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 1, 3-4, 8, 12-29 and 31 are pending and are subject to this Office Action. Claims 25-29 and 31 are withdrawn.
Claim 1 is amended.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 8/07/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 8/07/2026 have been fully considered but they are not persuasive.
On pages 6-8, the Applicant argues that the pending rejections are overcome by the amendment to claim 1 to require “the tab portion is biased into the longitudinal or the radial position”, as Riddle discloses that the tab is “flexible” and “may be folded down” and later “may be extended to an upright position” by the user, but Riddle does not describe an elastic restoring force, spring action, resilient hinge, or other mechanism that tends to return or urge the tab towards either position. The Applicant argues that a tab that can be pivoted or folded is not the same as a tab that is biased into one of two claimed positions. The Examiner does not find this to be persuasive.
Claim 1 recites “wherein the tab portion is biased into the longitudinal position or the longitudinal position”. The claim does not require the consumable to have a separate biasing member such as an elastic restoring force, spring action, resilient hinge, or other mechanism to urge the tab towards either position, but rather that the tab is merely biased into the longitudinal position. This limitation is a functional limitation of operating the claimed consumable. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim, and that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See MPEP §§ 2114 and 2173.05(g). Therefore as the tab portion is structurally capable of being biased into one of the two claimed positions (i.e. through the force of a user), the prior art teaches all the structural limitations of the claim.
Further, the rejection relied on Rogan in view of Riddell, in which the removal facilitator of Rogan is modified to be offset from the longitudinal axis of the consumable as taught by Riddell. Therefore the structure of the tab 24/124 remains but the tab is just moved offset from the longitudinal axis. As Rogan teaches the tab is formed in a foldable material with a material hinge around which the tab can pivot (page 5, last paragraph), the tab of Rogan is structurally capable of being biased into the longitudinal position or the radial position. Further, Rogan explicitly teaches the tab being biased into these positions (tab 24 can pivot about an open position in which it is substantially perpendicular to the top surface 20 and a flat, closed position at the bottom end 30, page 5, third paragraph).
Even if we are to consider the complete substitution of the tab 24/124 of Rogan with the tab 7 of Riddell, this would still meet the claimed limitation of wherein the tab portion is biased into the longitudinal position or the radial position. Riddell teaches the tab will project upwardly from the upper end of the cigarette (Col. 2, lines 55-60, i.e. biased into the longitudinal position through the tabs natural tendency to be upright) and the tab is flexible and may be folded down upon the upper end of the tobacco filler 9 (Col. 2, lines 60-64, i.e. biased into the radial position through a force that folds the tab down).
Further, the Applicant appears to be interpreting the “is biased” limitation more narrowly than the plain meaning of the term. Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. See MPEP § 2111.01.I. The instant specification recites that the tab portion may be biased towards one of the radial or inclined positions (page 16, third paragraph) and that an elastic member may bias the tab portion (page 17, second paragraph). However, while an elastic member is one mechanism to bias the tab portion, this is not the only mechanism that would meet the plain meaning of the term. The use of force from a user of the consumable is also another mechanism that one of ordinary skill in the art would understand is also capable to bias the tab portion into one of the claimed positions.
In regard to the Applicant’s remarks on page 6 to the rejection of claim 15, the Examiner acknowledges that there was a typo in the heading for the Rogan/Riddell rejection which has been corrected. There is not a different rejection that was intended.
The following is a modified rejection made based on amendments made to the claims.
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.
Claim(s) 1, 3-4, 8, 12-15 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogan (WO2019/057976) in view of Riddell (US 1,809,218).
Regarding claim 1, Rogan discloses:
A consumable (cartridge 10/110) configured to be fully inserted into an aerosol provision device (electronic cigarette 50, figure 5, page 5, second paragraph), wherein the consumable comprises:
An aerosol generating material for use in generating aerosol by the aerosol provision device (aerosol forming material 14/114, figure 1a/4a, page 4, last paragraph).
An insertion portion configured for insertion into an aerosol generation zone of the aerosol provision device (casing 12/112, figure 1a/4a, page 4, last paragraph).
A removal facilitator (tab 24/124) that extends away from or is located on a surface of the insertion portion (as shown in figures 1b/4b and 2) and is configured to enhance gripping by a user of the consumable to assist in the removal of the insertion portion from the aerosol generation zone (in the open position a user can firmly grip the tab 24 and remove the cartridge 10 from the aerosol generation device, page 5, third paragraph).
Wherein the consumable is elongate and comprises a longitudinal axis (as shown in figures 1-5).
