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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07 November 2025 has been entered.
Status of the Claims
This office action is in response to Applicant’s amendment filed on 07 November 2025:
Claims 1-18 are pending
Claims 15-16 is withdrawn
Claim 1 is amended
Claims 17 and 18 are new
Response to Arguments
Applicant’s arguments, filed 07 November 2025, with respect to the rejection(s) of Claim 1 under 35 U.S.C. § 102/103 have been fully considered and are persuasive.
Applicant has amended Claim 1 to further include the following limitation: “a cradle comprising a recess, the recess having a fixed shape and configured for insertion of the consumable therein by a user”. Applicant argues that Batley’s material insert 120 (i.e., cradle), is disclosed to be a flexible pouch which would indicate that said pouch/cradle does not have a fixed shape as it would be able to change in shape due to gravity or any movement or forced acted upon it. Examiner agrees that Batley’s disclosure does not provide sufficient support for the pouch/cradle having a fixed shape, and therefore the rejection to Claim 1 is withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Krietzman (Publication No. US20160235122A1).
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.
Claim 16 is 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 16 is indefinite for reciting the “compression of the consumable increases progressively…” because it is unclear if the limitation is referring the compression force on the consumable is being progressively increased, or if it is referring to the consumable being progressively compressed during the insertion of the cradle. The former interpretation would introduce new matter as Applicant’s disclosure does not support a progressive compression force.
According to the Applicant’s disclosure, it would appear that the compression element is providing a continuous (i.e., progressive) compression on the consumable as the cradle is inserted toward the first position in the slot (see Specifications, Pg. 8, Lines 15-23).
For examination purposes, Claim 16 is interpreted to recite the following: “…compression of the cradle [[increases]] occurs progressively…”
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 1-14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Batley et al (Publication No. US20220322742A1) and Krietzman (Publication No. US20160235122A1).
Regarding Claim 1, Batley discloses an aerosol generation device comprising:
a housing (357) (Figs. 3A-B; [0084]);
a heating chamber (Material insert receptacle 118) arranged in the housing for generating an aerosol by heating a consumable (i.e., vaporizable material) (Figs. 2A-3B; [0048, 0065]; the receptacle is illustrated to be inside the device housing to form a chamber that holds the heating element 141 and material insert 120).
a cradle (Material insert 120) comprising a recess (Inner chamber 423) for holding the consumable (Vaporizable material 102) (Fig. 4; [0087]);
a slot (Material insert receptacle 118) extending through the housing and configured to receive the cradle and to position the cradle in a first position where the consumable is held in the heating chamber (see Figs. 2A-3B; [0048, 0064-0065, 0073]; the slot and heating chamber are considered equivalent as the cradle/insert is received within the chamber which creates a slot-like space inside the housing; first position is implicit as the insert is inside of the heating chamber/slot);
a compression (Compression plates 232) element configured to compress the consumable in the recess of the cradle (Figs. 2A-4; [0076-0077]; the compression force being applied towards the insert and heating element implies the insert is being pressed and causing the consumable within to press against the insert’s recess);
and an air flow channel (i.e., airflow pathway) for drawing the aerosol from the consumable, wherein a part of the air flow channel is formed within the housing (Figs. 3A-B; [0067, 0070]; airflow pathways extend through the receptacle, implying it is inside the housing).
Batley further discloses that the material insert/pouch (i.e., cradle) can comprise of material such as paper [0087]. Batley does not explicitly disclose the following:
the recess having a fixed shape;
and configured for insertion of the consumable by a user.
Regarding (I), Krietzman, directed to a vaporizer, discloses a disposable and/or refillable cartridge component (98) (i.e., cradle) with an open top and recess for holding plant/organic material (500) (i.e., consumable) such as tobacco, wherein the cartridge is inserted and heated in the vaporizer system (see Figs. 10-13; [0021, 0047, 0065-0067]; the cartridge 98 is cup-shaped, wherein the internal cavity of the “cup” is considered equivalent to a recess for holding consumables; the cartridge having an open top and being refillable implies that said cartridge is configured to have the consumable inserted into the cartridge).
Krietzman further discloses that the cartridge has a frangible cover (105) to seal the cartridge after the organic material/consumable ([0065]; the cartridge’s top cover being frangible implies that it can be compressed/broken). The cartridge can also be constructed from one or more materials such as paper, metal, ceramics, plastic or glass (see annotated Fig. 10, Fig. 11; [0065-0066]; the cartridge’s sides that form the cup recess and top opening is illustrated to be thicker than the cartridge’s frangible cover portion; implies it can be a different material than the cover).
