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
Applicant’s amendment to claims 1 and 9, cancellation of claims 2 and 19, amendments to the drawings and specification, and accompanying remarks filed 01/15/2026 (“Amendment”) have been entered. Accordingly, the objections to the drawings, specification, and claims, the claim rejections under 35 USC 102-103 and 112, and the claim rejections for double patenting are withdrawn. However, new claim rejections under 35 USC 103 are necessitated by the amendment. Claims 1, 9-11, 13-18, 20-22, and 25-29 remain pending, claims 21-22 remain withdrawn, and claims 1, 9-11, 13-18, 20, and 25-29 are examined herein.
Response to Arguments
Applicant's argument that Ferrie fails to disclose the removable member with at least one resilient arm deformable towards a center of the removable member and configured to be insertable into the undercut, as recited in amended claims 1 and 9 (Amendment p. 14-15), has been fully considered but is not persuasive. The Examiner respectfully disagrees because Ferrie discloses a panel 231 with a cut-out 237 defining two arms, the arms having ribs 241 removably attached to a groove 240 via snap engagement (thus the arms are “configured to be insertable into the undercut”) ([0131-6], Figs. 3-4). The panel 231 may be provided with an elastic coating of a deformable material [0135], which along with the snap engagement of the rib 240 (which presses inward toward a center of the panel as shown in Figs. 3-4) indicates that the arms have at least some deformability toward a center of the panel 231 (which reads on “deformable towards a center of the removable member”). Applicant further argues that the claimed deformability eases the claimed insertion (Amendment p. 14-15), but the Examiner notes that the claim language does not require the resilient arm to deform toward the center as part of the insertion (i.e., the deformability and insertability are separate, unrelated limitations as recited in claims 1 and 9). Regardless, Ferrie’s arms are similarly deformed toward the center of the panel 231 to slot the rib 240 into the groove 241 (see Figs. 3-4 wherein the arms press inward to slot the rib 240 into the groove 241). Finally, Applicant argues that the cited references do not disclose or suggest any technical advantages attributable to the resilient arm (Amendment p. 15), but the Examiner respectfully disagrees because Ferrie discloses the cut-out 237 making the UI accessible to a user [0133], the snap engagement being a suitable means for mounting the panel 231 which is well-known to one of ordinary skill in the art and is similar to Begin’s disclosed attachment elements, and the elastic coating improving shock resistance [0135], all of which provide motivation for one of ordinary skill in the art to combine Begin and Ferrie in the manner set forth below.
Applicant’s remaining arguments with respect to the claim rejections under 35 USC 102-103 (Amendment p. 11-15) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1, 9-11, 13-14, 16-18, 20, and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over Begin (WO 2019/084161 A1, previously cited) in view of Ferrie (EP 3711571 A1, previously cited).
Regarding claim 1, Begin is directed to an aerosol provision system including an assembly and a removable member releasably engaged with the assembly (Abstract). The assembly (“aerosol provision device”) has an outer surface with a first portion 1060 and a second portion 1062, the first portion 1060 being recessed (p. 20 l. 19-31, Fig. 10). A fulcrum 1064 (“connecting portion”) is defined between the first and second portions 1060, 1062 (p. 20 l. 19-31, Fig. 10). However, the fulcrum 1064 does not define an undercut in the outer face, and thus Begin fails to disclose “a connecting portion that…defines an undercut in a direction non-parallel to the first direction” as claimed. The removable member may at least partially cover the first and second portions 1060, 1062 (p. 20 l. 32-p. 21 l. 9, Fig. 10) and therefore reads on the “removable member configured to be removably attachable to the aerosol provision device so as to cover at least a part of the outer face”. In a particular embodiment, the removable member 606 can be affixed to the assembly 600 using attachment elements via numerous methods (p. 17 l. 9-10), such as elongate members 642 including a lip, rim, or flange to interlock with a corresponding channel 640 (p. 17 l. 16-17, Figs. 6A-C). However, Begin fails to disclose an embodiment wherein the removable member comprises “at least one attachment element configured to be removably receivable at least partially within the undercut to restrict movement of the removable member in a direction opposite to the first direction when the removable member is attached to the aerosol provision device” and “at least one resilient arm deformable towards a center of the removable member and configured to be insertable into the undercut”.
