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 .
Response to Amendment
This office action is in response to Applicant’s amendment filed 3/27/2026.
Claims 1 and 13 are amended.
Claims 10, 18, 20, and 22 are cancelled.
Claims 1-9, 11-17, 19, 21, and 23-24 are pending.
Response to Arguments
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Applicant argues that Aoun, Nettenstrom, and Mironov fail to teach or suggest a cartridge having “a second portion of the shell having a second thickness that is less than a first thickness of the first portion of the shell and a transition region between the first portion of the shell and the second portion of the shell, and the second portion of the shell having a second external width that is greater than a first external width of the first portion of the shell and a third external width of the transition region, and wherein the third external width is greater than the first external width” (p. 6).
The Examiner respectfully disagrees and addresses each of Applicant’s specific arguments below.
Applicant argues that Nettenstrom does not disclose a transition region as claimed (p. 7). Specifically, Applicant argues that a transition region, such as Applicant’s transition region 203, requires an identifiable change in surface character (p. 8), and that because Nettenstrom characterizes the device as having a smooth, continuously curved profile (citing [0058]-[0059]), the rounded curved surfaces have no identifiable change in character at which one region could end and another begin (p. 7).
The Examiner has noted Applicant’s argument but respectfully disagrees.
As an initial matter, the Examiner agrees with Applicant that the transition region requires an identifiable change in surface character. Specifically, claims 1 and 13 now positively recite the transition region, which (1) is located between the first portion of the shell and the second portion of the shell, (2) has a third external width that is smaller than the second external width (i.e., “the second portion of the shell having a second external width that is greater than…a third external width of the transition region”) and (3) has the third external width that is greater than the first external width. Nettenstrom teaches a housing having a change in surface character because the shape is rounded ([0058]) meaning the external width of the shell changes (see Figs. 1-2). As shown below, Nettenstrom discloses that the transition region (see green box in annotated Fig. 1) that is between the first portion (see red box in annotated Fig. 1) and the second portion (see blue box in annotated Fig. 1) having a third width (see green width in annotated Fig. 1) that is smaller than the second width (see blue width in annotated Fig. 1) and greater than the first width (see red width in annotated Fig. 1).
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Moreover, the Examiner finds Applicant’s argument that because Nettenstrom’s device has a smooth, continuously curved profile, there is no identifiable change in character at which one region could end and another begin, unpersuasive. The Examiner contends that the language of claims 1 and 13 define the axial extent of the first portion, the second portion, and the transition region. Specifically, claims 1 and 13 define that the first portion extends partially around the perimeter of a receptacle, that the second portion receives a portion of the power source, and that transition region is between the first portion and the second portion. Therefore, the transition region is merely the region of the shell that begins at the end of the first portion, and ends at the beginning of the second portion.
Applicant argues that even if Nettenstrom did contain something resembling a transition region, the reference still fails to disclose any variation in shell thickness, let alone thickness differences associated with distinct portion of the shell or transition region as required by claim 1 (p. 8).
The Examiner finds Applicant’s argument unpersuasive for two reasons.
First, the Examiner finds Applicant’s argument unpersuasive because Applicant attacks Nettenstrom alone, whereas the rejection relies on the combination of at least Aoun and Nettenstrom. “One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.” MPEP 2145(IV). Here, Nettenstrom is used merely to teach the external dimensions of the first portion, the second portion, and the transition region. Rather, Aoun is relied upon to teach the different thicknesses of second portion and the first portion.
Second, the Examiner finds Applicant’s argument unpersuasive because Applicant’s argument relies on limitations not recited in claims 1 and 13. “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. MPEP 2145(VI). Here, there is nothing in claim 1 or 13 that defines the thickness of the transition region in relation to the thicknesses of the first and second portions.
Applicant argues that Nettenstrom emphasizes its unique shape and explicitly acknowledges that its structure deviates markedly from known vaporizer configurations underscores that the reshaping of the housing’s thickness to be less than the length and width is not simply routine or obvious design choice (p. 8-9).
