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 Claims
Claims 1-19 are pending. Claims 15-19 are withdrawn.
Response to Amendment
The Response of 12/15/2025 is entered. No claims are amended by this Response.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive. Applicant argues that the rejections of record are not anticipated or obvious, Response pg 5 last 2 lines. Applicant argues that a close review of the base reference, Lavanchy, reveals that there is no teaching or direct disclosure in this reference that the protruding portion of the article contacts the wall of the mouthpiece passage, as required by independent claim 1, Response pg 6 1st full paragraph. Applicant argues that the disclosure of Lavanchy is insufficient to reasonably disclose this feature. Examiner disagrees.
Lavanchy discloses that the configuration of the device, mouthpiece, and article is such that airflow is prevented between the aerosol generating device and the mouthpiece, apart from the desired airflow through the aerosol generating article (emphasis added), ([pg 28 lines 23-28]). By virtue of this disclosure, it is understood that there is no channel around the aerosol generating article through which air may pass, the aerosol generating article is fitted to and in contact with the wall of the passage when the mouthpiece is engaged with the device body. Applicant asserts there is no motivation for providing such a configuration, because Lavanchy also describes in detail the airtight seal between the mouthpiece and the device. Examiner asserts that the disclosure of Lavanchy requires and reasonably discloses a configuration where the aerosol generating article is in contact with the wall of the mouthpiece passage, to ensure the desired airflow is through the aerosol generating body, rather than by passing the aerosol generating article. Applicant argues that the disclosed seal between the device and the mouthpiece eliminate the need for contact between the aerosol generating article and the wall of the mouthpiece passage. But the result of such a configuration is that air could (and certainly would) bypass the aerosol generating article, which is contrary to the explicit disclosure of Lavanchy. This is not a modification of Lavanchy, but part of the basic disclosure. Applicant argument is not persuasive.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Such limitations are:
Claim 1: “an attachment means configured to removably attach the mouthpiece to the device body and bring the mouthpiece into engagement with the device body”.
Claim 2-3 recite attachment means and do not add further structure sufficient to overcome the presumption of interpretation under 35 USC 112(f).
Claim 7: “a secondary attachment means formed in the device body, the secondary attachment means configured to removably receive the mouthpiece”.
The attachment means may be interpreted as a magnet, plurality of magnets, ([Specification, pg 8 lines 25-30]), or co-operating screw and thread connections, ([Specification, pg 9 lines 20-33]), or magnets and ferrous material, ([pg 11 lines 24-29]). The secondary attachment means may be interpreted as magnetic, and magnetic/ferrous material attachment means, consistent with the citations to the Specification above.
Claim 3-5, and 8 adds sufficient structure to the attachment means limitation, and will be interpreted based on the BRI of the claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 6, and 9-14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Lavanchy et al. (WO 2020/126908 A1).
Regarding claim 1, Lavanchy discloses an aerosol provision device, ([pg 1 lines 3-5]), comprising: a device body, ([pg 20 lines 27-30] Fig 1); a chamber formed in the device body and configured to partially receive an article, ([pg 21 lines 16-20] Fig 1), comprising an aerosol-generating material such that a portion of the article protrudes from the device body, (Fig 1 ref 26, 28); a mouthpiece comprising a passage circumscribed by a wall, the passage configured to receive the protruding portion of the article, ([pg 20 lines 27-30] Fig 1 ref 12); and an attachment means, ([pg 2 lines 25-29] disclosing magnets may be used or a threaded connection), configured to removably attach the mouthpiece to the device body and bring the mouthpiece into engagement with the device body, the device configured such that the protruding portion of the article contacts the wall of the passage when the mouthpiece is engaged with the device body, ([pg 21 lines 23-34] Fig 1).
Regarding claim 2, Lavanchy discloses the aerosol provision device of claim 1. Lavenchy further discloses the attachment means is configured to generate a force bringing the mouthpiece and the device body into bearing against one another such that the article is press-fit into the passage, ([pg 21 lines 16-28] describing an air tight connection where the fit is tight enough to seal the mouthpiece to the body, and force air to be drawn through the aerosol generating article (rather than around it) reasonably suggesting a press fit in the passage).
Regarding claim 6, Lavanchy discloses the aerosol provision device of claim 1. Lavenchy further discloses wherein the passage of the mouthpiece comprises a first portion having a first cross-sectional area and a second portion having a second cross-sectional area, the first cross-sectional area being greater than the second cross- sectional area, the device configured such that the article contacts the wall of the passage in the first portion of the passage, ([pg 21 lines 16-28] describing an air tight connection where the fit is tight enough to seal the mouthpiece to the body, and force air to be drawn through the aerosol generating article (rather than around it) reasonably suggesting the article is press fit in the passage and against the wall of the passage; Fig 1 ref 30 and narrower passage out of the device, depicting the relative cross-sectional areas).