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Ferrie is directed to a smoking substitute system with an external panel (Title). A first panel 231 covers an external surface 229 of a device housing 227 ([0131], Figs. 3-4, reproduced below). The housing 227 has a groove 241 (an “undercut” which runs non-parallel to the depth direction) which receives ribs 240 (“attachment element”) in a snap lock engagement, in order to mount the first panel 231 on the housing 227 [0136]. The panel 231 has a cut-out 237 defining two arms (“resilient arm”), the arms having the ribs 241 thereon ([0133, 0136], Figs. 3-4). The panel 231 may be provided with an elastic coating of a deformable material to improve shock resistance [0135], which along with the snap engagement of the rib 240 (which presses inward toward a center of the panel as shown in Figs. 3-4) indicates that the arms have at least some deformability toward a center of the panel 231 (which reads on “deformable towards a center of the removable member”) (see also Figs. 3-4 wherein the arms press inward to slot the rib 240 into the groove 241).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Begin by including Ferrie’s arms with elastic coating and ribs 240 on Begin’s removable member and including Ferrie’s groove 241 on Begin’s assembly to enable a snap lock engagement therebetween – specifically, for instance, by providing an elastic coating on Begin’s removable member 606, providing a cut-out 237 on the removable member 606 defining arms including the elongate members 642, incorporating Ferrie’s ribs 240 into Begin’s elongate members 642 (adding or combining the elongate member 642 to/with the ribs 240), and incorporating Ferrie’s groove 241 into Begin’s channel 640 and/or fulcrum 1064 – because both Begin and Ferrie are directed to aerosolization devices with attachable external members, Ferrie teaches that this is a suitable mounting arrangement for the first panel 231 and improves shock resistance, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 9, Begin is directed to an aerosol provision system including an assembly and a removable member releasably engaged with the assembly (Abstract). The removable member may be a removable panel (which reads on a “body” as claimed) (p. 4 l. 19-20 and Fig. 4, reproduced below, showing the removable member 406). The removable member may include an attachment element which is slidably received within a channel of the assembly (p. 5 l. 5-24). For instance, the removable member 606 may include elongate members 642 such as protrusions configured for engaging a corresponding aperture 640 on the assembly 600 (p. 16 l. 24-33) (Fig. 6B, reproduced below). However, Begin fails to disclose the removable member comprising “at least one attachment element that protrudes from the body and comprising at least one resilient arm deformable towards a center of the removable member, wherein the at least one resilient arm is configured to be insertable into an undercut of the aerosol provision device”.
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Ferrie is directed to a smoking substitute system with an external panel (Title). A first panel 231 covers an external surface 229 of a device housing 227 ([0131], Figs. 3-4, reproduced below). The housing 227 has a groove 241 (an “undercut” which runs non-parallel to the depth direction) which receives ribs 240 (“attachment element”) in a snap lock engagement, in order to mount the first panel 231 on the housing 227 [0136]. The panel 231 has a cut-out 237 defining two arms (“resilient arm”), the arms having the ribs 241 thereon ([0133, 0136], Figs. 3-4). The panel 231 may be provided with an elastic coating of a deformable material to improve shock resistance [0135], which along with the snap engagement of the rib 240 (which presses inward toward a center of the panel as shown in Figs. 3-4) indicates that the arms have at least some deformability toward a center of the panel 231 (which reads on “deformable towards a center of the removable member”) (see also Figs. 3-4 wherein the arms press inward to slot the rib 240 into the groove 241).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Begin by including Ferrie’s arms with elastic coating and ribs 240 on Begin’s removable member and including Ferrie’s groove 241 on Begin’s assembly to enable a snap lock engagement therebetween – specifically, for instance, by providing an elastic coating on Begin’s removable member 606, providing a cut-out 237 on the removable member 606 defining arms including the elongate members 642, incorporating Ferrie’s ribs 240 into Begin’s elongate members 642 (adding or combining the elongate member 642 to/with the ribs 240), and incorporating Ferrie’s groove 241 into Begin’s channel 640 and/or fulcrum 1064 – because both Begin and Ferrie are directed to aerosolization devices with attachable external members, Ferrie teaches that this is a suitable mounting arrangement for the first panel 231 which improves shock resistance, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claims 10-11, Begin discloses the removable member with a panel (“body”) as set forth above in the discussion of claim 9. However, Begin fails to disclose that the panel comprises “a plurality of layers” per claim 10, and fails to disclose “wherein at least one of: at least one of the plurality of layers is transparent to define a transparent layer and another of the plurality of layers is visible through the transparent layer; or at least one of the plurality of layers is integrally formed with the at least one attachment element.”
