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 .
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.
Status of the Claims
Claims 1-8 and 10-24 are pending. Claims 8 and 15-19 are withdrawn. Claims 1 and 20 have been amended. Claims 23-24 are new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 12/8/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
Applicant argues that the device of Rentsch is “oriented at a right angle” due to “an angled supply channel 13” (Page 12 of the Remarks) and “[i]n Hon ‘518 there is no mention of any shape or structure of the nozzle 17 which teaches or in any way suggests anything other than a tubular/tubule nozzle” (Page 13 of the Remarks). Applicant concludes that “[o]ne of ordinary skill in the art would, accordingly, not be motivated to substitute the nozzle body 14/nozzle plate 14a taught in Rentsch ‘052 in place of the tubule nozzle 17 in Hon” (Page 13 of the Remarks). This argument is not persuasive as Rentsch is not relied upon for “an angled supply channel 13” or “nozzle body 14”. Instead, Rentsch is relied upon for a nozzle plate.
Applicant further argues that “in many embodiments disclosed in Rentsch ‘052, the nozzle body 14 discharges medicine toward an impact element 24” (Page 12 of the Remarks). This argument is not persuasive as Rentsch is not relied upon for a nozzle body discharging medicine toward an impact element.
Regarding the benefit of modifying Hon in view of Rentsch, Applicant argues “there is nothing in Hon to suggest that Hon’s device does not already accomplish this” benefit (Page 13 of the Remarks). This argument is not persuasive as Applicant has not provided evidence or rationale from which to conclude that a prior art reference must explicitly state that it lacks a particular benefit for it to be obvious to one having ordinary skill in the art to modify the reference such that it has said benefit.
Applicant further argues “there is likewise no teaching or suggestion in Rentsch for the Examiner’s modification of Hon” (Page 14 of the Remarks). This argument is not persuasive as Applicant has not provided evidence or rationale from which to conclude that a prior art reference is required to explicitly describe exactly how it would modify every other possible reference in order for it to be obvious to one having ordinary skill in the art to apply its teachings. Further, the motivation for the combination was provided in the Non-Final Rejected mailed 9/8/2025 (which is maintained in the rejection of claim 1 below).
Applicant further argues “there is certainly no teaching or suggestion in Hon ‘518 of any maximum cross-section of 0.002mm as required by Claim 1” (Page 14 of the Remarks). It is assumed that Applicant intended 0.002mm2, and this argument is not persuasive as Hon discloses a cross-sectional diameter, from which the cross-sectional area can be calculated, and the range disclosed by Hon overlaps the claimed range, as discussed in the rejection of claim 1 below.
Claim Objections
Claim 23 is objected to because of the following informalities: "atomization unit" should be "atomization nozzle unit". Appropriate correction is required.
Applicant is advised that should claim 11 be found allowable, claim 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-4, 10-14, and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US 2006/0196518 A1) in view of Rentsch et al. (US 2022/0160052 A1).
Regarding claim 1, Hon discloses an oral dispenser (“electronic cigarette”, Fig. 8, ¶ 0025) for discharging a liquid (“liquid”, ¶ 0025) in atomized form, comprising:
a liquid reservoir (“liquid storage container 213”, Fig. 8, ¶ 0025) of variable internal volume for storing the liquid prior to discharge (¶ 0025);
a spring mechanism (“super elastic member 210”, Fig. 8, ¶ 0025) by which, when the spring mechanism is loaded, the liquid in the liquid reservoir is permanently under positive pressure (¶ 0025);
an atomization nozzle unit (“vaporization nozzle 217”, Fig. 8, ¶ 0025) with at least one nozzle opening with a maximum cross-section of 0.002 mm2 (internal diameter of 0.05-2 mm, ¶ 0020, which corresponds to a cross-section of 0.00196 mm2 to 3.14 mm2; since the range 0.00196 mm2 to 3.14 mm2 overlaps the claimed range of maximum of 0.002 mm2, a prima facie case of obviousness exists, see MPEP § 2144.05(I));
an outlet channel (outlet channel in “baffle plate 215”, Fig. 8, ¶ 0025) connecting the liquid reservoir to the atomization nozzle unit (Fig. 8);
an outlet valve (combination of “pneumatic film 214”, “magnetic steel ring 218”, and “steel valve needle 220”, Fig. 8, ¶ 0025) provided in the outlet channel which can adopt an open state and a closed state (Fig. 8, ¶ 0025);
a mouthpiece (end “contacting with user’s mouth”, ¶ 0025) for inhalation of the liquid atomized by the atomization nozzle unit (¶ 0025); and
a refill opening (“refilling valve 212”, Fig. 8, ¶ 0025) separate from the atomization nozzle unit and connected to the liquid reservoir, wherein the spring mechanism is loaded by liquid fed through the refill opening into the liquid reservoir (Fig. 8, ¶ 0025).
