DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s remarks filed February 9, 2026. Claims 2, 4-5, 14, and 18 were previously cancelled. Claims 1, 3, 6-13, 15-17, and 19-21 are pending and rejected.
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.
Claims 1, 3, 6-13, 15, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 20190183177 A1 (hereinafter HUBBARD).
Regarding claim 1, HUBBARD discloses an aerosol deliver device with a first aerosol delivery pathway and a second aerosol delivery pathway to provide flavorant infused material (abstract). HUBBARD discloses a first aerosolisation portion configured to generate a first aerosol from a first aerosol precursor (Fig. 5, atomizer 102, ¶75); a second aerosolisation portion configured to generate a second aerosol from a second aerosol precursor (Fig. 5, flavorant-infused material 104, ¶75); wherein the first and second aerosolisation portions are housed within a component housing (Fig. 5, housing 90, ¶75) having a mouthpiece portion (Fig. 5, mouth-end cap 56,¶72).
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HUBBARD teaches another embodiment where a housing includes multiple aerosol delivery pathways containing flavorant-infused materials in outer segments (Fig. 10, ¶80). HUBBARD teaches a mouthpiece nozzle (Fig. 11, rotatable mouth-end cap 216, ¶81) being rotatably mounted on the mouthpiece portion and rotatable between a first position and a second position, wherein in the first position the component is configured to supply the first aerosol and the second aerosol through the mouthpiece nozzle, and in the second position the component is configured to supply only the second aerosol through the mouthpiece nozzle. HUBBARD teaches that the rotatable mouth end cap includes a central opening which can be rotated to enable fluid communication with any one or two of the outer segments to have a user-selected flavorant or combination of flavorants (¶81). HUBBARD further teaches that the that the alignment of the components of the disclosure can vary (¶60). HUBBARD teaches that the selection of the particular precursors may be altered to control the chemical composition (¶29). HUBBARD further teaches several embodiments for devices with two pathways, but that the invention is not limited to two pathways and the device can be adapted to deliver several different flavorants that are selectable by the user (¶40). A person of ordinary skill in the art would obviously implement the rotatable mouthpiece nozzle to align in many positions (first, second, third, etc.) to permit only one flavoring to come through the mouthpiece. Doing so would customize the flavorant to the user (¶81). HUBBARD teaches wherein the second aerosolisation portion is in fluid communication with the mouthpiece nozzle through a first flow path (Fig. 10, central delivery pathway 206, ¶80) and a second flow path (fig. 10, any of the paths through the outer segments separated by walls ¶80), wherein the first flow path further fluidically connects the first aerosolisation portion to the mouthpiece nozzle, wherein the mouthpiece portion comprises a first channel (Figs. 10-11, mouth end portion of central aerosol delivery pathway 206, ¶81) defining the first flow path, and at least one second channel defining the second flow path, wherein the mouthpiece nozzle comprises a first aperture (Fig. 11, central opening 220) in alignment with the first channel and at least one second aperture (Fig. 11, outer opening 222, ¶81). HUBBARD further teaches wherein the mouthpiece nozzle is rotatable such that the at least one second aperture is aligned with the respective at least one second channel in the second position and unaligned in the first position. HUBBARD teaches that the mouthpiece cap can be rotated to enable communication with any one or two if placed overlying a wall of the outer segments (¶81). HUBBARD further teaches wherein the first aperture is a central axial aperture in a downstream end face of the mouthpiece nozzle (As shown in Fig. 10).
Regarding claim 3, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches wherein the second flow path is selectively obstructable by rotation of the mouthpiece nozzle (¶81).
Regarding claim 6, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches the first aperture of the mouthpiece nozzle is in fluid communication with the first channel through a first nozzle channel, and when the mouthpiece nozzle is in the second position, the at least one second aperture is in fluid communication with the respective at least one second channel through a respective at least one second nozzle channel (¶81). HUBBARD teaches that the device achieves fluid communication by passing the aerosols through the at least one mouth end opening to the oral cavity of the user (¶13). The rotation of the mouth-end cap 216 allows for selectable flavorant combinations in the mouth-end opening by achieving that fluid communication at the end of the device (¶81).
Regarding claim 7, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches wherein the first channel is a longitudinally-extending channel axially aligned with the axis of the component and wherein the at least one second channel is a longitudinally extending channel laterally off-set from the axis of the component. In the embodiment shown in Fig. 10, the first channel (Figs. 10-11, mouth end portion of central aerosol delivery pathway 206, ¶81) is longitudinally extending and centrally aligned with the axis of the device. The second channel is offset in the walls of the device to deliver the components in 200, 202, 204 (¶80-¶81).
