95]).
As to claim 2, FORNARELLI discloses a delivery device according to claim 1, wherein the elastomeric support member comprises first and second opposing major faces (Fig. 1), the vibration motor being received in a recess in said first major face (Fig. 1).
As to claim 3, FORNARELLI discloses a delivery device according to claim 2, wherein the vibration motor is a press fit in the recess in the first major face (Fig. 1; [0094]).
As to claim 10, FORNARELLI discloses a delivery device according to claim 1, wherein the elastomeric support member is made of rubber ([0094]).
As to claim 12, FORNARELLI discloses a delivery device according to claim 2, wherein the housing (Fig. 4, 10) includes an end cap (Fig. 7, 114) closing an open end of the housing (Fig. 7), and a battery (Fig. 1, 1) received in the housing ([0075]), wherein the elastomeric support member is received in the housing between the battery and the end cap (Figs. 4 and 7).
As to claim 13, FORNARELLI discloses a delivery device according to claim 12, wherein the support member is an interference fit in the housing ([0092]).
As to claim 20, FORNARELLI discloses a delivery device according to claim 1, comprising a substrate aerosolising module (19/20) including a heater (15) and an aerosolisable substrate (16/17/19), the substrate aerosolising module being configured to aerosolise the substrate in response to a control signal from a control module (11; [0109]).
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.
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) 1–3, 12–17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view of NOVAK US 20200113242 (of record).
As to claim 1, NOVAK discloses a delivery device comprising;
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a housing (200),
a vibration motor (218) for generating haptic feedback to a user ([0121]), and
a support member (either 212/220) received in the housing (Fig. 3; [0118]) wherein the vibration motor is mounted within the support member ([0118]).
NOVAK further teaches that the support member (212) may be made from a molded elastomeric polymer material ([0119]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate these specific teachings into the overall disclosure of NOVAK illustrated in Figs. 1–5b for the benefit of structurally sufficient support member (as taught by NOVAK at [0119]).
As to claim 2, NOVAK makes obvious a delivery device according to claim 1.
NOVAK further discloses wherein the elastomeric support member comprises first and second opposing major faces, the vibration motor being received in a recess in said first major face (Fig. 3)
As to claim 3, NOVAK makes obvious a delivery device according to claim 2.
NOVAK further discloses wherein the vibration motor (218) is a press fit in the recess in the first major face (Fig. 3, [0121]).
As to claim 12, NOVAK makes obvious a delivery device according to claim 2.
NOVAK further discloses wherein the housing includes an end cap (224) closing an open end of the housing (Fig. 3 near 225), and a battery (216) received in the housing (202), wherein the elastomeric support member is received in the housing between the battery and the end cap (base of 212 is between the battery 216 and end cap 224).
As to claim 13, NOVAK makes obvious a delivery device according to claim 12.
NOVAK further discloses wherein the support member is an interference fit in the housing (see nested relationship illustrated in Figs. 3–4).
As to claim 14, NOVAK makes obvious a delivery device according to claim 12.
NOVAK further discloses wherein the first major end face (top of 212) of the elastomeric support member faces the battery (216), and the second major end face (bottom of 212) of the elastomeric support member faces the end cap (224).
As to claim 15 NOVAK makes obvious a delivery device according to claim 12.
NOVAK further discloses wherein the elastomeric support member is at least partially received in the end cap (Figs. 3–5B illustrating that support member 212 is nested within 224)
As to claim 16, NOVAK makes obvious a delivery device according to claim 15.
NOVAK further discloses wherein the elastomeric support member (212) is an interference fit in the end cap (the tabs of 224 lock into 212).
As to claim 17, NOVAK makes obvious a delivery device according to claim 15.
NOVAK further discloses wherein a charge board (217/219/234) is received within, and is attached to, the end cap (Fig. 3, [0121]).
As to claim 20, NOVAK makes obvious a delivery device according to claim 1.
NOVAK further discloses comprising a substrate aerosolising module (Figs. 7–8; [0133]) including a heater (318) and an aerosolisable substrate (liquid within tank; [0145]), the substrate aerosolising module being configured to aerosolise the substrate in response to a control signal from the control module ([0145]).
Claim(s) 1 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view FERRIE US 20220061399 in view of FORNARELLI US 20190021400.
Note: one of ordinary skill in the art understand that both FORNARELLI US 20190021400 and NOVAK US 20200113242 arrive at the broadest reasonable interpretation of “an aerosolisable substrate.” For the sake of compact prosecution, FERRIE is being applied hereinbelow to demonstrate that, even if the claims were amended to more narrowly require the “aerosolisable substrate” to be a heat-not-burn type substrate, this narrower amendment is obvious in view of the disclosure of FERRIE US 20220061399. Examiner hopes this helps advance compact prosecution.