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One ordinarily skilled in the art would recognize that metal and ceramic are hard materials and therefore, constructing the cartridge from these materials would cause the recess of the cartridge (i.e., the cup portion) to have a fixed shape.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the insert (i.e., cartridge) disclosed by Batley to construct three sides of the insert out of a material such as metal to form a fix-shaped cup recess with a top opening covered by a frangible cover (i.e., the insert’s original paper pouch material) as disclosed by Krietzman, as both are directed to a cartridge/insert component for holding, as this involves substituting one known cartridge construction (i.e., pouch) disclosed by Batley, with another known cartridge construction disclosed by Krietzman, to predictably yield an insert/cartridge with a fix-shaped recess for holding plant material that is still capable of being pressed and heated by the vaporizer device via the cartridge’s top side.
Regarding (II), since Modified Batley already discloses the structural limitations of the insert and recess with a fixed shape and configured to hold a consumable (see Part I rejection above), it is understood that the consumable must be disposed inside the recess through some method. As no specific insertion operation is specified for how the consumable is disposed into the recess, it is implied that any manner of insertion could be used to install the consumable into the recess such as insertion by a user.
Alternatively, it should be noted that the Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim, and that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)).
In this case, Modified Batley discloses a disposable insert (i.e., cradle) structure and inner cup cavity chamber (i.e., recess) formed from the insert housing that can hold a vaporizable (i.e., consumable) material but does not state how the consumable was originally disposed in the disposable cup-shaped insert.
Because Modified Batley does not explicitly disclose how the consumable was disposed within said insert so that it is holding the consumable, one can broadly interpret that any operation method can be used to insert/place the consumable within the cartridge such as a manual operation by a user inserting the consumable into the cartridge.
Therefore, since the insert disclosed by Modified Batley is structurally similar to the cavity as claimed by the Applicant, and there is no specific disclosure on how the consumable is enclosed within said recess, one ordinarily skilled in the art could reasonably conclude that it would be obvious that a user can insert the consumable material into the inner chamber (i.e., recess) of the insert to predictably and successfully form the disposable insert/cradle that is functionally capable of being compressed by a compressing element.
Regarding Claim 2, Batley further discloses the compression element (232) comprises a protrusion (239) from a surface of the slot (see Figs. 2A-3B; [0076, 0082, 0085]; compression plates and protrusions are illustrated to be situated from a side/surface of the receptacle 18 (i.e., slot) cavity).
Regarding Claim 3, Batley further discloses the compression element (232) comprises a moveable compression element (pre-loaded springs 350) (Figs. 3A-B; [0084]; springs are disclosed to be adjustable via cap, implying that it is moveable).
Regarding Claim 4, Batley further discloses the moveable compression element (232) is mechanically linked (i.e., threadably engaged) to an external control (pre-loading cap 355) (Figs. 3A-B; [0084]; cap is engaged with the housing and illustrated to be on the external side of said housing).
It is noted that while the cap is not explicitly disclosed to be a manual control, Batley discloses that other features for adjusting the pre-loaded spring force are within scope of their disclosure [0084]. As the cap is illustrated to look like a depressible button in Figures 3A and 3B, one ordinarily skilled in the art would reasonably conclude that the cap can be constructed to be a manual button that a user presses to engage and disengage the compression plates.
Regarding Claim 5, Batley further discloses the moveable compression element (232) is configured to latch in a compression state and a release state (Figs. 3A-B; [0084]; cap can be engaged which adds force to the compression plate to compress, or disengaged which would release the added force to the plate);
and is configured to alternate between the compression state and the release state upon successive uses of the external control (pre-loading cap 355) (Figs. 3A-B; [0084]; the cap can be engaged and disengaged which implies alternating successive state changes).
It is noted that while the cap is not explicitly disclosed to be a manual control, Batley discloses that other features for adjusting the pre-loaded spring force are within scope of their disclosure [0084]. As the cap is illustrated to look like a depressible button in Figures 3A and 3B, one ordinarily skilled in the art would reasonably conclude that the cap can be constructed to be a manual button that a user presses to engage and disengage the compression plates.
Regarding Claim 6, Modified Batley further discloses the cradle (i.e., insert) comprises a cover (Protrusions 239/Compression element 232) arranged to at least partly cover the consumable in the recess (Batley, see Figs. 3A-B; [0082]; the protrusions and compression element are shown to completely cover the top side of the insert to compress the consumable and therefore is considered equivalent to a cover).
and the moveable compression element (232) comprises the cover (see Figs. 3A-B; the compression plates completely cover the insert, which is considered equivalent to being a cover for the recess/inner chamber of the receptable).