Regarding claim 8, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches the first flow path comprises a constriction such that a transverse cross-section of the first flow path at a constricted portion is smaller than a transverse cross- section of the second flow path. As shown in Fig. 10, the first flow path comprises the entire diameter of the device near the reference number 210. The first flow path is then constricted where it enters the housing 198 to reduce in diameter to the measurement of pathway 206. The second flow path is the area around the pathway 206, which is the diameter of the entire device minus the pathway 206. Therefore the cross-section of the first flow path at the constriction is visually smaller than the second flow path which is the entire device diameter. Further, the courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). One of ordinary skill in the art would appreciate that the pathways will vary along the device to provide customized aerosols with predictable results.
Regarding claim 9, HUBBARD discloses the component according to claim 8 as discussed above. HUBBARD further teaches the constriction comprises an aerosolisation chamber housing an aerosol-generating portion of a liquid transfer element in fluid communication with the first aerosol precursor. HUBBARD teaches several embodiments with varying aerosol paths and constrictions. For example HUBBARD teaches an embodiment, Fig. 4, where the air flow path tapers to a constriction. HUBBARD teaches that the internals of the housing can be any of the embodiments of the disclosure (¶74). A person of ordinary skill in the art would appreciate that the different embodiments with geometries and constrictions would be used in varying arrangements to deliver the customized aerosol mixture with predictable results.
Regarding claim 10, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches the first aerosolisation portion is a passive aerosolisation portion configured to generate the first aerosol without application of heat. HUBBARD teaches an embodiment where the housing includes an atomizer 132 and a print head 142 as a jet array (Fig. 7, ¶77). In this configuration the print head is used to produce an aerosol remains in the oral cavity and throat region to provide a desirable sensory experience to the user. A person of ordinary skill in the art would obviously use this passive aerosolization technique because doing so would provide a desirable sensory experience (¶77).
Regarding claim 11, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further discloses the first aerosol precursor is a flavoured precursor, and the first aerosol is a flavoured aerosol (¶7, ¶9).
Regarding claim 12, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches the second aerosolisation portion is an active aerosolisation portion comprising a heating element. HUBBARD teaches an embodiment where the housing includes an atomizer 112 and a heater 118 (Fig. 6, ¶76). In this configuration the heater can vary by design and include a flat plate configuration, a coil heater, a needle or blade heater (¶76). A person of ordinary skill in the art would obviously use this active aerosolization technique because doing so would provide flavorant-infused material (¶76).
Regarding claim 13, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further discloses that the system comprises a power source (¶61, ¶66).
Regarding claim 15, HUBBARD discloses the component according to claim 1 as discussed above. HUBBARD further teaches the mouthpiece nozzle is downstream of the component housing (as shown in Figs. 10-11).
Regarding claim 20, HUBBARD discloses an aerosol deliver device with a first aerosol delivery pathway and a second aerosol delivery pathway to provide flavorant infused material (abstract). HUBBARD discloses a first aerosolisation portion configured to generate a first aerosol from a first aerosol precursor (Fig. 5, atomizer 102, ¶75); a second aerosolisation portion configured to generate a second aerosol from a second aerosol precursor (Fig. 5, flavorant-infused material 104, ¶75).