As to claims 1 and 20, FERRIE discloses a delivery device comprising;
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claim 1: a housing (209; [1489]),
claim 20: a substrate aerosolising module (Fig. 2E) including a heater (204/223; [1503]) and an aerosolisable substrate (202, [1488]), the substrate aerosolising module being configured to aerosolise the substrate in response to a control signal from the control module ([1508]).
FERRIE further teaches a vibration motor for generating haptic feedback to a user ([0666]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the above teachings into the disclosure referenced above for the benefit of notifying a user that the device is entering or leaving a safety mode (as taught by FERRIE at [0666]).
However, FERRIE fails to explicitly dislcose the particularities of the vibration motor and fails to disclose an elastomeric support member received in the housing, wherein the vibration motor is mounted within the support member.
FORNARELLI teaches a vibration motor (9) for generating haptic feedback to a user ([0086]), and an elastomeric support (5; [0094]) member received in the housing ([0086]), wherein the vibration motor is mounted within the support member ([0094–95]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the particularities of FORNARELLI’s teachings into generic disclosure of FERRIE for the benefit of localize the vibrations to the user’s hands (as taught by FORNARELLI at [0094]).
Accordingly, FERRIE and FORNARELLI make obvious at least claims 1 and 20.
Claim(s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view of NOVAK US 20200113242 (of record) and YU US 20200178616.
As to claim 4, NOVAK makes obvious a delivery device according to claim 2.
NOVAK further teaches an audio feedback component can be included in addition to the vibrating haptic feedback component ([0123]).
However, NOVAK fails to explicitly disclose a buzzer for generating audible signals.
YU teaches a buzzer (232) for generating audible signals ([0090]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date with the desire to supply audio feedback in addition to the vibrating haptic feedback component (as taught by NOVAK at [0123]) to incorporate the specific teachings of YU’s buzzer into the generic disclosure of NOVAK for the benefit of generating the audible feedback, e.g., reminding a user to be aware of the dosage control (as taught by YU at [0088]).
As to claim 9, NOVAK and YU make obvious a delivery device according to claim 4.
NOVAK further discloses comprising a charge circuit board (234; [0121]).
NOVAK fails to disclose wherein the buzzer is mounted to said charge circuit board.
YU teaches a charge circuit board (the structure supporting 23 between batter 131 and USB charge port 132), wherein the buzzer (23/232) is mounted to said charge circuit board (Figs. 2A–2B).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of YU into the disclosure of NOVAK and arrive at the buzzer mounted to NOVAK’s charge circuit board for the benefit of a an arrangement which supplies power to the buzzer (as taught by YU at [0090] and [0117–118]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view of NOVAK US 20200113242 (of record) and YU US 20200178616, as applied in the rejection of claim 9 above, and in further view of FORNARELLI US 20190021400.
As to claim 11, NOVAK and YU make obvious a delivery device according to claim 9.
NOVAK teaches that the support member (212) may be made from a molded elastomeric polymer material ([0119]) but fails to explicitly disclose the elastomeric support member is made of silicone rubber.
YU fails to teach the elastomeric support member is made of silicone rubber.
FORNARELLI teaches an the elastomeric support member made of silicone rubber ([0094]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the specific teachings of FORNARELLI into the generic disclosure of modified NOVAK for the benefit of dampening the strength of vibration on the user’s mouth (as taught by FORNARELLI at [0094]).
Allowable Subject Matter
Claims 5–8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for indicating claim 5 allowable is that the prior art fails to provide any teachings, suggestions, motivation, or other rationales to arrive at wherein the buzzer is received in another recess in the elastomeric support member.
Claims 6–8 are allowed for the same reasons via their dependency on claim 5.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20170238617’s (of record) [0043] discloses “a haptic device 130, such as but not limited to a vibration motor. The haptic device 130 may be, but is not limited to a “coin type” vibration motor or any device that converts electrical energy into mechanical energy that is intended to be tactilely sensed, or can be tactilely sensed by the user while the vaporizer is actively producing vapor may be used.”
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WO 2020001252 (of record) discloses a shock absorbing sleeve used to absorb the vibration generated by the sound generating mechanism to the casing during use.
US 20210178090 discloses a removable end cap 248 and housing 246 (Figs. 43–44)
US 20090283103’s [0040] discloses “[u]ser feedback may include a small vibration motor 276 installed” in the bottom of the housing.
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US 20010021098 discloses a vibration plate 34a used in a laptop [0031]
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANLEY L CUMMINS IV whose telephone number is (571)272-1060. The examiner can normally be reached Monday-Friday 9:30 a.m. - 6:00 p.m. (CST).
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.
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/MANLEY L CUMMINS IV/Primary Examiner, Art Unit 1747