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 Arguments
Applicant’s arguments filed 06/30/2026 have been fully considered but are not persuasive for the reasons set forth below.
Applicant amended claim 1 to replace “operably” with “operable.” The amendment overcomes the objection to claim 1, and the objection is therefore withdrawn.
With respect to the rejection of claims 1–3, 5, 13, and 17 over Qiu as evidenced by Ahmed et al., Applicant argues that Qiu fails to teach or suggest the claimed structure located on an external surface of the wick, operable to reversibly change between first and second configurations, and comprising a shape memory element configured to move from a first position to a second position. Applicant further argues that positioning Qiu’s temperature control switch 139 between heating member 133 and second liquid guiding member 132 would constrain the temperature control switch and prevent the movement required by the claim.
These arguments are not persuasive.
As set forth in the previous Office Action, Qiu teaches second liquid guiding member 132 corresponding to the claimed wick and teaches that heating member 133 may be sleeved on, twined around, adhered to, or clinged to second liquid guiding member 132. Qiu further teaches temperature control switch 139 positioned adjacent to heating member 133 or an arrangement in which heating member 133 is sleeved on temperature control switch 139. Qiu additionally teaches that temperature control switch 139 may be a memory alloy switch. (¶¶ [0071]–[0072]). Qiu therefore teaches each of the relevant components in the same thermally responsive heating arrangement and expressly contemplates a memory-alloy temperature-control switch positioned in thermal proximity to the heating member and wick.
The previous rejection did not require that Qiu expressly teach the exact claimed relative positioning in a single embodiment. Rather, the rejection concluded that it would have been obvious to position temperature control switch 139 in contact with an external surface of second liquid guiding member 132. Such positioning maintains the temperature control switch in thermal communication with the wick/heater region whose temperature is being controlled and permits the temperature control switch to perform the same overheating-protection function taught by Qiu. Qiu expressly teaches that the temperature of temperature control switch 139 increases as heating member 133 heats and that the switch interrupts the electrical connection when its operating temperature is exceeded. (¶[0073]). Qiu therefore provides a technical reason for locating the temperature-responsive switch in close thermal relation to the wick and heating member rather than the modification being based solely on Applicant’s disclosure.
Applicant’s contention that the proposed arrangement would necessarily “sandwich” temperature control switch 139 between heating member 133 and second liquid guiding member 132 in a manner that prevents movement is not persuasive. Neither Qiu nor claim 1 requires the particular rigid or immobilizing arrangement assumed by Applicant. Qiu permits several relationships between heating member 133 and second liquid guiding member 132, including sleeving, winding, adhering, and clinging, and does not require the temperature-control switch to be compressed between two components so as to prevent operation.
Moreover, claim 1 does not require that the temperature-control structure as a whole translate away from or along the wick. Claim 1 requires that the structure comprises a shape memory element and that the shape memory element is configured to move from a first position in the first configuration to a second position in the second configuration. Thus, Applicant’s argument assumes a limitation not present in the claim—namely, that the entire temperature control switch must physically translate between two locations. A shape-memory element of a temperature-control switch may undergo the recited movement or deformation while the structure itself remains positioned at the external surface of the wick.
Qiu expressly identifies a memory alloy switch as a type of metal-expansion temperature-control switch. Qiu further teaches that below the predetermined operating temperature, temperature control switch 139 permits electrical connection between power supply device 15 and heating member 133; when the predetermined temperature is exceeded, switch 139 interrupts that connection; and, after cooling below the predetermined temperature, switch 139 again establishes the connection. (¶ [0072]–[0073]). Thus, Qiu itself teaches reversible operation of the memory-alloy temperature-control switch in response to temperature.
Ahmed et al. was relied upon as factual evidence regarding the established properties of shape-memory alloys, rather than as prior art supplying the spatial relationship between the wick and temperature-control switch. Specifically, Ahmed provides evidence that shape-memory alloys undergo thermally responsive phase transformation and recover or change shape in response to temperature. Applicant’s assertion that Ahmed does not independently teach a shape-memory structure positioned on the external surface of a wick therefore does not address the manner in which Ahmed was relied upon. The spatial and functional aerosol-device arrangement is supplied by Qiu and the stated obviousness reasoning, while Ahmed evidences the known behavior of the shape-memory material expressly identified by Qiu.