HUBBARD teaches another embodiment where a housing includes multiple aerosol delivery pathways containing flavorant-infused materials in outer segments (Fig. 10, ¶80). HUBBARD teaches a mouthpiece nozzle (Fig. 11, rotatable mouth-end cap 216, ¶81) rotatable relative to the first and second aerosolisation portions between a first position and a second position, wherein in the first position the component is configured to supply the first aerosol and the second aerosol through the mouthpiece nozzle. HUBBARD teaches that the rotatable mouth end cap includes a central opening which can be rotated to enable fluid communication with any one or two of the outer segments to have a user-selected flavorant or combination of flavorants (¶81). HUBBARD further teaches that the that the alignment of the components of the disclosure can vary (¶60). HUBBARD teaches that the selection of the particular precursors may be altered to control the chemical composition (¶29). HUBBARD further teaches several embodiments for devices with two pathways, but that the invention is not limited to two pathways and the device can be adapted to deliver several different flavorants that are selectable by the user (¶40). A person of ordinary skill in the art would obviously implement the rotatable mouthpiece nozzle to align in many positions (first, second, third, etc.) to permit only one flavoring to come through the mouthpiece. Doing so would customize the flavorant to the user (¶81). HUBBARD teaches in the second position the component is configured to supply only the second aerosol through the mouthpiece nozzle. HUBBARD teaches wherein the second aerosolisation portion is in fluid communication with the mouthpiece nozzle through a first flow path (Fig. 10, central delivery pathway 206, ¶80) and a second flow path (fig. 10, any of the paths through the outer segments separated by walls ¶80), wherein the first flow path further fluidically connects the first aerosolisation portion to the mouthpiece nozzle, wherein the mouthpiece portion comprises a first channel (Figs. 10-11, mouth end portion of central aerosol delivery pathway 206, ¶81) defining the first flow path, and at least one second channel defining the second flow path, wherein the mouthpiece nozzle comprises a first aperture (Fig. 11, central opening 220) in alignment with the first channel and at least one second aperture (Fig. 11, outer opening 222, ¶81). HUBBARD further teaches wherein the mouthpiece nozzle is rotatable such that the at least one second aperture is aligned with the respective at least one second channel in the second position and unaligned in the first position. HUBBARD teaches that the mouthpiece cap can be rotated to enable communication with any one or two if placed overlying a wall of the outer segments (¶81). HUBBARD further teaches wherein the first aperture is a central axial aperture in a downstream end face of the mouthpiece nozzle.
Regarding claim 21, HUBBARD discloses the component according to claim 20 as discussed above. HUBBARD further teaches the first flow path comprises a constriction such that a transverse cross-section of the first flow path at a constricted portion is smaller than a transverse cross-section of the second flow path.
As shown in Fig. 10, the first flow path comprises the entire diameter of the device near the reference number 210. The first flow path is then constricted where it enters the housing 198 to reduce in diameter to the measurement of pathway 206. The second flow path is the area around the pathway 206, which is the diameter of the entire device minus the pathway 206. Therefore the cross-section of the first flow path at the constriction is visually smaller than the second flow path which is the entire device diameter. Further, the courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). One of ordinary skill in the art would appreciate that the pathways will vary along the device to provide customized aerosols with predictable results.
Claims 16-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160235121 A1 (ROGAN) in view of HUBBARD.
Regarding claim 16, ROGAN discloses an aerosol transferring adaptor for an aerosol generating device with a mouthpiece that is configured to be alignably connected to the connector fitting of the liquid storage component (abstract). ROGAN discloses a first aerosolisation portion (Figs. 2 and 4-5, compartment 9a, ¶46) configured to generate a first aerosol from a first aerosol precursor(¶46-¶47); and a second aerosolisation portion (Figs. 2-4, liquid reservoir 11, ¶45) configured to generate a second aerosol from a second aerosol precursor (¶45). ROGAN further discloses a mouthpiece portion having a first outlet aperture configured to supply the first and second aerosols. In annotated figure 2 below, there is a mouthpiece portion at the downstream end of the device. The flow that passes through the outlet is a combination of the first and second aerosols.
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ROGAN further teaches a second outlet aperture configured to supply only the second aerosol. ROGAN teaches that the compartments found in the mouthpiece housing 10b may comprise a filtration material or a moisturizing/drying pad (¶20, ¶48). A person of ordinary skill in the art would immediately recognize that when one of the compartments of the mouthpiece is replaced to be filtration material or a moisturizing/drying pad and that compartment is the selected compartment, in that configuration the only aerosol provided to the mouthpiece nozzle and the user is from the second aerosolisation portion. A person of ordinary skill in the art would obviously implement the embodiment taught in ROGAN to provide a second position configured to supply only the second aerosol through the mouthpiece because doing so would customize the aerosol and provide elimination of visible aerosol or remove unwanted particles or components from the airflow to the user (¶48).
ROGAN does not disclose a mouthpiece cap rotatably mounted on the mouthpiece portion and rotatable between a first position and a second position, wherein in the first position the first outlet aperture is open and the second outlet aperture is closed, wherein the mouthpiece cap comprises a first cap member moveable between a closed position in which the second outlet aperture is closed, and an open position in which the second outlet aperture is open, wherein the first cap member comprises a central cap aperture which is aligned with the first outlet aperture when the first cap member is in the closed position.