Ferrie is directed to a smoking substitute system with an external panel (Title). The first panel 231 covers an external surface 229 of a device housing 227 ([0131], Figs. 3-4). The panel 231 has a cut-out 237 which allows a user interface to be accessed by a user [0133]. Alternatively or in addition to the cut-out, a transparent covering may be provided over the user interface [0133]. Such a transparent covering would be a second layer (the panel material being a first layer) and would therefore read on “a plurality of layers” per claim 10 and “at least one of the plurality of layers is transparent” per claim 11. One of ordinary skill in the art would recognize that such a transparent covering would similarly be useful for accessing Begin’s control element 508 (see Begin Fig. 5).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Begin by including Ferrie’s transparent covering on Begin’s removable member, because both Begin and Ferrie are directed to aerosolization devices with attachable external members, Ferrie teaches this allows a user to access the user interface which is similarly applicable to Begin’s control element 508, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 13, modified Begin’s removable member has an elastic coating and deformable arms, as set forth above in the discussion of claim 9, and thus the removable member is “resilient” as claimed.
Regarding claim 14, Begin’s removable member may be constructed from metal, such as rolled steel or aluminum (p. 13 l. 13-16).
Regarding claim 16, Begin’s removable member 406 defines an aperture 422 through which a control element of the assembly is accessible (p. 14 l. 25-30).
Regarding claim 17, Begin’s protrusions 642 are “formed on one surface” of the removable member 606 (p. 16 l. 24-33), which reads on “integrally formed with the body” as claimed.
Regarding claim 18, Begin’s attachment elements may include protrusions 642 as set forth above, and may further include a magnetic material (“a different material than a material of the body”) used in combination with the protrusions 642 (p. 16 l. 33).
Regarding claim 20, Begin discloses the removable member and protrusions 642 as set forth above in the discussion of claim 9. As shown in Figs. 4 and 6B, the removable member has a length (e.g., height) greater than its width. The removable member has a thickness (“depth”) which is substantially equal to a depth of a recess in the system, such that the removable member sits flush with the assembly when attached (p. 6 l. 26-30). As shown in Figs. 1A-B and 6B-6C, the thickness of the removable member is significantly less than both the width and length. However, as shown in Fig. 6B the protrusions 642 extend away from the surface in a direction opposite to the thickness, and thus Begin fails to disclose “wherein the at least one attachment element protrudes from the body in a direction perpendicular to the depth” as claimed (emphasis added). But it would involve a mere rearrangement of parts to instead position the protrusions 642 such that they extend outward from a side edge of the removable member 606 (which would read on “perpendicular”), and thus claim 20 is obvious in view of Begin. See MPEP 2144.04(VI)(C); see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 25, modified Begin discloses the system of claim 1 as set forth above. Ferrie’s groove 241 extends across the outer surface 229 (e.g., left-right in Fig. 4), which would be parallel to the plane of Begin’s first and second portions 1060, 1062 in the combination.
Regarding claim 26, Ferrie’s two grooves 241 are provided to accommodate two ribs 240, and each groove 241 extends in a direction non-parallel to the depth direction of the outer surface 229 (Fig. 4).
Regarding claim 27, Begin’s first portion 1060 is recessed as set forth above in the discussion of claim 1. Ferrie’s grooves 240 would be provided with the channel 640 and/or fulcrum 1064 in the combination, as set forth above in the discussion of claim 1, which would be “on respective sides of the recess” as claimed.
Regarding claim 28, Begin’s first portion 1060 is elongate as shown in Fig. 10.
Regarding claim 29, Begin discloses that the system may be configured to heat a tobacco stick (p. 4 l. 3-11).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Begin (WO 2019/084161 A1) in view of Ferrie (EP 3711571 A1) as applied to claim 9, further in view of Watanabe (WO 2020/183780 A1, US 2021/0307393 A, previously cited).
Modified Begin discloses the removable member as set forth above in the discussion of claim 9. Begin discloses attachment elements which may be snap-fit, or may include any suitably shaped protrusion to be received within a correspondingly shaped aperture (p. 5 l. 20-24). The removable member may be constructed from any suitable material, such as rolled steel or aluminum (p. 13 l. 13-16). However, Begin fails to disclose the removable member comprising or consisting of “spring steel” as claimed.
Watanabe is directed to a vapor generation unit for a non-combustion-type flavor inhaler (Title). The unit includes a wick support 14 with an elastic portion which is a plate spring 14e (which reads on “spring steel”) ([0119], Fig. 14, reproduced in part below). In a first position, the plate spring 14e is deformed and folded down ([0123-0124], Figs. 16-17). When released, the plate spring 14e elastically pushes a wick assembly 12 into contact with a heater 15 ([0125], Fig. 18). This provides a reliable and compact arrangement for connecting the wick assembly 12 and heater 15 [0126]. One of ordinary skill in the art would recognize that such elastic deformation could similarly be used to reliably and compactly press Begin’s removable member and assembly into contact with one another.
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Begin by using the material of Watanabe’s plate spring 14e for Begin’s removable member or a portion thereof such as the arms, because both Begin and Watanabe are directed to aerosolization devices, Watanabe teaches that this provides a reliable and compact connection, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747