Regarding claim 9-12, Lavanchy discloses the aerosol provision device of claim 1. Lavenchy further discloses the device comprising one or more aerosol generators disposed within the body and in communication with the chamber to generate aerosol from the article, ([pg 3 lines 26-35], [pg 4 lines 3-25] describing a heating element for aerosol generation, where the heating element may be resistive or an induction heating arrangement with a susceptor, further disclosing details regarding the induction heating from pg 4 lines 26-pg 5 lines 31).
Regarding claim 13, Lavanchy discloses the aerosol provision device of claim 1. Lavenchy further discloses the device comprising a power source disposed within the body and in electrical communication with the heater to power the heater, ([pg 3 lines 26-27]).
Regarding claim 14, Lavanchy discloses the aerosol provision device of claim 1. Lavenchy further discloses the device comprising an electrical connection in the device body and in electrical communication with the power source, ([pg 3 lines 12-25] by disclosing electric circuitry and further electric components, such as the batter (described in claim 13 above), the device inherently discloses electrical connections in the body Fig 1).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lavanchy et al. (WO 2020/126908 A1).
Regarding claim 3-4, Lavanchy discloses the aerosol provision device of claim 1, wherein the attachment means comprises magnets, ([pg 2 lines 25-29], [pg 17 lines 36]). The disclosure does not provide details regarding how to configure the magnetic attachment means, but This is thought to reasonably disclose several magnetic attachment configurations, when understood with what is considered the ordinary skill in the art. Because magnets are well understood to attract to each other as well as ferrous material, the disclosure of using a magnetic attachment means anticipates using magnets on both the mouthpiece and body, or a magnet and opposing ferrous material on the mouthpiece and body connection points, to form an attachment means.
However, if the attachment means configured to use magnets on both the mouthpiece and body, or ferrous materials and magnets on opposing surfaces of the mouthpiece and body, then this is considered obvious because one of ordinary skill in the art knows that magnets may be configured to attract to each other as well as ferrous materials, and it would be obvious to use either pairing to form the attachment means, because the configurations are well understood equivalents.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lavanchy et al. (WO 2020/126908 A1).
Regarding claim 5, Lavanchy discloses the aerosol provision device of claim 3, wherein the attachment means comprises magnets, ([pg 2 lines 25-29], [pg 17 lines 36]), and where the attachment means seals the mouthpiece to the body ([pg 21 lines 16-28] describing an airtight connection where the fit is tight enough to seal the mouthpiece to the body. Lavanchy does not disclose that the magnets are recessed into the respective device body and the mouthpiece.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the magnets in the attachment means to be recessed into the respective device body and mouthpiece. By disclosing that the attachment means seal the mouthpiece and body together in an airtight configuration, it is reasonably suggested that the connection between the two sections must be flush, such that a seal may be formed. It would be obvious to one of ordinary skill in the art, to recess the magnets, to form the seal between the two sections as an obvious and straightforward way to implement the magnetic attachment means.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lavanchy et al. (WO 2020/126908 A1) as applied to claim 1 above, and further in view of Monsees et al. (US 2013/0042865).
Regarding claim 7-8, Lavanchy discloses the aerosol provision device of claim 1. Lavanchy discloses that the mouthpiece is removably attachable from the device, (Fig 1), and may comprise an magnetic attachment means, ([pg 2 lines 25-29], [pg 17 lines 36]). Lavanchy does not disclose the materials of construction for the device body, or the presence of a secondary attachment means.
Monsees teaches a similar aerosol generating device, ([0004]), and is within the inventor’s field of endeavor. Monsees teaches the mouthpiece may be fully detached from the device for cleaning or replacement, but still links to the device, I[0008]), and that the mouthpiece attaches to the body of the device with rare magnets, ([0008]). Monsees does not explicitly teach a removably attachable mouthpiece, that attaches to an in use location on the body with magnets, and an out of use location on the body with magnets.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Lavanchy according to the teachings of Monsees and the knowledge of one of ordinary skill in the art. Lavanchy discloses an attachment means for the mouthpiece that uses magnets. Monsees teaches using magnets to attach the mouthpiece to the body, and that the mouthpiece should still be linked to the device when the device is open for cleaning or replacement (presumably the cartridge). One of ordinary skill in the art would recognize that providing a magnet or ferrous material on a separate location of the device body, would allow a user to conveniently story the mouthpiece while reloading the device with an aerosol generating article or for cleaning, such that the mouthpiece would not inadvertently be lost or damaged underfoot.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/D.E.V./Examiner, Art Unit 1747
/Michael J Felton/Primary Examiner, Art Unit 1747
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