HUBBARD teaches a rotatable mouth end cap (Fig. 11, rotatable mouth-end cap 216, ¶81) includes a central opening which can be rotated to enable fluid communication with any one or two of the outer segments to have a user-selected flavorant or combination of flavorants (¶81). HUBBARD further teaches that the that the alignment of the components of the disclosure can vary (¶60). HUBBARD teaches that the selection of the particular precursors may be altered to control the chemical composition (¶29). HUBBARD further teaches several embodiments for devices with two pathways, but that the invention is not limited to two pathways and the device can be adapted to deliver several different flavorants that are selectable by the user (¶40). HUBBARD teaches that the mouthpiece cap can be rotated to enable communication with any one or two if placed overlying a wall of the outer segments (¶81). HUBBARD further teaches the first aperture is a central axial aperture in a downstream end face of the mouthpiece nozzle (As shown in Fig. 10).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ROGAN to provide a mouthpiece cap rotatably mounted on the mouthpiece portion and rotatable between a first position and a second position, wherein in the first position the first outlet aperture is open and the second outlet aperture is closed, wherein the mouthpiece cap comprises a first cap member moveable between a closed position in which the second outlet aperture is closed, and an open position in which the second outlet aperture is open, wherein the first cap member comprises a central cap aperture which is aligned with the first outlet aperture when the first cap member is in the closed position as taught in HUBBARD. A person of ordinary skill in the art would obviously implement the rotatable mouthpiece nozzle to align in many positions (first, second, third, etc.) to permit only one flavoring to come through the mouthpiece. Doing so would customize the flavorant to the user (¶81).
Regarding claim 17, modified ROGAN discloses the component according to claim 16. ROGAN does not disclose in the second position the first outlet aperture is closed and the second outlet aperture is open.
HUBBARD teaches that the rotatable mouth end cap includes a central opening which can be rotated to enable fluid communication with any one or two of the outer segments to have a user-selected flavorant or combination of flavorants (¶81). HUBBARD further teaches that the that the alignment of the components of the disclosure can vary (¶60). HUBBARD teaches that the selection of the particular precursors may be altered to control the chemical composition (¶29). HUBBARD further teaches several embodiments for devices with two pathways, but that the invention is not limited to two pathways and the device can be adapted to deliver several different flavorants that are selectable by the user (¶40).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ROGAN to provide in the second position the first outlet aperture is closed and the second outlet aperture is open as taught in HUBBARD. A person of ordinary skill in the art would obviously implement the rotatable mouthpiece nozzle to align in many positions (first, second, third, etc.) to permit only one flavoring to come through the mouthpiece. Doing so would customize the flavorant to the user (¶81).
Regarding claim 19, modified ROGAN discloses the component according to claim 16. ROGAN does not disclose the mouthpiece cap further comprises a second cap member which is movable to block the first outlet aperture when the first cap member is in the open position.
HUBBARD teaches that the rotatable mouth end cap includes a central opening which can be rotated to enable fluid communication with any one or two of the outer segments to have a user-selected flavorant or combination of flavorants (¶81). The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. In this case, a person of ordinary skill in the art would obviously include a second mouthpiece cap because doing so would allow the user to further customize the aerosol to be inhaled.
Response to Arguments
Applicant’s arguments, filed February 9, 2026, with respect to the rejections of claims 1, 3, 6-13, 15-17, and 19-21 under 35 USC 103 have been fully considered and are not persuasive.
Applicant argues, “HUBBARD does not teach or suggest an arrangement in which one of these aerosolisation portions is in fluid communication with the rotatable mouth-end cap (216) through both the first and second flow paths, as required by claim 1. This is because the respective flow paths extending to the rotatable mouth-end cap (216) are isolated from one another (e.g. by the walls (212) as described in para. [0080]).”
Though there are portions of the airflow paths that are separated by the walls of the device as shown in Figs. 6-7, this is not the teaching of HUBBARD more broadly. As taught in ¶5, the there is a mixing area downstream of the first and second aerosol pathways to allow mixing prior to the exit from the mouth end opening. In this region the air pathways mix when the mouthpiece opens only one or two or more aerosol pathways (as contemplated by HUBBARD ¶7). A preferred embodiment or alternate embodiment does not constitute a teaching away where the specification teaches more broadly. See MPEP 2123, II. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Applicant has chosen an embodiment and limited the prior art of HUBBARD to eliminate a limitation of the instant application where HUBBARD teaches more broadly.
Regarding the limitation “fluid communication” all of the pathways of HUBBARD are ultimately in fluid communication because the device produces a mixed aerosol where all of the pathways achieve fluid communication at least at the mouthpiece exit after isolation or mixing depending on the user’s selection (see at least ¶81 but also ¶7).
Conclusion
THIS ACTION IS MADE FINAL. 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 STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747