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 1-19 are pending.
Claims 1, 3, 17, 18 have been amended.
Claim 19 has been withdrawn.
Claim 20 has been cancelled.
Response to Arguments
Applicant' s arguments, filed 1/20/2026, with respect to claim 3, have been fully considered and are persuasive. The prior art of record (Kane as evidenced by Tucker) does not appear to disclose the new limitations. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tucker.
Applicant's remaining arguments filed 1/20/2026 have been fully considered but they are not persuasive.
Regarding the arguments about the amendment to claim 1, the Examiner respectfully disagrees. Kane teaches the limitations of amended claim 1 (see rejection of claim 1, below).
Regarding the arguments with respect to the 112(b) rejection, the Examiner understands that the specification supports the light source being disposed on the housing in one embodiment, and the light source being partially within the housing in another embodiment. It remains unclear how the light source can be on the housing and also partially within the housing.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear what is meant by the light source is “partially disposed” within the passageway of the housing, particularly given that claim 1 states that the light source is disposed on the housing. So it is unclear how the light source can be on the housing and also partially within the housing.
For purposes of examination, it is interpreted that the light source is disposed within the passageway.
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.
Claim(s) 1, 2, 4-8 and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kane (US 20170172204).
Regarding claims 1 and 8, Kane teaches a vaporization device for a consumable product (60, Fig. 3), the vaporization device comprising: a housing (72) having a first end (28) and a second end (74); a power source (12) disposed within the housing (72); a tip (70) disposed on the housing (72), the tip having a heating element (19) connected to the power source and configured to heat said consumable product to create a vapor ([0040]), the heating element moveable between an on state and off state ([0040]); a switch (“puff sensor”, 16) attached to the housing (via the light 27, Fig. 3), the switch moving the heating element between the on state and the off state upon selective activation of the switch ([0040]); and a light source (27), specifically an LED, disposed on the housing (Fig. 3) and moveable between an on state and an off state ([0048]), wherein the light source (27) emits direct light away from the first end of the housing (74) when the light source is in the on state (Fig. 3).
Regarding claims 2 and 4, Kane teaches the housing has a lengthwise axis; and the light source (27) is disposed between the first end (28) and the second end (74) of the housing (72) (Fig. 3). Kane teaches that the light source (27) emits direct light towards the lengthwise axis of the housing (Fig. 3) when the light source is in the on state.
Regarding claim 5, Kane teaches that the housing (72) defines a passageway (the passageway formed by the housing 72 in Fig. 3); and wherein the light source (27) emits light through the passageway of the housing (Fig. 3).
Regarding claim 6, wherein the light source (27) is disposed within the passageway (the passageway formed by the housing 72 in Fig. 3).
Regarding claim 7, wherein the light source (27) is disposed within the housing (72); and wherein the light source is connected to the power source ([0045] and [0048]).
Regarding claims 15 and 16, Kane teaches that the tip (70) defines a passageway (inside tip 70 as shown in Fig. 3); and further comprising an elongate tubular member (capillary tube, 18) formed of glass ([0042]) disposed within the housing and in fluid communication with the passageway defined by the tip ([0044]).
Regarding claim 17, Kane teaches a printed circuit board assembly ([0048]) disposed within the housing and electrically connected to the power source, the heating element, and the light source ([0040] and [0048]).
Regarding claim 18, wherein the switch (“puff sensor”, 16) is connected to the printed circuit board assembly (11) to move the heating element between the on state and the off state ([0040]).
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20190200674 (Tucker).
Regarding claim 3, Tucker teaches a vaporization device for a consumable product (10, Fig. 1B), the device comprising: a housing (20) having a first end (right end of housing in Fig. 1B) and a second end (left end of housing in Fig. 1B);
a power source (12) within the housing;
a tip (15) disposed on the housing, the tip having a heating element (43) connected to the power source ([0085]) and configured to heat said consumable product to create a vapor ([0068]), the heating element moveable between an on state and off state ([0096]);
a switch attached to the housing, the switch moving the heating element between the on state and the off state upon selective activation of the switch ([0096]); and
a light source (14) disposed on the housing (Fig. 1B) and moveable between an on state and an off state ([0100]), the light source emitting direct light away from the first end of the housing when the light source is in the on state (Fig. 1B); wherein the housing has a lengthwise axis and wherein the light source emits direct light towards the lengthwise axis of the housing when the light source is in the on state and wherein direct light from the light source strikes the tip when the light source is in the on state (Fig. 1B, light from light source emitting straight out of LED towards tip).
