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 .
Status of the Claims
Claims 16, 20-23, and 26-31 are currently pending and are subject to this office action. Claim 27-30 are withdrawn. Claims 1-15, 17-19, and 24-25 are canceled. Claim 31 is newly added. This office action is in response to Applicant’s amendments filed on 05/28/2026.
Response to Amendments
Examiner acknowledges Applicant’s response filed on 05/28/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, on pages 6-11, filed 05/28/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant argues that Krasnow does not teach the claimed electrode arrangement or spatial relationship. Further that Krasnow does not identify the lateral surface as being accessible to a user's lips.
The Examiner respectfully disagrees. Murray is relied upon for teaching the overall mouthpiece structure. Murray teaches a first electrode on a forward facing surface which allows contact with the user's tongue while the lateral electrode is positioned on a side surface of the mouthpiece also allowing contact with a user's tongue (Pg. 5, Lines 20-23 & Pg. 16, Lines 20-27). The rejection acknowledges that Murray does not disclose that the second electrical contact on the lateral surface is accessible to a user's lips. However, Krasnow teaches that electrodes exposed on the exterior perimeter of the mouthpiece are intended to contact a user's lips [0021].
One of ordinary skill in the art would have understood that an exterior perimeter includes the peripheral lateral surfaces of the mouthpiece. Krasnow additionally teaches embodiments wherein a plurality of electrodes are arranged around the exterior of a mouthpiece to ensure that the user's lips are detected [0044]. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references (MPEP 2145(IV)). The rejection does not rely on Krasnow for the entire electrode arrangement. While, Murray is relied upon for the overall electrode arrangement, Krasnow is only relied upon for its additional teaching that an exterior mouthpiece electrode is configured for lip contact.
Applicant’s arguments, on pages 6-11, filed 05/28/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant argues that Krasnow teaches replacement rather than supplementation and that Krasnow is incompatible with Murray, thus there is no motivation to combine Murray and Krasnow.
The Examiner disagrees. Krasnow discloses where the electrodes are intended to be contacted by the upper lip, bottom lip, or either oral commissure [0048]. Krasnow further states that the mouthpiece may include an additional electrode along one of the longitudinal sides thereof, arranged such that the individual can place their tongue against the electrode [0048]. Thus, Krasnow expressly teaches adding a tongue contact electrode in addition to the lip contact electrode arrangement. The Applicant points out that Krasnow demonstrates that electrodes are unnecessary because Krasnow discloses a mechanical lip sensor [0048]. However, the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed (MPEP 2143.01(I)). Krasnow discloses that the mechanical lip sensor can be added in addition to the electrodes [0049] and does not criticize or teach away from the previous electrode embodiments.
Furthermore, Krasnow teaches that electrodes positioned on the mouthpiece detect whether the user has properly engaged the mouthpiece by determining whether contact events occur between the user's lips and the electrodes [0021-0022]. Krasnow further teaches that the detected contact events may be used to determine whether the inhaler is properly positioned before allowing delivery, thereby preventing accidental triggering [0044-0047]. Applying this known arrangement to Murray would have merely modified the location and accessibility of Murray's already existing lateral electrode while maintaining Murray's overall function. Both references disclose electrodes disposed on the exterior of a mouthpiece for physical contact with areas of a user's mouth. Thus, the modification merely uses one known user-contact arrangement in another mouthpiece using exterior electrodes.
Applicant’s arguments, on pages 6-11, filed 05/28/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant argues that the office improperly reconstructs the claimed invention using the Applicant's disclosure as a roadmap, there is no reasonable expectation of success, and that the office fills gaps between unrelated references rejection using impermissible hindsight.
The Examiner disagrees. Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from an Applicant's disclosure, such a reconstruction is proper (MPEP 2145(X)(A)). As discussed above, Murray teaches a mouthpiece including a forward facing electrical contact accessible to a user's tongue and a second electrical contact disposed on a lateral facing surface of the mouthpiece (Pg. 5, Lines 20-23 & Pg. 16, Lines 20-27).
Krasnow teaches electrodes positioned around the exterior of a mouthpiece for contact with a user [0021], and the contact may be used to determine whether the mouthpiece has been properly positioned within the user's mouth for delivery [0022], limiting accidental triggering of the device [0046-0047]. A teaching, suggestion, or motivation to combine references that is found in the prior art is an appropriate rationale for determining obviousness (MPEP 2145(X)(C)). The motivation relied upon originates from Krasnow itself rather than the Applicant's disclosure. Further, the Applicant has not identified any technical incompatibility issues between the teachings of Murray and Krasnow that would have discouraged one of ordinary skill in the art from making the proposed modification. Both Murray and Krasnow disclose electrodes disposed on an exterior of a mouthpiece for physical contact with portions of a user's mouth. The proposed modification would allow Murray to remain operable for its intended purposes. Thus, the 35 U.S.C. 103 rejection over Murray in view of Krasnow for claim 16 is maintained.
The following are modified rejections based on Applicant’s amendments to the claims.
Claim Objections
Claim 16 is objected to because of the following informalities:
Line 11: “a tip of a tongue of a use and” should read “a tip of a tongue of a user and”
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 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 16, 20, 21, 22, 23, 26, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (WO 2020161328 A1), and further in view of Krasnow (US 20200147327 A1, as cited in IDS dated 11/14/2022).