The Examiner has noted Applicant’s argument but notes that Nettenstrom further provides motivation to change the shape of Aoun’s housing because it would provide a more comfortable grip (Nettenstrom; [0074]-[0075]).
Applicant argues that reducing the outer dimensions of Aoun’s housing would require a substantial redesign of the underlying system architecture (p. 9).
In response to applicant's argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 13, the claim limitation “the second portion of the shell having a second external width that is greater than…a third external width of the transition region” lacks written description. Specifically, the instant specification does not mention any width of the transition region. Moreover, all the of the Drawings illustrating the transition region 203 (see Figs. 3A-B, 4D, 5A) show that the transition region has an external width that is the same as the second external width of the second portion 202. However, there is no description of “the second portion of the shell having a second external width that is greater than…a third external width of the transition region.”
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.
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 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 1-2, 4-8, 13-14, 16-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun et al. (US 2017/0347706; of record) in view of Nettenstrom et al. (US 2019/0099567; of record) and Mironov et al. (US 2016/0345630; of record).
Regarding claims 1 and 13, Aoun discloses an apparatus for generating an inhalable medium (abstract; “vaporizer device”) comprising:
a housing (402; “shell”) formed from a continuous piece of a material (Fig. 4), the housing having a first portion (see annotated Fig. 4) and a second portion (see annotated Fig. 4), the first portion of the shell extending around a liquid (410; “vaporizable material”) contained in container (element 409; see [0045] and [0065], describing that reference numerals for those components and features of the example described with reference to FIG. 1 have the same reference numeral but increased by 400, and that container 9 is a discrete container that may be disposable so that the user replaces the liquid by fitting a new container with liquid in the housing; “extending at least partially around a perimeter of a receptacle configured to receive a vaporizer cartridge”), and the second portion of the housing containing a battery ([0041]; see undescribed element 407; “receive at least a portion of a power source”), and the second portion having a second wall thickness (see annotated Fig. 4) that is less than a first wall thickness of the first portion of the housing (see annotated Fig. 4) and having a transition region between the first portion and the second portion of the housing (see annotated Fig. 4).
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Moreover, Aoun discloses that the housing is generally cylindrical (see [0041], [0053], [0059]).
However, Aoun is silent as to the second portion of the shell having a second external width that is greater than a first external width of the first portion of the shell and a third external width of the transition region, and wherein the third external width is greater than the first external width. Rather, Aoun appears to teach that the first external width, the second external width, and the third external width are all equal (see Fig. 4 above).
Nettenstrom teaches a vapor provision device (abstract) wherein it is known that prior electronic cigarette comprise a generally cylindrical configuration ([0006]) and that these existing electronic cigarettes have recognized drawbacks concerning the ease and comfort of handling and restrictions on the available space for internal components ([0007]). Nettenstrom addresses these drawbacks by designing an electronic cigarette (100) having a housing (33; Fig. 1) defining a first portion (see annotated Fig. 1) extending around a perimeter of a receptacle (see Fig. 1) configured to receive a cartomizer (200; “vaporizer cartridge”) and a second portion (see annotated Fig. 1) configured to receive a re-chargeable cell or battery (31; “power source”), wherein the electronic cigarette has a thickness (T) that is significantly less than both the length (L) and width (W) (see Figs. 2-5; [0058]) and has a shape that is generally rounded and smooth ([0058]) such that the second portion has a second external width (see blue width in annotated Fig. 1) that is greater than a first external width of the first portion (see red width in annotated Fig. 1, see also Figs, 6-7, and 10-11) and a third external width of a transition region (see green width in annotated Fig. 1), and wherein the third external width is greater than the first external width (see annotated Fig. 1).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Aoun’s housing to have a thickness significantly less than the length and width and have a generally smooth/rounded shape as in Nettenstrom because (1) such a modification would provide a more comfortable grip (Nettenstrom; [0074]-[0075]), and such a modification involves the mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 (IV).