Regarding Claim 7, Modified Batley further discloses the cradle (i.e., consumable insert) comprises a cradle heating element (Heating element 141) (Batley, [0091]; disclosed that the insert can include a heating element).
Regarding Claim 8, Modified Batley further discloses the chamber (i.e., insert/cartridge receptacle) comprises a chamber heating element (Heating element 141) (Figs. 3A-B; [0065-0067, 0084, 0091]).
and the cradle comprises a thermally conductive element (Batley, [0091]; disclosed that the insert can include a thermally conductive material);
Modified Batley does not explicitly disclose that the thermally conductive material is arranged between the chamber heating element (141) and the recess when the cradle is in the first position.
However, it should be noted that the rearrangement of parts is an obvious matter of design choice unless a new and unexpected result is produced (see MPEP § 2144.04.VI.C). Furthermore, Batley discloses that the cradle (i.e., insert) heating element can be any shape or configuration that permits efficient and effective heating of the vaporizable material (i.e., consumable) [0093].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to construct the material insert (i.e., cradle) to include a thermally conductive element as disclosed by Modified Batley, and arrange it on the insert/cartridge such that said conductive element is between the chamber heating element and the recess when the cradle is in the first position, with a reasonably expectation that it will predictably heat the vaporizable material (i.e., consumable) within the material insert/cradle, absent a new and unexpected result.
Regarding Claim 9, Modified Batley further discloses the cradle is configured to move between the first position (i.e., inserted into heating chamber) and a second position (Batley, [0064]; cartridge insert/cradle is configured to be inserted into the slot/cavity, which is considered equivalent to a first position of insertion, and a second position of no insertion);
Batley does not disclose the following:
the cradle is attached to the slot
and consumable is configured to be received in or removed from the recess
Regarding (I), Batley discloses that the cradle (material insert 120) can have a mouthpiece incorporated with it to minimize contact between the aerosol and the durable portion of the vaporizer body [0091]. Batley also illustrates the mouthpiece is attached to the slot (see annotated Fig. 3B; the mouthpiece is directly adjacent to the slot).
Therefore, one ordinarily skilled in the art would reasonably assume that if the insert is constructed to further comprise the mouthpiece (i.e., are one integral piece), then the insert would implicitly be understood to be attached to the slot by virtue of being part of the mouthpiece attached to the slot as shown in Figure 3B.
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Regarding (II), it should be noted that making known elements separable is within the skill of a person of ordinary skill in the art (see MPEP § 2144.04.V.C).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention to make the vaporizable material/consumable disclosed by Batley to be separable from the material insert, with a reasonable expectation that the consumable can be received in or removed from the recess (i.e., Inner chamber 423) of said cradle/insert and still be capable of being received in the slot/receptable to be heated and aerosolized.
Regarding Claim 10, Modified Batley does not explicitly disclose that the cradle (i.e., insert/cartridge) is attached to the slot by a hinge. However, it should be noted that the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143.A).
Modified Batley discloses that the insert/cartridge may further comprise a mouthpiece to minimize contact between the aerosol and the durable portion of the vaporizer body (Batley, see Figs. 3A-B; [0091]; mouthpiece is shown to be attached adjacent to the slot which is considered equivalent to being attached to the slot). Batley further discloses wherein the mouthpiece can be attached via a hinge (see Figure 7).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention, to construct an integral mouthpiece insert/cartridge to be connected/adjacent to the slot as shown in one embodiment disclosed by Batley, and combine it with a hinge as shown in another embodiment disclosed by Batley, to construct a third embodiment wherein the insert/cartridge (with mouthpiece) is attached to the slot via a hinge with a reasonable expectation that the resulting insert/cradle will be capable of being inserted into the slot.
Regarding Claim 11, Batley further discloses the cradle (i.e., receptacle) comprises an air flow inlet (240) for taking air into the air flow channel (Airflow pathways 234) (Figs. 2B-3B; [0086]).
Regarding Claim 12, Batley further discloses the cradle comprises the air flow inlet (240) (Fig. 2B; [0086]);
the device is elongate along a first axis (see Figs. 2A-3B; device is elongate in the longitudinal direction)
a mouthpiece (245) is located at a first end of the device along the first axis (Fig. 2B, 3B; [0083])
and when the cradle is in the first position, the air flow inlet is arranged on a side between the ends of the device along the first axis (see Figs. 2B, 3B; inlet is located on a side away from the mouthpiece).
