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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/2026 has been entered.
The status of the 02/04/2026 claims, is as follows: Claims 1-12, 14, and 16-20 have been amended; Claim 13 has been canceled; Claims 1-12, and 14-20 are pending.
Claim Objections
Claims 1-12, and 14-20 are objected to because of the following informalities:
In claim 1: the phrase “an apparatus” in line 16 should be read “the apparatus”.
In claim 14: the phrase “a mouthpiece” in line 2 should be read “the mouthpiece” as it is presumed to have antecedent basis in line 20 of claim 1.
In claim 19: the phrase “the recess” in line 2 should be read “a recess” as it is the first instance of “recess” recited.
In claim 20: the phrase “the recess” in line 2 should be read “a recess” as it is the first instance of “recess” recited.
Appropriate correction is required.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-12, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gill (US 20170156403) in view of Mironov’330 (US 20170079330) and Benson (US 20140251321)
Regarding Claim 1, Gill discloses a system (inhale 10) comprising:
a cartridge (capsule 26) for use with an apparatus (inhaler 10 of fig. 1 that excludes the capsule 26) configured to heat smokable material and thereby volatilize at least one component of the smokable material (it is noted “for use with an apparatus configured to heat smokable material and thereby volatilize at least one component of the smokable material” is a statement of intended use), the cartridge (capsule 26) comprising:
a container (capsule 26; fig. 3) that defines a cavity (para. 0041, it is noted capsule 26 defines the cavity in which flavour-release medium 40 is disposed), wherein the container defines an opening (opening 36, para. 0039; fig. 3) into the cavity;
smokable material (flavour-release medium 40) disposed in the cavity (para. 0041), wherein the smokable material (medium 40) comprises tobacco (tobacco) and one or more humectants (propylene glycol) (para. 0016) (according to published specification of the instant application, para. 0047, “humectants” comprises glycerol or propylene glycol. Therefore, propylene glycol is one of humectants); and
heatable heater material (induction heatable elements 42) that is configured to, in use, be heated by penetration of a varying magnetic field (para. 0044-0045, it is noted the coil 52 generates magnetic field that causes the heatable element 42 to heat up, thus heating the medium 40 to generate smoke) and to thereby heat the smokable material (flavour-release medium 40) (para. 0044-0045) and volatilize at least one component thereof (tobacco) (para. 0041), wherein the heatable heater material (induction heatable elements 42) is disposed in the smokable material in the cavity (“induction heatable elements 42 contact at least some of the flavour-release medium 40”, para. 0044; fig. 3), wherein the container (capsule 26) has a plurality of apertures extending therethrough (holes in the lid of capsule 26) (para. 0056, 0050, and 0040, 0015, it is noted the embodiment is relied upon is only base of the shell 28 is air permeable and the lid is air permeable, and the sidewall is not air permeable, para. 0056. According to attached Webster, “aperture” is interpreted to mean hole. Because the lid is air permeable, it has holes extend through the shell of the capsule to allow air through),
the apparatus (inhaler 10 of fig. 1 that excludes the capsule 26) configured to heat the smokable material of the cartridge and volatilize at least one component of the smokable material (para. 0045), the apparatus comprising:
an interface (chamber 24) configured to cooperate with the cartridge (capsule 26) (“housing 12 includes a chamber 24 into which a capsule 26 can be removably inserted”, para. 0038),
a magnetic field generator (induction heating arrangement 50) configured to generate a magnetic field (para. 0045), and
a mouthpiece (mouthpiece 18; fig. 1).
Gill does not disclose:
the magnetic field is varying, wherein the magnetic field generator configured to generate the varying magnetic field, and
wherein the mouthpiece is impregnated with a flavorant.
However, Mironov’330 discloses an aerosol-generating system 100, wherein the induction coil 110 generates an alternating magnetic field (para. 0011 and 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the coil 52 of Gill to generate the varying magnetic field to heat the heatable heater material, thereby heating the smokable material as taught by Mironov’330, because it is conventionally known that the coil generates the varying magnetic field to heat an object.
The modification does not disclose the mouthpiece is impregnated with a flavorant.
However, Benson discloses an inhaler apparatus 10 comprises a mouthpiece (mouthpiece 36) is impregnated with a flavorant (second substance 52) (para. 0037).