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kane.
Regarding claim 14, Kane does not expressly teach a second switch attached to the housing, wherein the second switch moves the light source between the on state and the off state upon selective activation of the second switch.
However, Kane does teach that “The light 27 may also be configured such that the adult vaper can activate and/or deactivate the light 27 when desired,” ([0048]). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have included a second switch in Kane to allow the user to activate and/or deactivate the light when desired, with a reasonable expectation of success and predictable results, as a switch is traditionally what is used in vaporization devices to allow a user to activate and/or deactivate a light when desired.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kane as applied to claim 1 above, and further in view of Chung (US 20150272211).
Regarding claims 9-11, Kane does not expressly teach that the device further comprises a cap disposed on the second end (74) of the housing.
Chung teaches a cover, or cap, for an electronic cigarette (abstract). Chung teaches that the cap has a first portion (123, bottom cover part) releasably attached to the bottom portion of the e-cigarette ([0026] by snap connection) and a second portion (122, top cover part) releasably attached to the first portion via the spring wherein the first portion is formed of a first material and the second portion is formed of a second material that is different than the first material [0038].
It would have been obvious for one of ordinary skill in the art at the time of filing to have included the cap of Chung on the device of Kane because it allows for the cleanliness of the entire e-cigarette including the mouthpiece [0005]-[0006].
The cap is disposed on the second end of the housing of modified Kane because the cap is disposed on the entire housing of modified Kane.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kane in view of Chung as applied to claim 11 above, and further in view of Ehrman (US 5240012).
Regarding claims 12, modified Kane does not expressly teach that the first portion is formed of an aluminum alloy and that the second portion is formed of a ceramic.
Ehrman teaches a smoking article with a two piece endcap (502), wherein the cap has a first portion (510) releasably attached to the housing and a second portion (512) releasably attached to the first portion (col. 16, lines 17-20 and col. 18, lines 42-47). Ehrman teaches that the first and second portions can be constructed of ceramic material, stainless steel material or aluminum material (col. 18, lines 48-54). It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the material of the first portion and the material of the second portion, respectively, of the two piece endcap since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed material of the first portion and the material of the second portion, respectively, are critical and have unexpected results. In the present invention, one would have been motivated to optimize the material of the first portion and the material of the second portion of the two piece endcap motivated by the desire to provide the desired properties to the endcap (Ehrman, col. 18, lines 48-54).
It would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the endcap in Kane with the endcap as taught by Ehrman because it has been held that the substitution of one known element (i.e. endcap of Kane) for another (i.e. endcap of Ehrman) yielding predictable results, specifically a removable two piece endcap (Ehrman, col. 16, lines 17-20 and col. 18, lines 42-47), to one of ordinary skill in the art would have been obvious to one of ordinary skill in the art (See MPEP § 2143 B).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kane as applied to claim 1 above, and further in view of Botton (US 11259566).
Regarding claim 13, Kane teaches that the housing is made of metal ([0051]), but Kane does not expressly teach that the housing is formed of aluminum alloy and the tip is formed of titanium.
Botton teaches an electronic cigarette (abstract) wherein the first housing and the second housing are formed of metals or alloys such as aluminum or titanium (col. 5, lines 63-67). It would have been obvious to one of ordinary skill in the art at the time the invention was made to have made the housing out of aluminum alloy and the tip out of titanium because it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed materials are critical and have unexpected results. In the present invention, one would have been motivated to optimize the materials of the housing and the tip motivated by the desire to ensure the materials are suitable for the housing and tip of the vaporization device.
It would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the materials for the housing and the tip, respectively, of Kane for the materials of the first housing and the second housing, respectively, as taught by Botton because it has been held that the substitution of one known element (materials for the housing and the tip, respectively, of Kane) for another (materials of the first housing and the second housing, respectively, as taught by Botton) yielding predictable results, specifically ensuring suitable materials are used for the housing and tip of the vaporization device, to one of ordinary skill in the art would have been obvious to one of ordinary skill in the art (See MPEP § 2143 B).
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755