Wherein the removal facilitator is a tab portion which is freely moveable (tab 24 can pivot about) relative to the insertion portion between a longitudinal position in which the removal facilitator extends in a longitudinal direction that is parallel to the longitudinal axis of the consumable (an open position in which it is substantially perpendicular to the top surface 20) and a radial position in which the removal facilitator extends in a radial direction that is perpendicular to the longitudinal axis of the consumable (a flat, closed position at the bottom end 30, page 5, third paragraph).
Wherein the tab portion is biased into the longitudinal position or the radial position (The tab is formed in a foldable material with a material hinge around which the tab can pivot (page 5, last paragraph), and therefore the tab of Rogan is structurally capable of being biased into the longitudinal position or the radial position. Further, Rogan explicitly teaches the tab 24 can pivot about an open position in which it is substantially perpendicular to the top surface 20 (i.e. is biased into the longitudinal position) and a flat, closed position at the bottom end 30 (i.e. is biased into the radial position), page 5, third paragraph).
Rogan does not appear to explicitly disclose when the removal facilitator extends in a longitudinal direction that is parallel to the longitudinal axis of the consumable, the tab portion is offset from a longitudinal axis of the consumable.
However, Rogan further teaches alternative configurations of a tab for use on a consumable cartridge would readily occur to a person skilled in the art (page 7, third paragraph).
Riddell, directed to a cigarette grasper, teaches:
A cigarette provided with a tab on the end of the cigarette so as to be grasped by the fingers to remove a cigarette from the package with ease (lines 1-5).
The tab is freely moveable between a longitudinal position in which the tab extends in a longitudinal direction that is parallel to the longitudinal axis of the consumable (tab will project upwardly from the upper end of the cigarette, lines 56-59) such that the tab portion is offset from a longitudinal axis of the consumable (figure 2) and a radial position in which the removal facilitator extends in a radial direction that is perpendicular to the longitudinal axis of the consumable (the tab is flexible and may be folded down upon the upper end of the tobacco filler 9, lines 59-62).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the removal facilitator of Rogan to be offset from the longitudinal axis of the consumable when the removal facilitator extends in a longitudinal direction that is parallel to the longitudinal axis of the consumable as taught by Riddell, because both Rogan and Riddell are directed to consumables with a removal facilitator that is a tab portion which is freely moveable between a longitudinal position in which the tab extends in a longitudinal direction that is parallel to the longitudinal axis of the consumable and a radial position in which the removal facilitator extends in a radial direction that is perpendicular to the longitudinal axis of the consumable, Rogan teaches alternative configurations of a tab would readily occur to a person skilled in the art, and this merely involves incorporating a known way to configure a removal facilitator that is a tab (i.e. off set from a longitudinal axis of the consumer when in a longitudinal position) to a similar removal facilitator to yield predictable results.
Regarding claim 3, Rogan discloses wherein the removal facilitator is symmetrical about the longitudinal axis (figure 2, as tab 24 is centered in a width direction, and therefore even modified to project form the upper end, the tab would be symmetrical along its width).
Regarding claim 4, modified Rogan discloses wherein the removal facilitator is asymmetrical about the longitudinal axis (as tab 24 is modified to project from the upper end of the consumable and is therefore asymmetrical along its length).
Regarding claim 8, Rogan discloses wherein the removal facilitator is moveable between a longitudinal position that is aligned with the longitudinal direction of the consumable (an open position in which it is substantially perpendicular to the top surface 20), and a radial position that is aligned with a radial direction of the consumable (from a flat, closed position about the bottom end, page 5, third paragraph).
Regarding claim 12, Rogan discloses wherein a structure of the removal facilitator is self-supporting (as the tab 24 can be in a flat closed position about the bottom end, page 5, third paragraph, and therefore is self-supporting).
Regarding claim 13, Rogan discloses wherein at least the insertion portion is flat (the cartridge 10 has a flat top, page 4, last paragraph).
Regarding claim 14, Rogan discloses wherein at least the insertion portion is planar (other shapes of the cartridge 10 are possible such as a square shape, page 4, last paragraph).
Regarding claim 15, Rogan does not appear to disclose wherein at least the insertion portion is in the form of a disc. However, the change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B. Therefore, it would be obvious to one having ordinary skill in the art to modify the shape of the cartridge to be in the form of a disc, as this is merely the change in shape without any new or unexpected results.
Regarding claim 24, Rogan discloses wherein the removal facilitator comprises a substantially flat portion of the consumable (wherein the tab 24 can be in a flat closed position about the bottom end 30, page 5, third paragraph).