PNG
media_image1.png
258
408
media_image1.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mouthpiece of Gill in view of Mironov’330 to be impregnated with the flavorant (i.e. second substance of Benson) as taught by Benson, in order to introduce pleasing scent/aroma and flavor of the second substance and neutralize the scent and flavor of the first substance held in the container. Doing so would allow the user to combine more than one flavoring agents to suit the user’s need, thereby enhance the user’s experience of the inhaler.
Regarding Claim 2, Gill discloses the system, wherein the container (capsule 26) has a circular cross- section (para. 0039).
Regarding Claim 3, the modification discloses substantially all of the claimed features as set forth above. Gill discloses the cartridge comprises the heatable heater material (induction heatable elements 42) (para. 0044).
The modification does not disclose the heatable heater material comprises one or more materials selected from the group consisting of: an electrically-conductive material, a magnetic material, and a non-magnetic material.
However, Mironov’330 further discloses a heatable heater material (susceptor) comprises an electrically-conductive material (“conductive element… eddy currents induced in the susceptor” i.e. aluminum is known to have excellent electrical conductivity properties, para. 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heatable heater material of Gill (i.e. induction heatable elements 42) to comprise the electrically-conductive material as further taught by Mironov’330, because the electrically-conductive material allows the heatable heater material to be heated in the presence of magnetic field generated by the coil such that the heatable heater material can heat the aerosol substrate that is in contact with the heatable heater material.
Regarding Claim 4, the modification discloses substantially all of the claimed features as set forth above, except the heatable heater material comprises an electrically-conductive material including a metal or a metal alloy.
However, Mironov’330 further discloses a heatable heater material (susceptor element) comprises an electrically-conductive material including a metal (aluminum) (para. 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heatable heater material of Gill (i.e. induction heatable elements 42) to comprises the electrically-conductive material including the metal as further taught by Mironov’330, because the metal (i.e. aluminum) allows the heatable heater material to be heated in the presence of magnetic field generated by the coil such that the heatable heater material can heat the aerosol substrate that is in contact with the heatable heater material.
Regarding Claim 5, the modification discloses substantially all of the claimed features as set forth above, except the heatable heater material comprises an electrically-conductive material including one or more materials selected from the group consisting of: aluminum, gold, iron, nickel, cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze.
However, Mironov’330 discloses a heatable heater material (susceptor element) comprises an electrically-conductive material including aluminum (aluminum) (para. 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heatable heater material of Gill (i.e. induction heatable elements 42) to comprises the electrically-conductive material including the aluminum as further taught by Mironov’330, because the metal (i.e. aluminum) allows the heatable heater material to be heated in the presence of magnetic field generated by the coil such that the heatable heater material can heat the aerosol substrate that is in contact with the heatable heater material.
Regarding Claim 6, Gill discloses the system, wherein the cartridge (capsule 26), wherein the container (capsule 26) defines an air flow inlet (holes in the base of the capsule 26) extending therethrough (“ambient air enters the shell 28 through the base 30”, para. 0050, also para. 0056), the air flow inlet configured to admit air into the cavity from an exterior of the container (it is noted the base 30 is air permeable, therefore the base of the capsule 26 defines the air flow inlet to let air through).
Regarding Claim 7, Gill discloses the system, wherein the cartridge includes a temperature detector (temperature sensor 44) configured to detect a temperature of the cartridge (capsule 26) (“temperature sensor 44 measures the temperature inside the shell 28”, para. 0047).
Regarding Claim 8, the modification discloses substantially all of the claimed features as set forth above, except wherein the container comprises a liner having an aperture extending therethrough.
However, Mironov’330 discloses a container (cartridge 200) comprises a liner (susceptor element 210; fig. 2) having an aperture (mesh) extending therethrough (para. 0063).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Gill to include the liner having the aperture extending therethrough (i.e. modify the lid of the capsule 26 of Gill to include the liner) as further taught by Mironov’330, in order to heat the aerosol material in the capsule from the top using the liner as one of the heating sources because the liner would be heated by the magnetic field induced by the coil, so that the flavor medium would be heated up quickly because it would be heated by multiple heating sources (i.e. liner mounted to the lid of the capsule of Mironov’330 and induction heatable elements 42 disposed in the capsule of Gill).
Regarding Claim 9, the modification discloses substantially all of the claimed features as set forth above, except the container comprises a liner made of electrically- conductive material.
