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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/15/2026 has been entered.
Response to Amendment
Claims 1-15, 18, 20 and 22 are cancelled. Claim 16 is amended. Claims 23-29 are withdrawn. Claims 16-17, 19 and 21 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of 10/16/2025 are overcome.
Drawings
The drawings are objected to because shaded areas are not shown in black as required by 37 CFR 1.84(l). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Information Disclosure Statement
The information disclosure statement filed 8/18/2026 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. Specifically, none of the document numbers listed in the U.S. Patent Documents section correspond to U.S. patent documents.
Claim Interpretation
Regarding claim 16, the claim recites the limitation “wherein, in use, the proximal end of the housing points towards a consumer” (line 7), which is considered to be a statement regarding the intended use of the claimed device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a body that could be pointed towards a consumer during use.
The claim recites the limitation “wherein the illumination portion is configured to surround the aerosol-generating article in use” (lines 11-12), which is considered to be a statement regarding the intended use of the claimed device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a device that could be used while the article is in the claimed location.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable Ferrie (US 2022/0061399) in view of Schennum (US 10,412,994).
Regarding claims 16 and 17, Ferrie discloses a smoking substitute system (abstract) having a device that forms an elongate housing (figure 2D, reference numeral 201), which is considered to meet the claim limitation of an aerosol generating device, that accommodates a consumable ([1499], figure 2B, reference numeral 202), which is considered to the claim limitation of an aerosol generating article. The upper end of the housing is considered to meet the claim limitation of a proximal end, and the lower end of the housing is considered to meet the claim limitation of a distal end. The device has LEDs that are controlled by a controller based on usage of the device ([1510], figure 2B, reference numeral 211), which is considered to meet the claim limitation of the aerosol generating device being activated. It is evident that the upper part of the housing could be pointed towards a user during use since the consumable would not fall out of the cavity in that orientation. A heating element penetrates into the consumable and transfers heat to the consumable [1504], which is considered to meet the claim limitation of interacting. Ferrie does not explicitly disclose the LED’s located at the opening to the cavity.
Schennum teaches a pack for holding and recharging an e-cigarette (abstract) having an opening (figure 2, reference numeral 132) that is surrounded by an annular light element (column 4, lines 11-47, figure 2, reference numeral 133) that is made from a translucent material that allows light from an LED to pass through it (column 7, lines 27-34). The annular light element is considered to meet the claim limitation of a retaining element since it defines the opening into which the e-cigarette is inserted. Schennum additionally teaches that this arrangement of lights increases visibility for a user (column 7, lines 26-34).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the LED’s of Ferrie with the annular light element of Schennum. One would have been motivated to do so since Schennum teaches a light element that increases visibility of the light element for a user.
Regarding claim 19, Ferrie discloses that the upper end of the housing has an opening (figure 2D, reference numeral 221) that provides access to a cavity (figure 2D, reference numeral 222) into which the consumable is inserted ([1499], figure 2B, reference numeral 202).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (US 2022/0061399) in view of Schennum (US 10,412,994) as applied to claim 16 above, and further in view of Sullivan (US 2008/0185785).
Regarding claim 21, modified Ferrie teaches all the claim limitations as set forth above. Modified Ferrie does not explicitly teach the translucent material also being elastic.
Sullivan teaches a harness (abstract) made from elastic materials [0060] that contain a light source therein [0068] and is secured using the elastic material [0014]. The elastic material is also translucent so that the light can be seen [0068].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the translucent material of modified Ferrier from the translucent elastic material of Sullivan. One would have been motivated to do so since Sullivan teaches that elastic materials are suitable translucent materials for allowing light to pass through. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection relying on Ferrie are entered as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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