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With regard to Claim 16, Murray, directed to a mouthpiece for a smoking substitute apparatus, teaches (i) a mouthpiece (Fig. 1C: #109) that draws air through a passage (Fig. 1C: #106) to an outlet (Fig. 1C: #108, Pg. 15, Lines 9-11) at the top of the device. (ii) The mouthpiece includes an electrode (Fig. 1C: #120) that may be disposed on a forward-facing surface (Fig. 1C: #124) of the mouthpiece (Pg. 5, Line 20) for electrically stimulating a user’s tongue (Pg. 16, Line 27). (iii) The forward-facing structure of the mouthpiece may be a surface oriented towards the user, meeting the claim limitation of the front face being a surface extending perpendicular or angular to a longitudinal direction of the mouthpiece.
(iv) A second electrode (Fig. 1C: #122) may be disposed on a lateral-facing surface (Fig. 1C: #126) of the mouthpiece (Pg. 5, Line 24) for electrically stimulating a user’s tongue (Pg. 16, Line 27). (v) The electrodes may be arranged on opposite sides of the mouthpiece (Pg. 5, Line 16-17) while on a lateral-facing surface, meeting the claim limitation of the lateral surface being a peripheral surface of the mouthpiece. (v) The mouthpiece may comprise a temperature actuator for varying a temperature of the one or more electrodes used to stimulate a user’s tongue (Pg. 6, Lines 1-2), meeting the claim limitation of a temperature unit. (vi) A Peltier module may be used to vary the temperature of the electrodes, enabling both heating and cooling of the electrodes (Pg. 6, Lines 7-10). (vii) The first electrode (Fig. 1C: #120) contacts a user's tongue to stimulate flavor deliver (Pg. 16, Line 27). Murray teaches all the limitations of the claims as set forth above, however Murray is silent to:
Wherein the second electrical contact on the lateral surface of the mouthpiece is accessible to a lip of the user
Krasnow, directed to inhaler devices, teaches one or more electrodes on a mouthpiece, where one electrode can be contacted by a user's lip and the other electrode can be contacted by a user's tongue [0048]. The mouthpiece may have an electrode disposed along one of the longitudinal sides of the mouthpiece [0048]. One of ordinary skill in the art would have been motivated to modify the electrodes of Murray to be contacted by both a user's tongue and lip to help detection of when a user is properly engaged with a mouthpiece [0046] and preventing accidental triggers of aerosol [0047].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the second electrical contact on the lateral surface of the mouthpiece of Murray to be accessible to a lip of the user because both Murray and Krasnow are directed to improving detection of a user during use of an aerosol delivery device. Murray teaches an electrode that can be contacted by a user's lips to help detection of when a user is properly engaged with a mouthpiece [0046] and preventing accidental triggers of aerosol [0047] and this merely involves the use of a known user contact technique to improve similar devices in the same way.
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With regard to Claim 20, Murray teaches wherein the mouthpiece may comprise one or more electrodes with different electrode arrangements depending on the type of simulate used (Pg. 4, Lines 31-32). A person of ordinary skill in the art would be motivated to modify the second electrode (Fig. 1C: #122) of the mouthpiece to be split into two separate electrode portions on a lateral-facing surface of the mouthpiece to increase the contact area of a user’s mouth relative to the mouthpiece, such as a user’s tongue and lips, to enhance flavors received by a user (Pg. 4, Lines 10-11).
With regard to Claim 21, Murray teaches wherein the cartridge (Fig. 1C: #103) comprising the mouthpiece (Fig. 1C: #109) can be disengaged or engaged with a main body (Fig. 1B: #102, Pg. 14, Lines 21-23) and in the form of a battery (Pg. 16, Line 1). The electrodes receive power from the battery through power supplied to electrical contacts (Fig. 1C: #128, Pg. 16, Lines 27-28).
With regard to Claim 22, Murray teaches wherein the controller (Pg. 16, Lines 3-4), powered by the battery, may send pulse frequencies between 50 Hz and 1200 Hz through the user’s tongue to simulate flavor (Pg. 17, Lines 10-12).
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With regard to Claim 23, Murray teaches wherein current having a magnitude between 20 µA and 200 µA may be passed through the user’s tongue to simulate flavor (Pg. 17, Lines 10-11). A person of ordinary skill in the art would realize that the range of Murray significantly overlaps with the range of the claimed invention. The claimed current range is a predictable value that one could routinely optimize based on user comfort (MPEP 2144.05).
With regard to Claim 26, Murray teaches a temperature actuator for varying a temperature of the one or more electrodes arranged to thermally stimulate the user’s tongue (Pg. 6, Lines 1-2) in temperatures between 20 °C and 35 °C (Pg. 17, Lines 30-31).
With regard to Claim 31, modified Murray teaches all the limitations of the claims as set forth above, however modified Murray is silent to:
Wherein the different body parts of the user are the upper lip of the user and the lower lip of the user
Krasnow teaches wherein the electrodes are typically intended to be contacted by the upper lip and bottom lip [0048] to ensure detection of a user’s lips against the device [0045].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the mouthpiece to wherein the different body parts of the user are the upper lip of the user and the lower lip of the user because both Murray and Krasnow are directed to improving detection of a user during use of an aerosol delivery device. Krasnow teaches electrodes that contact the upper and bottom lip to ensure detection of a user’s lips against the device [0045] and this merely involves applying a known contact technique to a known mouthpiece ready for improvement to yield predictable results.
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 OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip 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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/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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