Claim(s) 16-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogan (WO2019/057976) and Riddell (US 1,809,218) as applied to claim 1 above, and further in view of Fernando (WO2019/211789).
Regarding claim 16, Rogan does not appear to disclose the consumable further comprising a blocking portion configured to prevent the removal facilitator being inserted into the aerosol generation zone.
Fernando, directed to cartridge comprising an aerosol-forming substrate, teaches:
A cartridge that comprises a flange at the top. The flange may help to prevent over-insertion of the cartridge into the receptable (page 12, second paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the cartridge of Rogan by incorporating a flange at the top as taught by Fernando, and thus a blocking portion configured to prevent the removal facilitator being inserted into the aerosol generation zone, because both Rogan and Fernando are directed to cartridges for aerosol generation devices, Fernando teaches the flange helps to prevent over-insertion of the cartridge, and this merely involves incorporating a known cartridge element (i.e. flange) to a similar cartridge to yield predictable results.
Regarding claims 17-19, as modified Rogan has the flange part of the consumable and the flange has a length and width, this reads on wherein the blocking portion is provided by an overall dimension of the consumable, wherein the overall dimension is a length of the consumable, and wherein the overall dimension is a width of the consumable.
Regarding claim 20, Rogan does not appear to disclose the consumable further comprising a blocking portion configured to prevent the removal facilitator being inserted into the aerosol generation zone, wherein the blocking portion is provided by an overall dimension of the consumable, and wherein the overall dimension is a diameter of the consumable.
Fernando, directed to cartridge comprising an aerosol-forming substrate, teaches:
A cartridge that comprises a flange at the top. The flange may help to prevent over-insertion of the cartridge into the receptable (page 12, second paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the cartridge of Rogan by incorporating a flange at the top as taught by Fernando, and thus a blocking portion configured to prevent the removal facilitator being inserted into the aerosol generation zone, because both Rogan and Fernando are directed to cartridges for aerosol generation devices, Fernando teaches the flange helps to prevent over-insertion of the cartridge, and this merely involves incorporating a known cartridge element (i.e. flange) to a similar cartridge to yield predictable results.
As modified Rogan has the flange part of the consumable and the flange has a length and width, this reads on wherein the blocking portion is provided by an overall dimension of the consumable, wherein the overall dimension is a diameter of the consumable.
Regarding claim 21, as modified Rogan has a flange that is larger in width than the rest of the consumable, this reads on wherein the overall dimension is provided by a step change in the width of the consumable.
Regarding claim 22, Rogan does not appear to disclose wherein the removal facilitator comprises an open cavity.
Fernando, directed to cartridge comprising an aerosol-forming substrate, teaches:
A cartridge that comprises a flange at the top. The cartridge may be readily removed from the receptacle after use by grasping the flange. The flange may help to prevent over-insertion of the cartridge into the receptable (page 12, second paragraph). As such, the flange is considered to be a removal facilitator is a user may grasp the flange to remove the cartridge.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the cartridge of Rogan by incorporating a flange at the top as taught by Fernando, and thus the removal facilitator further comprises the flange of the cartridge, because both Rogan and Fernando are directed to cartridges for aerosol generation devices, Fernando teaches the flange helps to prevent over-insertion of the cartridge, and this merely involves incorporating a known cartridge element (i.e. flange) to a similar cartridge to yield predictable results.
As Rogan further teaches that the cartridge includes holes 16,18 in a top surface 20 that are used as an inlet or outlet for outside air (figure 2, page 5, third paragraph), the top surface of the cartridge comprises an open cavity. Therefore modified Rogan having the top surface have a flange, and therefore part of the removal facilitator, teaches wherein the removal facilitator comprises an open cavity.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rogan (WO2019/057976) and Riddell (US 1,809,218) as applied to claim 1 above, and further in view of Hupkes (US2023/0165309).
Regarding claim 23, Rogan further teaches wherein the removal facilitator (i.e. tab) can be gripped by a user to remove the consumable cartridge (page 1, sixth paragraph). Rogan does not appear to disclose wherein the removal facilitator comprises an adhesive region.
Hupkes, directed to a heating arrangement for an aerosol generating device, teaches:
An alternative means for gripping…for example an adhesive, or other types of gripping member ([0058]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the removal facilitator of Rogan by incorporating an adhesive as taught by Hupkes, because both Rogan and Hupkes are directed to aerosol generating devices with gripping members, Hupkes teaches an adhesive is another type of gripping member, and this merely involves the selection of a known material based on its suitability for its intended use.
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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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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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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