Moreover, Aoun discloses that reference numerals for components and features of the example described with reference to Fig. 1 have the same reference numeral but increased by 400 for the embodiment in Fig. 4 ([0065]), and that heater (11; “atomizer”) is provided with an annular wick (12).
However, Aoun is silent as to the vaporizer cartridge containing the atomizer. Specifically, the heater 411 in Aoun is located outside of the container 409.
Mironov teaches an aerosol generating system (abstract) wherein known cartridge configurations typically comprise a coil of a heater wound around an elongate wick soaked in a liquid aerosol-forming substrate ([0002]) and this arrangement has the drawback of being relatively expensive to produce because manufacturing the wick and coil is difficult and electrical contacts between the coil of the heater wire and electrical contacts through which electrical current is delivered must be delicately handled during manufacture ([0003]). Mironov solves this problem by providing a cartridge (20. Fig. 1a-b) comprising a housing (24), a capillary material (22) soaked in a liquid aerosol-forming substrate ([0117]), and a heater assembly (30; “vaporizer cartridge containing…an atomizer”) fixed to an open end of the housing ([0118]), wherein the cartridge is removably coupled to the device ([0012]).
It would have been obvious said skilled artisan to have modified Aoun’s cartridge with a heater wound around a wick to be configured like Mironov’s cartridge comprising a housing, substrate, and heater assembly in order to provide a cartridge that is less expensive to produce, is more robust, and is more efficient that prior heater assemblies (Mironov; [0004]).
Regarding claims 2 and 14, modified Aoun discloses the second portion of the housing has a larger inner cross-sectional dimension than the first portion of the shell (see annotated Fig. 4).
Regarding claims 4 and 16, modified Aoun discloses the second thickness is less than the first thickness (see annotated Fig. 4) such that the second section has a larger inner cross-sectional dimension than the first portion (annotated Fig. 4).
Regarding claim 5-6 and 17, modified Aoun discloses the housing having a length and a width (annotated Fig. 4), wherein the length of the housing is much greater than the width of the housing (see annotated Fig. 4).
However, modified Aoun does not explicitly teach wherein the length of the shell is greater than 8 times the width of the shell, or the length of the shell is 11-12 times the width of the shell.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the proportion of the length to width of Aoun’s housing such that the length of the housing is 11-12 times the width of the housing because such a modification involves a change in the relative dimensions of the length and width of the housing. “[W]here 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.” MPEP 2144.04(IV)(A).
Regarding claims 7-8 and 19, regarding the claim limitations “wherein the shell is formed by subjecting a hollow slug of the material to impact” and “wherein the shell is formed by subjecting a solid slug of the material to impact,” these claim limitations have been considered and interpreted as a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." MPEP 2113(I).
As discussed above (see rejection of claim 1), Aoun’s housing (402) has the same structure as claimed. Moreover, the product-by-process steps do not appear to impart any structure differences to the claimed shell. Thus, the claim limitations are not patentable over Aoun’s housing. “Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a nonobvious difference.” MPEP 2113(II).
Claims 3, 9, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun et al. in view of Nettenstrom et al. and Mironov et al. as applied to claims 1 and 13 above, and further in view of Trzecieski (US 2019/0166913; of record).
Regarding claims 3 and 15, modified Aoun discloses the vaporizer device and shell as discussed above with respect to claims 1 and 13.
However, modified Aoun does not explicitly teach wherein the material comprises a metal or metal alloy. Specifically, Aoun does not disclose what material the housing is made out of.
Trzecieski teaches a vaporization device (abstract) comprising a base (104; Fig. 2; “shell formed from a continuous piece of material”), wherein the base can be manufactured using a metal or metallic material, for example using a metal injection molding process to form a unitary base ([0022], [0247]; “metal or metal alloy”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Aoun’s housing to be made out of a metallic material as in Trzecieski because the “selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination.” MPEP 2144.07.
Regarding claims 9 and 21, modified Aoun discloses the vaporizer device and shell as discussed above with respect to claims 1 and 13 above.