Although Ahmed was published after the effective filing date of the claimed invention, this does not preclude its limited evidentiary use. MPEP § 2124 provides that a later-published reference may be relied upon to establish a universal fact, including the characteristics and properties of a material or a scientific truism. Ahmed is relied upon for such established characteristics of shape-memory alloys, not as prior art introducing otherwise absent device structure.
Applicant’s assertion that the proposed placement would prevent movement also amounts to an unsupported assertion concerning how the modified structure necessarily must be constructed. Applicant has not provided evidence establishing that contact between temperature control switch 139 and the external surface of second liquid guiding member 132 would render Qiu’s temperature-control switch incapable of operating according to its disclosed principle. Attorney argument cannot substitute for factual evidence where evidence is necessary to rebut a prima facie case of obviousness. (See MPEP § 2145(I)).
Accordingly, Applicant has not shown that positioning Qiu’s temperature-responsive memory-alloy switch at an external surface of the wick would render Qiu inoperative or change its principle of operation. To the contrary, the modification preserves Qiu’s expressly taught purpose of sensing elevated temperature and interrupting power to heating member 133 to prevent overheating.
With respect to claims 2, 3, 5, 13, and 17, Applicant relies principally upon the arguments presented for independent claim 1 and does not identify a separate deficiency in the specific teachings relied upon for the additional limitations of those claims. Because Applicant’s arguments concerning claim 1 are not persuasive, they likewise do not overcome the rejection of dependent claims 2, 3, 5, 13, and 17. The rejection of claims 1–3, 5, 13, and 17 is therefore maintained.
With respect to the rejection of claims 20, 29, and 36 over Qiu in further view of Hepworth et al., Applicant argues that Hepworth is unavailable as prior art under 35 U.S.C. § 102(a)(2) because Hepworth and the present application were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date, such that the exception of 35 U.S.C. § 102(b)(2)(C) applies.
Applicant’s common-ownership statement is acknowledged. However, the argument does not remove Hepworth as prior art relied upon in the present rejection.
Hepworth, US 2020/0154770 A1, was published on May 21, 2020, before the effective filing date of the presently claimed invention. Hepworth therefore qualifies as prior art based on its public availability under 35 U.S.C. § 102(a)(1). The common-ownership exception of § 102(b)(2)(C) applies to subject matter that would otherwise qualify as prior art under § 102(a)(2); it does not remove a disclosure that independently qualifies as prior art under § 102(a)(1). See MPEP § 2154.02(c).
Accordingly, Applicant’s argument regarding § 102(b)(2)(C) does not disqualify Hepworth from the present § 103 rejection.
Regarding claim 20, Hepworth continues to teach the air inlet, airflow path or channel, and outlet arrangement relied upon in the previous Office Action. Applicant does not separately contest Hepworth’s teaching of those additional airflow limitations, but instead relies upon the asserted deficiency of Qiu discussed with respect to claim 1. For the reasons discussed above, that argument is not persuasive.
Regarding claim 29, Hepworth continues to teach the modular cartridge and reusable control-unit arrangement, including a cartridge containing the vapor precursor material and vaporizer, a reusable portion containing the power supply and control circuitry, and a releasable mechanical and electrical coupling between the cartridge and control unit. Applicant has not identified a deficiency in Hepworth’s teaching of those additional limitations. The arguments directed to the shape-memory structure are unpersuasive for the reasons given above with respect to claim 1.
Regarding independent claim 36, Applicant similarly argues that Hepworth does not remedy the alleged deficiencies of Qiu concerning the structure located on an external surface of the wick, reversible operation, and movement of the shape-memory element. However, Hepworth was not relied upon to remedy those features. Qiu, together with the reasoning and factual evidence discussed above, supplies those teachings, while Hepworth is relied upon for the additional cartridge/control-unit arrangement. Thus, Applicant’s argument attacks Hepworth for a limitation for which Hepworth was not relied upon.
