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 .
Response to Amendment
The amendment filed on July 31, 2026 is acknowledged. Claims 1, 3, 6, 8, 18, 19 and 165-178 are pending. Applicant amended claims 1, 3, 6, 8, 18 and 19, and added new claims 165-178.
Response to Arguments
Despite the amendment, the claims remain rejected based on the disclosure of Wensley. That said, Applicant's arguments respect to the patentability of the claims have been fully considered but they are not persuasive.
Applicant argues that the amended claims are patentable over the disclosure of Wensley because Wensley does not disclose a vapor forming medium comprising tobacco and a humectant. Remarks 7. The argument is not persuasive because the vapor forming medium is not a part of the claimed invention. The vapor forming medium is recited in the claims merely to specify what the first chamber is configured to hold. Consequently, the limitations directed to the vapor forming medium is anticipated if the first chamber taught by Wensley is merely capable of holding a vapor forming medium comprising tobacco and a humectant, regardless of whether the first chamber actually holds the claimed vapor forming medium. In this case, the first chamber taught by Wensley (see mapping provided in the rejection below) can, and is therefore “configured to”, hold a vapor forming medium comprising tobacco and a humectant. Nevertheless, Wensley discloses that the medium can comprise a humectant in the form of glycerin/glycol, and further comprise tobacco essence (see [0082]), so the first chamber does in fact hold a vapor forming medium comprising tobacco and a humectant.
Regarding Applicant’s argument that the first chamber taught by Wensley is configured to hold a liquid vapor forming medium, not a solid vapor forming medium (Remarks 7-8), Applicant’s argument is not commensurate with the scope of the claims. The claims are silent regarding the phase of the vapor forming medium, and there is no evidence suggesting that the claimed medium is exclusively solid. In fact, according to Applicant’s own specification, the humectant can be in the form of glycerol, which is a liquid. Nevertheless, Wensley discloses that the vapor forming medium can be in solid form (see [0098] and [0114]), meaning that the first chamber taught by Wensley is configured to hold a solid vapor forming medium even based on the unsubstantiated premise of Applicant’s argument that the claimed medium is solid. Consequently, Applicant’s argument that the first chamber taught by Wensley is not configured to hold the claimed vapor forming medium is not persuasive.
Applicant also argues that Wensley does not disclose a “first airflow path extending through the vapor forming medium in the first chamber” as required by the claims. Remarks 8. According to Applicant, air flows adjacent the vapor forming medium in the Wensley device. Id. The argument is not persuasive. The Wensley device comprises a singular substrate 208 comprising the vapor forming medium. Moreover, the substrate 208 can be in the form of a solid substrate that is soaked with the medium (see [0031]). Based on the disclosure, it is evident that substrate 208 illustrated in Figure 2 of Wensley comprises an aperture/a pore through which the first airflow path traverses, meaning the first airflow path does extend through the vapor forming medium 208 in the first chamber as required by the claims.
For the foregoing reasons, Applicant’s arguments directed to the patentability of the claims are not persuasive.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 178 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).
The scope of claims 1 and 178 is identical. The claims merely utilize different nomenclature for certain elements of the claimed inventions (e.g. “first chamber” in claim 1; “oven chamber” in claim 178).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 6, 165 and 167-178 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wensley et al. (“Wensley”) (US 2015/0196060 A1). The relevant disclosure of Wensley discussed below is supported by provisional application 61/880,225, which predates the effective filing date of Applicant’s application.
With respect to claim 1, Wensley discloses a device for generating an inhalable aerosol from a vapor forming medium 208 (containing tobacco essence, glycerin see [0082]), the device comprising (see Fig. 2):
a first chamber (space inside a portion of the body of the device that holds substrate 208) configured to hold a vapor forming medium 208,
a heater 206 configured to heat the vapor forming medium 208 in the first chamber to generate a vapor;
a second chamber (space inside mouthpiece 202) in which at least a fraction of the vapor condenses to form the inhalable aerosol, the second chamber downstream of the first chamber;
an air inlet 214 through which a first airflow path (path along the length of the device) extends into the first chamber, the first airflow path extending through the vapor forming medium 208 in the first chamber, and the first airflow path configured to carry the generated vapor into the second chamber;
at least one aeration vent 204 through which a second airflow path (see arrows) extends into the second chamber, the second airflow path configured to carry ambient air into the second chamber to mix with the vapor therein; and
an aerosol outlet 216 configured to deliver the inhalable aerosol formed in the second chamber to a user.