Regarding Claim 13, Batley does not disclose that the slot extends obliquely relative to the first axis.
However, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design (see MPEP § 2144.04.IV.B).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to construct the slot to extend obliquely relative to the first axis, so long as the cradle can be inserted into said slot such that it can reach the first position and be heated by a heating element to generate an aerosol.
Regarding Claim 14, Batley further discloses the housing comprises a mouthpiece (245) for drawing aerosol out of the device (Fig. 2B, 3B; [0083]).
Regarding Claim 15, Batley further discloses the compression element (232) includes a surface extending obliquely relative to the longitudinal axis (see annotated Fig. 3B; [0085]; the compression element further comprises a protrusion 239 which creates a slanted surface that extends relative to the longitudinal axis; the slanted surface is considered equivalent to an oblique extension).
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Regarding Claim 17, Modified Batley discloses that the recess of the cradle (i.e., insert) defines an opening (see Claim 1 rejection; Batley was modified with Krietzman’s disclosure to be constructed out of multiple materials such that the recess forms a fixed cup shape with a top opening covered by a frangible cover portion; the covered top opening is considered equivalent to the opening).
Modified Batley does not explicitly disclose that the opening is configured for removal of the consumable therefrom by the user after use of the device.
However, it should be noted that the Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim, and that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)).
In this case, Modified Batley already discloses an opening formed by the cup-shaped recess in which a frangible cover is disposed. Since the insert has the opening structure, one ordinarily skilled in the art would reasonably conclude that the consumable inside the insert can be removed by the user via said opening.
Regarding Claim 18, Modified Batley does not explicitly disclose the recess is bound by a plate and includes an opening opposite the plate. However, it should be noted that Applicant discloses that the plate is a metal plate (see Specifications, Pg. 9, Line 2).
Modified Batley’s fixed cup shape is also formed using a metal material to construct the surfaces of said recess and therefore can be considered equivalent to a plate (see Claim 1 rejection; Batley was modified by Krietzman to utilize materials such as metal to form a multi-material cartridge insert with a covered opening).
Since Modified Batley is constructed such that the recess is bounded by the metal (plate) surfaces of the cartridge such that there is a top opening, it implicitly means that the plate is opposite of said opening (Krietzman, see annotated Fig. 10; when Batley is constructed of metal material to form an insert similar to Krietzman’s, the bottom metal surface/plate will be opposite to the opening).
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Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Batley et al (Publication No. US20220322742A1) and Krietzman (Publication No. US20160235122A1) as applied to Claim 1 above, and further in view of Ewing et al (Publication No. US20180016040A1).
Regarding Claim 16, Batley does not disclose the compression element is configured such that the compression of the consumable occurs progressively from a leading end of the cradle to a trailing end of the cradle during insertion of the cradle toward the first position in the slot.
However, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design (see MPEP § 2144.04.IV.B).
In that regard, Ewing, directed to a vapor provision system comprising a cartridge containing a foaming block with liquid (610) (i.e., consumable) ([0028-0030, 0039]; foam block goes inside a cavity/slot of the cartridge). Due to the foam block/consumable having a larger cross-section than the cartridge, it is desirable for said foam block consumable to be compressed in the lateral direction (perpendicular to the longitudinal axis) so that it can fit inside the cartridge [0039].
The compression force on the consumable block can be achieved by using a filling tube (620) (i.e., compression element) with an angled flange (625) (i.e., oblique surface) such that the consumable block is compressed laterally as it is pushed along the filling tube’s longitudinal direction, due to the flange’s slanted surface which narrows along the longitudinal axis (see annotated Figs. 7A-C; [0047, 0055]; the flange portion of the filling tube is slanted along the longitudinal axis which is considered equivalent to an oblique extension; the consumable is compressed progressively as it is pushed into the compression element).
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Since Batley discloses that the compression element further comprises a protrusion which is shown to create a slanted opening similar to a flange (see annotated Fig. 3B), one ordinarily skilled in the art would be motivated based on Ewing’s disclosure to adjust the compression element’s slanted surface such that said surface will provide a compressive force as the consumable is inserted into the cradle towards the first position, wherein the consumable progressively compresses as it is inserted between the compression elements.
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Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to change the shape of the compression element disclosed by Batley to have a flanged opening such that it has a surface extending obliquely along the longitudinal axis as disclosed by Ewing, as both are directed to a compression apparatus for compressing a vaporizing substance/consumable, to predictably result in the consumable progressively getting compressed by the compression element as it is inserted into the cradle toward a first position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755