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 preliminary amendment filed on September 11, 2023 is acknowledged. The application will be examined accordingly.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 is missing a period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
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.
Claims 4, 7, 9, 11, 15-17 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 is dependent on claim 1. There is no antecedent basis for “the mouthpiece”.
Claim 7 is indefinite because it renders the scope of the limitation “integral” indefinite. Claim 7 is dependent on claim 5. If the mouthpiece is “separable” from the body as recited in claim 7, it is unclear how it can also be “integral” to the body as recited in claim 5. Further clarification regarding the intended scope of the limitation “integral” is requested. Given that the claimed invention is directed to a device (as opposed to a kit), it is presumed that all of the elements of the device are physically connected, meaning that the limitation “integral” is presumed to convey two elements that are inseparable.
Claim 9 recites a third valve without introducing a first valve or a second valve. It is unclear whether the claim is implicitly reciting the first valve and the second valve, and if so, the nature of the first and second valves is unclear as the claim provides no context for said valves. For examination purposes, only elements that are positively recited will be examined on the merits.
With respect to claim 20, the scope of the claimed heater is rendered indefinite by the recitation that the temperature sensor is the heater. It is unclear whether it is the Applicant’s position that any heater constitutes a temperature sensor, or whether Applicant intends to recite a specific type of heater (i.e. one that can measure temperature).
On a related note, claim 20 is indefinite because the claim uses different nomenclature (temperature sensor and heater) to refer to a common element. If Applicant intends to recite that the heater can perform temperature sensing or that the heater further comprises a temperature sensor, the claim should be amended to reflect this intent. As currently recited, the temperature sensor and the heater refer to a common structural element.
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-7 and 18 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 (e.g. liquid nicotine), the device comprising (see Fig. 2):
an oven comprising an oven chamber (narrow opening within liquid substrate 208) and a heater 206 for heating the vapor forming medium 208 in the oven chamber to generate a vapor;
a condenser* comprising a condensation chamber (space inside mouthpiece 202) in which at least a fraction of the vapor condenses to form the inhalable aerosol;
an air inlet 214 that originates a first airflow path (path along the length of the device) that includes the oven chamber; and
an aeration vent 204 that originates a second airflow path (see arrows) that allows air from the aeration vent 204 to join the first airflow path within the condensation chamber and downstream from the oven chamber thereby forming a joined path (see arrow pointing to outlet 216), wherein the joined path is configured to deliver the inhalable aerosol formed in the condensation chamber to a user.
*The limitation “condenser” is being interpreted as a functional limitation rather than a limitation that conveys a specific structure/feature. That said, any chamber that can be used to condense vapor is sufficient to anticipate the limitation.
With respect to claim 2, the oven is within a body of the device (see Fig. 2).
With respect to claim 3, the device further comprises a mouthpiece 202, wherein the mouthpiece 202 comprises the condenser (see Fig. 2).
With respect to claim 4, the mouthpiece 202 is separable from the oven (see [0028] disclosing “the adaptor can comprise a mouthpiece…the adapter is removably coupled to the…device”; see also Figs. 1A and 1B, which appear to show removable mouthpiece 102).
With respect to claim 5, the mouthpiece 202 is integral to the body of the device, wherein the body comprises the oven (see Fig. 2; see also [0007] disclosing “adapter is not removable”, and [0028] disclosing “adaptor can comprise a mouthpiece”, meaning the mouthpiece can be integral to the body that houses the oven).
With respect to claim 6, as discussed above (see rejection of claim 5), the mouthpiece can be integral to the body of the device, meaning the body (which comprises the mouthpiece) houses the oven, the condenser, the air inlet 214, and the aeration vent 204 (see also Fig. 2).
With respect to claim 7, the mouthpiece 202 is separable from the body (see [0015]).