With respect to claim 3, the device further comprises a mouthpiece 202, wherein the mouthpiece 202 comprises the at least one aeration vent 204, the second chamber, and the aerosol outlet 216 (see Fig. 2).
With respect to claim 6, the device comprises a single body that comprises the first chamber with the vapor forming medium 208 contained therein, the second chamber, the air inlet 214, the at least one aeration vent 204, and an integral mouthpiece 202 comprising the aerosol outlet 216 (see [0007] and [0028] disclosing that the device is a single piece comprising an integral mouthpiece 202; see also Fig. 2 as opposed to Fig. 1).
With respect to claim 165, the heater 206 is configured to heat the vapor forming medium 208 through convective and/or radiative heat generated by the heater 206 (see [0012]).
With respect to claim 167, by introducing ambient air, the at least one aeration vent 204 is configured to increase the condensation rate and vapor density of the inhalable aerosol in the second chamber.
With respect to claim 168, the first chamber further comprises a first airflow inlet at an upstream end (right side in Fig. 2) of the first chamber, and wherein the first chamber further comprises a first airflow outlet at a downstream end (left side in Fig. 2) of the first chamber (see Fig. 2).
With respect to claims 169 and 170, the vapor forming medium 208 further comprises a wicking element, and the heater 206 wraps around the wicking element (see [0007]). Moreover, if the first chamber is narrowly interpreted as space delimited by the heater 206 (see Fig. 2), then the heater 206 wraps around/surrounds the first chamber.
With respect to claim 171, according to Boyle’s law, it is evident that when the heater heats the vapor forming medium 208 while a user is not puffing on the device, local pressure within the volume corresponding to the first chamber increases.
With respect to claim 172, as discussed above, the vapor forming medium is not a part of the claimed invention. Consequently, the identity of the humectant does not further limit the claimed invention. Nevertheless, Wensley teaches a humectant in the form of glycerol (see [0082]).
With respect to claim 173, the device has a longitudinal dimension extending from a first end (right end) of the device to a second end (left end) of the device opposite the first end (see Fig. 2), wherein the first chamber has a first cross sectional area perpendicular to the longitudinal dimension of the device, wherein the second chamber has a second cross sectional area perpendicular to the longitudinal dimension of the device, and wherein the second cross sectional area is smaller than the first cross sectional area (see [0129]).
With respect to claim 174, the first chamber is an oven chamber defined in part by an upstream oven chamber inlet (right side) and a downstream oven chamber outlet (left side) (see Fig. 2), wherein the oven chamber is further defined by an interior surface along a perimeter of the first cross sectional area (i.e. interior surface of the body of the device where substrate 208 is situated), the interior surface extending between the oven chamber inlet and the oven chamber outlet (see Fig. 2).
With respect to claim 175, the second chamber comprises a condensation chamber defined in part by an upstream condensation chamber inlet (right end of mouthpiece 202) and a downstream condensation chamber outlet 216 (see Fig. 2), wherein the condensation chamber is further defined by an interior surface along a perimeter of the second cross sectional area (interior surface of mouthpiece 202), the interior surface extending between the condensation chamber inlet and the condensation chamber outlet (see Fig. 2).
With respect to claim 176, as discussed above, the vapor forming medium is not a part of the claimed invention, and thus whether it is configured as a replaceable component that is user-insertable into the first chamber does not further limit the claimed invention. Nevertheless, the medium is refillable by the user of the device (see [0087]).
With respect to claim 177, the second chamber is configured for mixing the vapor with the ambient air from the at least one aeration vent 204 to produce the inhalable aerosol comprising particle diameters of average size of less than 1 micron (see [0036] and [0118]).