However, Hon does not disclose wherein the atomization nozzle unit includes a nozzle plate with a plurality of nozzle openings each having a maximum cross-section of 0.002 mm2.
Rentsch, in the same field of endeavor, teaches an oral dispenser with a liquid reservoir under pressure (see abstract) and an atomization nozzle unit including a nozzle plate with a plurality of nozzle openings (¶ 0049). Rentsch also teaches that the plurality of nozzle openings each have a maximum cross-section of 0.002 mm2 (the nozzle openings can have a diameter of 6 µm or less, ¶ 0051; therefore, the range of possible total cross-sectional areas taught by Rentsch includes π x 0.003 mm x 0.003 mm = 0.000028 mm2 if using the stated maximum diameter; the range taught by Rentsch overlaps the claimed range, see MPEP § 2144.05(I)). Further, Rentsch teaches an advantage to including a nozzle plate with a plurality of openings in that it allows for a desirable size distribution of the atomized droplets of liquid (¶ 0008, 0050). Therefore, 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 atomization nozzle unit taught by Hon to include the nozzle plate with plurality of nozzle openings taught by Rentsch in order to achieve this benefit.
Regarding claim 2, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses that the oral dispenser includes a nicotine-containing liquid in the liquid reservoir (“liquid with nicotine”, ¶ 0025).
Regarding claim 3, Hon discloses the oral dispenser as claimed in claim 1, as stated above. Hon does not disclose the pressure of the force of the spring mechanism when the spring mechanism is in a fully loaded state with the liquid reservoir completely filled, to determine if the spring mechanism exerts a force which places the liquid in the liquid reservoir under a pressure of at least 4 bar. However, Hon teaches that the dispenser operates under constant pressure applied by the spring mechanism on the liquid reservoir (¶ 0025). The efficacy of the spring mechanism for this result depends on the pressure of the force applied by the spring mechanism. If the spring mechanism does not apply sufficient force, then the liquid will not be forced out of the liquid reservoir for vaporization. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the pressure of the force applied by the spring mechanism such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 4, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses that the oral dispenser has an elongate form oriented in a main extent direction (Fig. 8).
Regarding claim 10, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses wherein the outlet valve is configured as a manually actuatable outlet valve (the outlet valve is manually actuatable “When the user performs suction action”, ¶ 0025).
Regarding claims 11 and 24, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses wherein the outlet valve is configured as a lip-actuatable outlet valve (the outlet valve is actuatable “When the user performs suction action”, ¶ 0025; suction action may be provided by the user’s lips) and has an actuating face (“pneumatic film 214”, Fig. 8, ¶ 0025) on the mouthpiece or in a region of the mouthpiece (Fig. 8), the actuating face, when force-loaded by a user's lips, causing the outlet valve to transfer from the closed to the open state (¶ 0025).
Regarding claim 12, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses wherein the outlet valve is formed as a breath-controlled outlet valve (the outlet valve is actuatable “When the user performs suction action”, ¶ 0025; suction action may be provided by the user’s breath) and has a vacuum chamber (vacuum chamber formed by “suction action”, ¶ 0025) in communication with the mouthpiece (Fig. 8) and provided with a displaceable chamber wall (“pneumatic film 214”, Fig. 8, ¶ 0025), the displaceable chamber wall transferring the outlet valve from the closed to the open state by vacuum-induced displacement (¶ 0025).
Regarding claim 13, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses that the oral dispenser has an outer housing (“shell” in claim 68, Fig. 8).
Regarding claim 14, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon also discloses the oral dispenser further comprising at least one air channel (“air hole 216”, Fig. 8, ¶ 0025) through which air flows into the mouthpiece in order to be inhaled with the atomized liquid.