However, Mironov’330 discloses a container (cartridge 200) comprises a liner (susceptor element 210; fig. 2) made of electrically- conductive material (aluminum) (para. 0063 and 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Gill to include the liner made of electrically- conductive material (i.e. modify the lid of the capsule 26 of Gill to include the liner) as further taught by Mironov’330, in order to heat the aerosol material in the capsule from the top using the liner as one of the heating sources because the liner would be heated by the magnetic field induced by the coil, so that the flavor medium would be heated up quickly because it would be heated by multiple heating sources (i.e. liner of Mironov’330 and induction heatable elements 42 of Gill).
Regarding Claim 10, Gill discloses the system, wherein the container is made of a material that is impermeable to air (sidewall of the capsule 26) and has the plurality of apertures extending therethrough (holes in the lid of the capsule 26) (according to published specification of the instant application, para. 0059, “in some embodiments, the container 10 may be made of a material that is impermeable to air and have one or more apertures extending therethrough for admitting air into the cavity 14 from the exterior of the container 10.” It is examiner’s position that as long as some part of the container is made of material that is impermeable to air and some other part of the container have one or more holes extending through the container meet the claim limitation. In this case, Gill discloses in the embodiment in which the lid of the capsule is air permeable and the base of the capsule is air permeable, and the side wall is not air permeable, para. 0056 and 0040).
Regarding Claim 11, the modification discloses substantially all of the claimed features as set forth above, except the cavity comprises up to 1 gram of the smokable material.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify the cavity of the capsule of Gill in view of Mironov’330 to comprise up to 1 gram of the smokable material, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation to ensure there is enough the aerosol substrate in the capsule to enable the generation of aerosol vapor to fit desired user’s preference (para. 0041 of Gill).
Regarding Claim 12, the modification discloses substantially all of the claimed features as set forth above, except wherein the heatable heater material comprises discontinuities or holes therein.
However, Gill further discloses in another embodiment (fig. 5), wherein the heatable heater material (induction heatable elements 42) comprises holes (apertures 64) therein (para. 0054 and 0024).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heatable heater material of Gill (i.e. induction heatable elements 42) to comprise holes therein as further taught by Gill, in order to improve air flow through the capsule and through the heated flavor-release medium 40) (para. 0024).
Regarding Claim 14, the modification discloses substantially all of the claimed features as set forth above. Gill discloses the system (inhaler 10; fig. 1), wherein the apparatus (all shown in fig. 1 except the capsule 26) further comprises a body (housing 12; fig. 1), wherein the body (housing 12) includes the interface (chamber 24) (para. 0038).
The modification does not disclose the mouthpiece is movable relative to the body.
However, Mironov’330 discloses a mouthpiece (mouthpiece portion 120) is movable relative to the body (main housing 101) (“mouthpiece portion is connected to the main housing 101 by a hinged connection in this example but any kind of connection may be used, such as a snap fitting or a screw fitting”, para. 0061. It is noted the mouthpiece portion 120 can be disconnected from the main housing 101, therefore the mouthpiece portion 120 is movable relative to the housing 101).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mouthpiece of Gill in view of Mironov’330 and Benson such that it is movable relative to the body as taught by Mironov’330, in order to allow the user to disconnect the mouthpiece from the body for cleaning.
Regarding Claim 16, Gill discloses the system (inhaler 10; fig. 1), wherein the apparatus (fig. 1 excludes the capsule) defines at least part of a passageway (conduit 15; fig. 1) configured to permit volatilized material (heated air or vapour) to pass from the cavity of the container (capsule 26) to an exterior of the apparatus in use (consumption by the user) (para. 0040).
Regarding Claim 17, Gill discloses the system (inhaler 10; fig. 1), wherein the interface (chamber 24) comprises a surface (“a chamber in which the capsule is removably disposed”, para. 0025) and wherein the interface is configured for mechanical mating with the cartridge (para. 0038) (it is noted according to attached Webster, “mechanical” is interpreted to mean physical. Because the cartridge is disposed in the chamber 24, the cartridge is in physical contact with the chamber 24).
Regarding Claim 18, Gill discloses the system (inhaler 10; fig. 1), wherein the interface (chamber 24) defines a recess (space of the chamber into which the capsule is inserted; fig. 1) configured to receive at least a portion of the cartridge (“a chamber 24 into which a capsule 26 can be removably inserted”, para. 0038).