With respect to claim 18, the body houses a power source 210 (see [0034] and Fig. 2).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 8, 10 and 12-14 are 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 oven chamber comprises an oven chamber inlet (right side) and an oven chamber outlet (left side) (see Fig. 2). Moreover, the device further comprises a gas-control valve (i.e. a first valve) situated at the oven chamber inlet (see [0034] disclosing that the oven 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 valve.
Egoyants discloses an e-cigarette (see title) comprising an oven. The oven 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 oven chamber of the Wensley device using valves, specifically a first valve for sealing an inlet of the oven chamber and a second valve for sealing an outlet of the oven chamber. The modification would preserve the vapor forming medium 208 when the device is not in use.
With respect to claim 10, according to Egoyants, the valves are one-way valves (see line 15, pg. 2 and line 1, pg. 3). Naturally, the modified Wensley device would utilize one way valves as the first and second valves (see also [0044] of Wensley disclosing flap valves, which are one way valves).
With respect to claims 12 and 13, Egoyants discloses that the valves can be actuated by force generated by user inhalation (see lines 5-10, pg. 2). Alternatively, the valves can be actuated by detection of user inhalation (see lines 28-31, pg. 1) via a puff sensor (see lines 31-32, pg. 2). Based on the disclosure, 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 valves of the modified Wensley device to open electronically (based on signal of puff sensor) or mechanically (force of inhalation).
With respect to claim 14, Wensley discloses that the device may be activated manually (e.g. upon pressing a button) (see [0109]). In addition, Egoyants discloses that the valves may open and close based on a timer (see lines 32-33, p. 22). Based on the disclosure, 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 valves of the modified Wensley device to open upon manual activation of the device, and close after a period of time after the manual activation of the device.
Claims 9, 11 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wensley in view of Takeuchi (US 6,155,268).
With respect to claim 9, Wensley does not disclose that the aeration vent 204 comprises a valve.
Takeuchi discloses a device for forming aerosol, the device comprising a vapor-forming zone and an aeration vent 28 situated downstream of the vapor-forming zone for convert vapor into aerosol via condensation (see Fig. 1). The aeration vent 28 is in the form of an adjustable shutter, the size of which can be adjusted to enable a desired amount of air to enter the device (see lines 10-20, col. 5 and lines 10-15, col. 8). In light of the disclosure, 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 aeration vent 204 of the Wensley device with an adjustable valve for introducing a controllable amount of cooling air for converting vapor into aerosol.
With respect to claim 11, given that Wensley already discloses the usage of a one-way valve in the form of a flap valve (see [0044]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a flap valve in the aeration vent 204 of the modified Wensley device, wherein the flap valve opens more or less depending on the strength of the inhalation.
With respect to claims 15-17, it appears that the aeration vent 28 disclosed by Takeuchi is manually actuated. However, 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 valve of the aeration vent 204 to employ any conventional actuation means, including mechanical actuation and electronic actuation. See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958), a case in which the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result (e.g. opening valves) is not sufficient to distinguish over the prior art. In this instance, the electronic actuation may be tied to a flow sensor to optimize the amount of cool air that is introduced into the device, and the mechanical actuation may be accomplished using a flap valve that opens and closes based on strength of inhalation, as discussed above (see rejection of claim 11).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wensley in view of Emarlou (US 2009/0095287 A1).
With respect to claim 19, Wensley does not disclose a temperature sensor, let alone a temperature regulator.
Emarlou discloses an e-cigarette (see abstract and [0023]) comprising a heating element and a mechanism for regulating the operating temperature of the heating element (see [0012]), wherein the regulating mechanism comprises a temperature sensor (see [0012]). According to Emarlou, vaporizable substances used in e-cigarettes have different optimal heating temperatures (see [0012]). In light of the disclosure of Emarlou, 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 that is in communication with a temperature sensor.
With respect to claim 20, the claim is indefinite, as discussed above. That said, given that the temperature regulator would be configured to regulate the heater, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have integrated the temperature sensor with the heater in order to obtain an accurate temperature measurements of the heater.
Conclusion
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.
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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
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