However, modified Aoun is silent to the shell includes one or more apertures configured to allow visualization of one or more light emitting diodes.
Trzecieski further teaches the base (104) comprising an opening on a first device end (102A; Fig. 2; “aperture”) and indicator lights positioned proximate the first device end ([0230]) the indicator lights include a plurality of light emitting diodes (LEDs) 130 ([0231]) and configured such that the indicator lights may be visible form the exterior of the vaporizer device ([0230]).
It would have been obvious to said skilled artisan to have added an opening and LEDs as in Trzecieski to the end of Aoun’s housing in order to obtain the predictable result of viewing the indicator lights from the exterior of the vaporizer device (Trzecieski; [0230]) such that a user would be able to read information or feedback on various aspects of the device operation (Trzecieski; [0228]) thus improving the user’s experience.
Claims 11 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun et al. in view of Nettenstrom et al. and Mironov et al. as applied to claims 1 and 13 above, and further in view of Simpson et al. (US 2020/0376210; of record).
Regarding claims 11 and 23, modified Aoun discloses the vaporizer device and shell as discussed above with respect to claims 1 and 13. Modified Aoun further discloses the apparatus is arranged to heat the liquid to form an aerosol ([0009]), wherein an aerosol is a colloid of fine solid particles or liquid droplets in air or another gas ([0040]).
However, modified Aoun is silent as to wherein the first portion of the shell includes a first air inlet configured to form a fluid coupling with a second air inlet in the vaporizer cartridge when the vaporizer cartridge is coupled with the vaporizer device, and wherein the second air inlet in the vaporizer cartridge is configured to allow air entering the first inlet to further enter the vaporizer cartridge. The Examiner notes that while Aoun teaches forming an aerosol, Aoun does not appear to teach any structure that would allow air to enter the device to form such an aerosol.
Simpson teaches a vapor provision system (abstract) comprising a control unit (4) comprising an outer housing (10; “shell”) including a receptacle wall (12; “first portion”) having two control unit air inlet openings (14; “first air inlet”) positioned to align with an air inlet (50; “second air inlet”) for a cartridge (2; “vaporizer cartridge”) when the cartridge is coupled to the control unit ([0026]; “fluid coupling”) and thus allow for air to enter the cartridge ([0052]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added air inlet openings and an air inlet as in Simpson to Aoun’s housing and cartridge respectively in order to obtain the predictable result of aligning the air inlet openings with the air inlet (Simpson; [0026]) and thus allow air to enter the cartridge (Simpson; [0052]) and form an aerosol as suggested by Aoun ([0009], [0040]; see also Simpson [0052], describing air mixing with vapor to form a condensation aerosol).
Claims 12 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun et al. in view of Nettenstrom et al. and Mironov et al. as applied to claims 1 and 13 above, and further in view of Qiu (US 2022/0022538; of record).
Regarding claims 12 and 24, modified Aoun discloses the vaporizer device and shell as discussed above with respect to claims 1 and 13, comprising the receptacle and cartridge (annotated Fig. 4; [0011]), wherein the cartridge contacts the receptacle on three sides (see Fig. 4; “cartridge interface” and “sidewall of the cartridge interface”).
However, modified Aoun is silent as to at least one sidewall of the cartridge interface includes a notch where a material forming the cartridge interface is at least partially removed to accommodate the vaporizer cartridge.
Qiu teaches a battery housing (21; Fig. 3; “shell”) comprising a cartridge mounting groove (213; “receptacle”) provided with an engaging groove (2131; “at least one sidewall…includes a notch”) corresponding to an engaging protrusion (113) of a cartridge (10), such that when the cartridge is inserted into the battery housing, the engaging protrusion is matched with the engaging groove ([0049]).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have added an engaging groove and an engaging protrusion as in Qiu to Aoun’s receptacle and cartridge respectively in order to obtain the predictable result of matching the engaging protrusion to the engaging groove with the benefit of stabilizing the connection between the cartridge and the power supply device (Qiu; [0049]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Y Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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