Regarding Claim 19, Gill discloses the system (inhaler 10; fig. 1), wherein the magnetic field generator (induction heating arrangement 50) comprises a coil (coil 52) (para. 0045), and wherein the recess (space of the chamber into which the capsule is inserted; fig. 1) and the coil (coil 52) are relatively positioned so that a varying magnetic field (magnetic field) produced by the coil in use penetrates the recess at a location where the heatable heater material is located (para. 0045, it is noted the magnetic field penetrates the recess at the location to heat the heatable elements 42 in the capsule disposed within the chamber 24, thus heat the medium 40).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Gill (US 20170156403), Mironov’330 (US 20170079330), and Benson (US 20140251321) as applied to claim 14 above, further in view of Mironov’215 (US 20160324215)
Regarding Claim 15, the modification discloses substantially all of the claimed features as set forth above, except the apparatus comprises a puncture device, wherein the puncture device is configured to puncture or penetrate the cartridge as the mouthpiece is moved relative to the body when the cartridge cooperates with the interface.
However, Gill further discloses in another embodiment shown in fig. 5, a puncture device (“modified temperature sensor 62 having a hollow passage 46 through which heated air or vapour can flow out of the shell 28 and along the conduit 15 leading to the mouthpiece 18”, para. 0054), wherein the puncture device is configured to puncture or penetrate the cartridge when the cartridge (capsule 26) cooperates with the interface (chamber 24).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the temperature sensor 44 of Gill in view of Mironov’330 and Benson to include the hollow passage through which heated vapour can flow out of the shell into the mouthpiece, in order to allow the capsule having non-permeable lid to be used in the apparatus by piercing the lid with the modified temperature sensor to allow heated vapour to exit the capsule, flow through the hollow passage and into the mouthpiece.
The modification does not disclose the puncture device comprising a first tube and a second tube, is configured to puncture or penetrate the cartridge as the mouthpiece is moved relative to the body.
However, Mironov’215 discloses a puncture device (piercing portion 314) comprising a first tube (inlet conduit 316) and a second tube (outlet conduit 318) (para. 0080; figs. 3-4), is configured to puncture or penetrate a seal of the cartridge (lid of capsule 100) as the mouthpiece is moved relative to the body (housing 302 of the aerosol-generating device 300) (para. 0071).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the puncture device of Gill in view of Mironov’330 and Benson (i.e. modified temperature sensor of Gill) to be part of the mouthpiece such that when the mouthpiece is attached to the housing of the apparatus, the puncture device punctures the capsule, such that as the user draws on the mouthpiece, air enter through the inlet conduit 316, into the capsule, and exit the capsule through the outlet conduit 318 in the mouthpiece. Doing so would allow the capsule having the non air-permeable lid to be used in the apparatus, and the user simply needs to attach the mouthpiece to the housing of the apparatus, the puncture device of the mouthpiece would pierce the lid of the capsule to allow the heated vapour to exit the capsule through the hollow passages and into the mouth piece, thereby simplify the design of the apparatus.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Gill (US 20170156403), Mironov’330 (US 20170079330), and Benson (US 20140251321) as applied to claim 1, further in view of Cohen (US 20110036346)
Regarding Claim 20, the modification discloses substantially all of the claimed features as set forth above, except the apparatus comprises a temperature sensor for sensing a temperature of the recess.
However, Cohen discloses an apparatus (inhalation device; fig. 1) comprises a temperature sensor (sensor) for sensing a temperature of the recess (atomization chamber 104; fig. 8) (para. 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the recess of Gill (i.e. chamber 24) in view of Mironov’330 and Benson to include the temperature sensor for sensing temperature of the chamber as taught by Cohen, in order to control the heating coil based on the sensed temperature of the chamber such that optimum temperature is obtained (para. 0041 of Cohen).
Response to Amendment
With respect to drawings objection: since amendment made to the claim 1, therefore drawings objection is withdrawn.
With respect to 112b rejections: since amendment made to claim 1, therefore 112b rejections are withdrawn.
Response to Argument
Applicant's arguments filed on 02/04/2026 have been fully considered but they are respectfully considered moot in view of new ground of rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
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, Helena Kosanovic can be reached on (571)272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BONITA KHLOK/ Examiner, Art Unit 3761
Prosecution Insights