With respect to claim 178, as discussed above, the scope of claims 1 and 178 is identical. That said, Wensley discloses a device for generating an inhalable aerosol comprising (see Fig. 2):
an oven chamber (chamber where substrate 208 is situated);
a heater 206 configured to heat a vapor forming medium 208 in the oven chamber to generate a vapor, the vapor forming medium comprising tobacco and a humectant (see [0082]);
a condensation chamber (chamber inside mouthpiece 202) configured for condensing at least a fraction of the vapor to form the inhalable aerosol, the condensation chamber downstream of the oven chamber;
an aerosol outlet 216 configured to deliver the inhalable aerosol to a user;
an air inlet 214 that originates a first airflow path that includes the oven chamber, the first airflow path extending through the vapor forming medium 208 in the oven chamber; and
at least one aeration vent 204 that originates a second airflow path that allows ambient air from the at least one aeration vent 204 to join the first airflow path within the condensation chamber, thereby forming a joined path, wherein the joined path is configured to deliver the inhalable aerosol formed in the condensation chamber through the aerosol outlet 216.
Claim Rejections - 35 USC § 103
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wensley in view of Egoyants et al. (“Egoyants”) (WO 2013/034456 A1).
With respect to claim 8, the first chamber comprises a gas-control valve (i.e. a first airflow valve) situated at its inlet (see [0034] disclosing that the first chamber is “aerosol generation region”; see [0007] disclosing that a valve can be situated upstream of and adjacent to the “aerosol generation region”).
The device taught by Wensley differs from the claimed invention in that Wensley does not disclose the claimed second airflow valve.
Egoyants discloses an e-cigarette (see title) comprising a first chamber. The first chamber comprises an inlet (see lines 1-4, pg. 2) and an outlet (see lines 21-25, pg. 2), and the inlet and the outlet are hermetically sealed using valves when the e-cigarette is not in use (see pg. 2). In light of the disclosure Egoyants, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have hermetically sealed the first chamber of the Wensley device using valves, specifically a first airflow valve for sealing an inlet of the first chamber and a second airflow valve for sealing an outlet of the first chamber. The modification would preserve the vapor forming medium 208 when the device is not in use.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wensley in view of Alarcon et al. (“Alarcon”) (US 2011/0265806 A1).
With respect to claim 18, the device further comprises a power source 210 (see [0034] and Fig. 2). However, Wensley does not disclose a temperature regulator or a printed circuit board.
Alarcon discloses an e-cigarette (see title) comprising a heating element 146 and a mechanism for regulating the operating temperature of the heating element (see [0060]). To ensure a consistent operating temperature of the heater (see [0060] of Alarcon), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the Wensley device with a temperature regulator. Moreover, because the regulator is a circuit 132 (see [0060] of Alarcon), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a printed circuit board (PCB) to implement the circuitry, as taught by Alarcon (see [0057]).
With respect to claim 19, the heater would be configured to operate as a temperature sensor to provide an input temperature (based on its resistance) for temperature regulation by the temperature regulator (see [0060] of Alarcon).
Claim 166 is rejected under 35 U.S.C. 103 as being unpatentable over Wensley in view of Emarlou (US 2009/0095287 A1) and Hon (US 2012/0279512 A1).
With respect to claim 166, Wensley does not disclose the temperature to which the heater 206 is configured to heat the vapor forming medium.
Emarlou discloses an analogous e-cigarette, wherein its heater is configured to heat up to 300 degrees Celsius (see [0014]). In light of the disclosure of Emarlou directed to conventional temperature to which an e-cigarette heater heats, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the heater 206 of the Wensley device to heat to a temperature that falls within the claimed range.
Regarding the cooling, it is evident that the at least one aeration vent 204 and the second chamber taught by Wensley cool the inhalable aerosol (see also [0003] and [0030] of Hon disclosing that insufficient cooling of the aerosol is a known problem in e-cigarettes and many e-cigarettes use ambient air to cool the aerosol). While Wensley does not disclose the temperature to which the aerosol is cooled when it exits the device through the aerosol outlet 216, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the at least one aeration vent 204 and the second chamber with dimensions that cool the aerosol to a temperature that is comfortable for inhalation, for example a temperature that fails within the claimed range.
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 PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
