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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 including the amendment to claim 1, cancellation of claims 4-5 and 15, and supporting remarks filed 12/30/2025 (“Amendment”) has been entered. Accordingly, the objection to claim 15 and the rejections under 35 USC 112 are rendered moot, the rejections under 35 USC 102-103 are withdrawn, and new rejections under 35 USC 103 are set forth below. Claims 1-3 and 7-11 remain pending and are examined herein.
Response to Arguments
Applicant’s arguments with respect to the claim rejections under 35 USC 102-103 (Amendment p. 5-10) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Biel (US 2018/0235280 A1, previously cited) in view of Kim (WO 2021/071220 A1).
Regarding claim 1, Biel is directed to an electronic smoking device with a liquid reservoir with two storage volumes (Title), the device reading on a “nicotine inhaler” as claimed:
The device 10 has a housing (“body”) comprising a cylindrical hollow tube with a liquid reservoir portion 14 (“tube-shaped housing”) ([0011], Fig. 1). The reservoir portion 14 has an air inhalation port 36 (“opening”) at a back end ([0019], Fig. 1). The liquid reservoir 34 surrounds a lateral surface 52 (“inner surface”) extending along a central passage 32 up to the air inhalation port 36 ([0029], Fig. 1). As shown in Fig. 1, the housing extends longitudinally (“wherein the body extends in a longitudinal direction”);
The liquid reservoir 34 has a second storage volume 42 (“first liquid storage part”) containing an additive which may include nicotine ([0026, 0035], Fig. 1). However, the second storage volume 42 is not located at the air inhalation port 36 (and thus is not “surrounding the inner surface of the opening at the one end of the housing” as claimed);
The liquid reservoir 34 has a first storage volume 40 (“second liquid storage part”) including a liquid (“smoke generating liquid”) delivered to an atomizer 26, the first volume 40 “surrounding an inner surface of the housing” and being “spaced apart…in the longitudinal direction” from the second volume 42 by side walls 44 ([0026-27], Fig. 1);
A fluid outlet 50 (“liquid injection port”) releases the additive from the second volume 42 into the central passage 32 downstream of the atomizer 26 (“supplies the liquid nicotine from the first liquid storage part into the housing”) ([0028, 0035], Fig. 1). However, the fluid outlet 50 is not “connected to the liquid supply tube and between the first liquid storage part and the second liquid storage part”.
The atomizer 26 includes a heating element 28 (“heating element”) which heats the liquid supplied form the first volume 40 ([0016, 0027], Fig. 1);
A switch (“switch”) may be provided to allow a user to activate the device manually [0023]. It would be obvious to provide the switch “on an outer surface” of the housing in order to allow the user to easily reach it;
Biel fails to disclose (1) the second storage volume 42 “surrounding the inner surface of the opening at the one end of the housing” as set forth above, (2) a “liquid supply tube” as claimed, and (3) the fluid outlet 50 being “connected to the liquid supply tube and between the first liquid storage part and the second liquid storage part” as set forth above. Regarding (1), it would be a simple and obvious design choice to rearrange the second volume 42 by locating it at the end by the air inhalation port 36, which would result in the second volume 42 “surrounding the inner surface of the opening at the one end of the housing” as claimed (see annotated Fig. 1 below). See MPEP 2144.04(VI)(C); see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); see also In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). Such a rearrangement would result in the fluid outlet 50 being located “between the first liquid storage part and the second liquid storage part” as claimed, which partially reads on (3). Regarding (2) and the fluid outlet 50 being “connected to the liquid supply tube” of (3), these limitations are obvious in view of Kim.
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Kim is directed to an aerosol generating device and operating method therefor (Title). The device 100 includes a liquid transfer tube 140 (“liquid supply tube”) for supplying a liquid material from a liquid storage 130 to an aerosol generating unit 120 ([0036], Fig. 1), and may include a flow rate regulator 145 for controlling the flow amount ([0042], Fig. 4). One of ordinary skill in the art would recognize that Kim’s tube 140 and regulator 145 could similarly be provided in Biel to better control the flow of Biel’s additive from the second volume 42 through the outlet 50.
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Biel by providing Kim’s liquid supply tube 140 and flow regulator 145 extending from Biel’s second volume 42 to the fluid outlet 50 (which reads on “a liquid supply tube extending from inside the first liquid storage part toward the second liquid storage part in the longitudinal direction” and “a liquid injection port connected to the liquid supply tube”), because both Biel and Kim are directed to electronic aerosolization devices, Kim teaches that the tube 140 and regulator 145 allow controlled liquid delivery, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 2, Biel discloses the liquid reservoir portion 14 as set forth above, which can be considered as having three equally long and adjacent sections as claimed.
Regarding claim 3, modified Biel discloses the second volume 42 located longitudinally at the air inhalation port 36 as set forth above, which would be in the “first housing section” as claimed (see annotated Fig. 1 above).
Regarding claim 7, Biel’s additive may include a flavored material including an aroma compound [0035-37], and thus the second volume 42 includes a “fragrance spreader” as claimed (see also Applicant’s Figs. 2(c-d), showing the fragrance spreader 700 as a tubular subdivision of the first liquid storage part 200, as opposed to a structural “spreader” such as a spraying nozzle).
Regarding claim 8, Biel discloses a wick 30 (“liquid absorber”) which receives the liquid from the first volume 40 and delivers it to the heating element 28 ([0027], Fig. 1).
Regarding claim 10, the heating element 28 is wrapped by the wick 30 ([0016], Fig. 1), which reads on “wherein the heating element is positioned…inside the liquid absorber to heat the smoke generating liquid”.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Biel (US 2018/0235280 A1) in view of Kim (WO 2021/071220 A1) as applied to claim 8, further in view of Philips (US 2020/0164162 A1, previously cited).
Biel discloses the wick 30 which may be a porous material such as a bundle of fiberglass fibers [0017], but fails to disclose the wick including “one selected from a group consisting of paper, cotton, porous bead, and a combination thereof”.
Phillips is directed to a micro-vaporizer with multiple liquid reservoirs (Title). Phillips discloses that typical wicks are formed from organic fiber materials such as cotton, jute, flax, cellulose, or hemp [0024], and discloses that the best configuration for a nicotine solution may include a cotton-based wick [0054]. Additionally, cotton is a well-known wicking material in the art of electronic aerosolization devices.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Biel by using a cotton-based wick 30, because both Biel and Phillips are both directed to electronic aerosolization devices, Phillips teaches that a cotton wick works best for liquid nicotine, cotton is a well-known wicking material in the art, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Biel (US 2018/0235280 A1) in view of Kim (WO 2021/071220 A1) as applied to claim 1, further in view of Liu (WO 2017/075827 A1, previously cited with English translation).
Biel discloses the switch as set forth above, but fails to disclose the switch being configured to “control[s] start and end in generating smoke and an amount of smoke according to a preference of a smoker by adjusting step by step an amount of heat that is supplied by the heating element” as claimed.
Liu is directed to a method for controlling the atomization of electronic cigarette oil [0001]. Liu discloses buttons 17, 18 which a user can press to increase or decrease the power and/or temperature of atomization [0085]. This provides a device which more readily meets user needs for adjusting power and temperature [0007].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Biel by configuring the switch to increase or decrease the temperature of the heating element 260, because both Biel and Liu are directed to electronic atomization devices, Liu teaches that this desirably allows a user to control the temperature, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747