Regarding claim 20, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. However, Hon does not disclose wherein the plurality of nozzle openings have cross-sections in total amounting to a maximum of 0.04 mm2. Rentsch further teaches that the plurality of nozzle openings have cross-sections in total amounting to a maximum of 0.04 mm2 (the nozzle openings have a diameter of 6 µm or less, ¶ 0051, and the nozzle plate includes at least 20 nozzle openings, ¶ 0053; therefore, the range of possible total cross-sectional areas taught by Rentsch includes π x 0.003 mm x 0.003 mm x 20 = 0.0000565 mm2 if using the stated maximum diameter and minimum number of holes; since the range taught by Rentsch overlaps the claimed range, a prima facie case of obviousness exists, see MPEP § 2144.05(I)).
Regarding claim 21, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 3, as stated above. Hon does not disclose the speed of the liquid flow when the atomization nozzle unit is configured with an internal liquid pressure of 4 bar, to determine if a liquid flow between 5 µl/second and 30 µl/second is dispensed by the atomization nozzle unit. However, Hon teaches that under the pressure of the spring mechanism, the liquid flows through the dispenser (¶ 0007, 0025) and that this dispensing of liquid is for optimal delivery of nicotine to the user (¶ 0005-0006). The efficacy of the dispenser for this result depends on the speed of the liquid flow. If the liquid does not have sufficient flow through the dispenser or if the liquid flows too quickly through the dispenser, then the user will not receive optimal delivery of the liquid and the nicotine contained therein. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the pressure of the force applied by the spring mechanism such that it falls within the claimed range.
Regarding claim 22, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 4, as stated above. Hon further discloses wherein the refill opening is arranged at a distal end of the oral dispenser (Fig. 8, “refilling valve 212” is distal to “charging jack 202”).
Regarding claim 23, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon also discloses the oral dispenser further comprising a longitudinally elongate and tubular housing (housing in Fig. 8) defining a central longitudinal axis (central longitudinal housing in Fig. 8) and having axially spaced proximal and distal ends (proximal end with mouthpiece and distal end with “charging jack 202”, Fig. 8, ¶ 0025), the mouthpiece being disposed at the proximal end of the housing and being tubular and defining a central longitudinal axis (Fig. 8, ¶ 0025), the atomization nozzle unit being disposed in the mouthpiece (Fig. 8, ¶ 0025) and the mouthpiece being arranged coaxially with the housing (Fig. 8, ¶ 0025).Therefore, as the nozzle plate of Rentsch is located in the atomization nozzle unit of Hon in the oral dispenser of the combination, the nozzle plate is disposed in the mouthpiece in the oral dispenser of the combination.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US 2006/0196518 A1) in view of Rentsch et al. (US 2022/0160052 A1) as applied to claim 1 above, and further in view of Lavanant et al. (US 2019/0014815 A1).
Regarding claim 5, Hon in view of Rentsch teaches the oral dispenser as claimed in claim 1, as stated above. Hon further discloses wherein the liquid reservoir is delimited at least in portions by a wall (outer wall surrounding the liquid reservoir, Fig. 8), and the spring mechanism is configured for exerting a force on the wall to reduce a size of the liquid reservoir (¶ 0025, the spring mechanism exerts force on the liquid which exerts force on the outer wall as the size of the liquid reservoir is reduced).
However, Hon does not explicitly disclose that the wall has a flexible form.
Lavanant, in the same field of endeavor, teaches a liquid reservoir surrounded by an outer wall with flexible form (¶ 0080, Figs. 3-5). Lavanant also teaches that when force is exerted on the wall, the size of the liquid reservoir is reduced (Fig. 5), and the liquid moves under pressure (¶ 0083). Therefore, 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 wall taught by Hon to make it have a flexible form as taught by Lavanant in order to obtain the benefit of aiding the movement of the liquid through the dispenser.
Regarding claim 6, Hon in view of Rentsch and Lavanant teaches the oral dispenser as claimed in claim 5, as stated above. Lavanant further teaches wherein the form-flexible wall is configured as an elastically expandable hose surrounding the liquid reservoir (¶ 0080, 0083, Figs. 3-5; the form-flexible wall is an elastically expandable hose).
Regarding claim 7, Hon in view of Rentsch and Lavanant teaches the oral dispenser as claimed in claim 6, as stated above. Hon further discloses wherein the oral dispenser has a central mandrel (central mandrel in “refilling valve 212”, Fig. 8, ¶ 0025) surrounded by the outer wall, and the liquid reservoir is provided at least partially as a ring between an outer face of the central mandrel and an inside of the hose (Fig. 8). In the dispenser of the combination, the outer wall is the hose, so the central mandrel is surrounded by the hose.
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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