For the foregoing reasons, Applicant’s arguments do not overcome the prima facie case of obviousness. The rejection of claims 1–3, 5, 13, and 17 over Qiu as evidenced by Ahmed et al., and the rejection of claims 20, 29, and 36 over Qiu in further view of Hepworth et al., are maintained.
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.
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 1-3,5,13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (US 2017/0196273) as evidenced by Ahmed et al (A comprehensive overview of shape memory alloys: Recent advances in fabrications, properties, and applications for next-generation smart systems).
Qiu discloses an electronic cigarette or atomizing device (aerosol provision system) (Abs, [0004], [0070]). In an embodiment illustrated in Figure 1, the electronic cigarette 110 comprises a liquid reservoir 12a for smoke liquid (aerosolizable material) and an atomizing device 13 (vaporizer).
The electronic cigarette 110 includes a first liquid guiding member 131 and a second liquid guiding member 132, wherein the first liquid guiding member 131 transfers smoke liquid from the reservoir 12a to be received by the second liquid guiding member 132 or, alternatively, the first liquid guiding member 131 is omitted and the second liquid guiding member 132 comprises a guiding bulge that contacts the reservoir 12a and receives smoke liquid directly from the reservoir to be atomized (vaporized), the second liquid guiding member 132 corresponding to a wick [0071].
A heating member 133 can be sleeved on, twined around, adhered to or clinged to the second liquid guiding member 132 or, alternatively, the second liquid guiding member 132 can be sleeved on, twined around, adhered to or clinged to heating member 133. Driven by the power supply device 15, smoke liquid from the liquid reservoir 12a and received in the second liquid guiding member 132 is heated and atomized (vaporized) allowing the user to enjoy a smoking experience ([0070]-[0071]).
The electronic cigarette 110 includes a temperature control switch 139 (which comprises a structure) that can be positioned adjacent to the heating member 133 or the heating member 133 can be sleeved on the temperature control switch 139 [0071]. Since the heating member is in intimate contact with second liquid guiding member 132 and also with the temperature control switch 139, absent convincing evidence of unexpected results, it would have been obvious for the temperature control switch 139 to be in contact with an external surface of the second liquid guiding member 132 as one of two possible configurations (on the surface of the wick or not on the surface of the wick).
Qiu discloses that a suitable temperature control switch 139 is a memory alloy switch, which reads on a shape memory element [0072]. The temperature control switch 139 functions as follows:
In operation, when the temperature of heating member 133 rises, the temperature of the temperature control switch 139 also rises. In a first configuration, when the temperature of the temperature control switch 139 is less than a predetermined operating temperature, the temperature control switch 139 allows power from the power supply device 15 to reach the heating member 133, wherein operation of the electronic cigarette is possible. When the temperature of the temperature control switch 139 exceeds the predetermined operating temperature, the temperature control switch 139 changes to a second configuration to cut off the connection between the power supply device 15 and the heating member 133, the heating member 133 stops working and operation of the electronic cigarette is prevented [0073].
When the power is cut off, the temperature of the heating member 133 and the temperature of the temperature control switch 139 drop naturally until the temperature of the temperature control switch 139 is less than the predetermined operating temperature, at which point the temperature control switch 139 again interconnects the power supply device 15 and the heating member 133 to allow the heating member 133 to heat up again [0073]. The temperature control switch 139 thus operates to reversibly change between the first configuration and the second configuration.
The memory alloy switch is a metal expansion type temperature control switch [0172]. Memory alloys are known for their unique ability to recover their initial shape after deformation, triggered by specific thermomechanical stimuli (see Ahmed et al , Introduction, for evidence). Therefore, one of ordinary skill in the art would have expected the memory alloy switch to move from a first shape or position in the first configuration to a second shape or position in the second configuration.
Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to select a memory alloy switch with a reasonable expectation of obtaining a suitable temperature control switch 139.
Claims 2 and 3: The temperature of the temperature control switch 139 is considered to closely match the temperature of the wick that it contacts in order for the temperature control switch 139 to perform its function to reversibly change between the first configuration and the second configuration in response to the temperature of the wick exceeding the predetermined temperature (as described above) to prevent overheating of the wick and smoke liquid that is vaporized therefrom. The temperature of the wick is considered to be a relevant temperature of the vaporizer for the purpose of the temperature control switch 139 to perform its function to reversibly change between the first configuration and the second configuration in response to the temperature of the vaporizer exceeding the predetermined temperature (as described above) to prevent overheating of the vaporizer and smoke liquid that is vaporized therein.
Claim 5: Changing of the shape or structure of the memory alloy is the basic functioning principle of operation of such materials because shape memory materials undergo a solid-to-solid phase transition, typically shifting from a martensitic state at lower temperatures to an austenitic state as the temperature increases (see Ahmed et al , Introduction, for evidence). The solid-to-solid phase transition occurs in response to the temperature of the wick or the vaporizer exceeding the predetermined operating temperature, wherein the hea9disconnects the t from the vaporizer causes the switch to change from the first configuration to the second configuration.
Claim 13: Qiu discloses that the temperature control switch 139 switches off the connection between the power supply device 15 and heating member 133 (disconnects a connection lead for delivering power to the vaporizer) [0073].
Claim 17: The temperature control switch 139 (structure) is attached to a part of the vaporizer, thus is located within the claimed distance.
Claims 20, 29 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu and further in view of Hepworth et al (US 2020/0154770)
Claim 20: Qiu discloses that the electronic cigarette comprises a suction nozzle 11 comprising a vent hole 161 (outlet), but does not disclose an air inlet or an air channel extending from the air inlet to the outlet, wherein the vaporizer is located in the air channel between the air inlet and the outlet.
However, it is generally known in the art that vapor provision devices such as e-cigarettes generally contain a reservoir of a source liquid containing a formulation from which an vapor is generated, such as through vaporization in a vapor generation chamber by a vaporizer, and one or more air inlet holes located away from a mouthpiece end of the system. When a user sucks or inhales on the device, air is drawn through inlet holes and through an air flow path (air channel) into the vapor generation chamber where it mixes with the vaporized material and continues through a flow path to an opening (outlet) in the mouthpiece carrying some of the vapor for inhalation by the user (see Hepworth et al, Abs, [0003] for evidence). Therefore, an air inlet, air channel and outlet as claimed, and wherein the vaporizer is located in the air channel between the air inlet and the outlet would have been obvious to one of ordinary skill in the art for the electronic cigarette to be smoked in the usual way.
Claims 29 and 36: Qiu does not disclose that the electronic cigarette comprises a cartridge and a control unit configured as claimed.
Hepworth et al discloses that vapor provision devices such as e-cigarettes can comprise a single part or can comprise a modular assembly including a disposable cartridge and a reusable part. The disposable cartridge comprises a vapor precursor material (reservoir) and a vaporizer and in some cases a temperature sensor for helping control the temperature, while the reusable part comprises a power supply (e.g. rechargeable battery) and control circuitry (reads on a control unit). Cartridges are electrically and mechanically coupled to a control unit for use, for example using a screw thread or bayonet, and are removable for replacement. Therefore the control unit comprises a cartridge receiving section arranged to cooperatively engage with the cartridge so as to releasably couple the cartridge to the control unit [0020].
It would have been obvious to one of ordinary skill in the art to provide the electronic cigarette or atomizing device of Qiu as a modular assembly including a disposable cartridge and a reusable part as disclosed by Hepworth et al to avoid the expense of replacing the reusable control unit with each use. It would further have been obvious to include a memory alloy switch in the cartridge to control the temperature of the vaporizer and avoid overheating, wherein the memory alloy switch is positioned and functions as claimed and as discussed with regard to Claim 1.
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 JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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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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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
