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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/12/2026 has been entered.
Status of the Claims
This Office Action is in response to Applicant’s amendments filed 05/12/2026.
Claims 16-25, 27-28 and 30-41 are pending and are subject to this Office Action.
Claims 16 is amended.
Claims 38-41 are newly added.
Claims 30-35 are withdrawn.
Claims 26 and 29 are cancelled.
Response to Amendment
The Examiner notes that the drawings have been indicated as accepted on the PTOL-326 Office Action Summary.
As acknowledged in the Advisory Action dated 04/13/2026, The Examiner withdraws the 112 rejections for indefiniteness for claims 28 and 36, due to Applicant’s amendments filed 04/07/2026.
Response to Arguments
Applicant’s arguments, see pages 8-17, filed 05/12/2026, with respect to the rejection of claim 16 under USC 103 have been fully considered and they are persuasive. Claim 16 has been amended to require that the flexible membrane forms an upstream end of the aerosol-generating device. Bruton does not teach that the flexible membrane forms an upstream end of the device itself. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made further in view of Liu (US 20170311646 A1).
On pages 14-15 the Applicant argues that the modification of Bruton with Langseder is inappropriate, as Langseder is directed to a different overall structure and as Langseder does not teach actuation of the valve by the same mechanism.
The Examiner disagrees.
Firstly, regarding the structure of Langseder, Langseder is directed to a container valve (flexible membrane). While Langseder may primarily teach a valve in a different container from that of Bruton, one having ordinary skill in the art would know to look to a specific valve configuration, and not the surrounding components, to select appropriate or alternative flexible membranes. The Examiner maintains that the modification of Bruton with Langseder does not require the entire molded structure of Langseder, but merely relies on specific teachings directed to the valve configuration (i.e., the openings of a valve membrane) to be applied to the structure of Bruton.
Secondly, regarding allowance of air through a valve, Langseder teaches that the valve is configured to dispense air when pressure is applied to a container, thus increasing air pressure ([0021]). It would be expected any air pressure applied to the valve (whether it be due to squeezing a container wall or due to inhalation) would accomplish the same opening function of the valve, as both would increase air pressure. Thus, the application of Langseder to Bruton is appropriate.
The following is a modified rejection based on Applicant’s amendments to the claims.
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 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 16-25, 27-28 and 36-41 are rejected under 35 U.S.C. 103 as being unpatentable over Bruton et al. (US 20210022400 A1) in view of Alarcon et al. (US 20220312852 A1), Langseder et al. (US 20070114250 A1) and Liu (US 20170311646 A1).
Regarding claim 16, Bruton teaches an aerosol-generating device (aerosol provision system 1; Fig. 1; [0032]), comprising:
a cavity (receptacles 24; [0041]) configured to receive an aerosol-generating article comprising an aerosol-forming substrate (reservoirs 41; [0041]),
and a flexible membrane (flow restriction members 25 comprising elastomeric flaps; [0041], [0060]) arranged at an upstream end of the cavity (Fig. 1; [0060]), the flexible membrane comprising an opening in fluid communication with the cavity ([0060]),
wherein the flexible membrane is provided at an upstream end of the aerosol-generating device (Fig. 1; Bruton is interpreted such that the entire passage 26 between air inlet 23 and 25 is an upstream end of the device, as this is the most upstream point for the airflow),
wherein the opening is configured to serve as an air inlet for the aerosol-generating device ([0060]).
Bruton does not teach that (I) the aerosol-forming substrate is a solid aerosol-forming substrate, (II) that the flexible membrane forms an upstream end of the aerosol-generating device or (III) the opening comprises at least two openings formed in the flexible membrane, the at least two openings comprising slits that intersect, wherein the at least two intersecting slits form a central portion.
Regarding (I), Bruton teaches a liquid aerosol-forming substrate. However, Bruton teaches that solid aerosol-forming substrates are known alternatives in the art of aerosol-generating devices ([0003]; [0131]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bruton by using a solid aerosol-forming substrate in place of the liquid substrate because Bruton teaches that a solid aerosol-forming substrate is an art-recognized alternative for a liquid aerosol-forming substrate, and this involves substituting one known aerosol-forming substrate for another to obtain predictable results.
Regarding (II), Bruton teaches that the control part 2 including housing 20, while pictured to comprise control circuitry 22 and power source 21 below the flexible membrane 25 and air inlet passage 26, may have different shapes/configurations to that depicted.
Liu, directed to an aerosol generating device (electronic cigarette; [0025]) comprising a cavity (cavity formed by shell 1; Fig. 1; [0028]) configured to receive an aerosol-generating article comprising an aerosol-forming substrate, and a valve (airflow regulation ring 17; Fig. 1; [0025]) arranged at an upstream end of the cavity configured to serve as an air inlet and comprising an opening in fluid communication with the cavity, teaches that the device may be configured such that the power source (battery cell 38; [0025]) and control circuitry (PCB 5; [0025]) are located beside, rather than below, the valve, air passage and aerosol-generating article (see Figs. 1, 3). In this configuration, the valve forms an upstream end of the aerosol generating device (see Figs. 1, 3).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bruton by configuring the device such that the flexible membrane forms an upstream end of the aerosol-generating device as taught by Liu because both Bruton and Liu are directed to aerosol-generating devices comprising air inlet valves/flexible membranes, Liu teaches that it is known in the art that devices may be configured to position a power source and control circuitry next to the aerosol generating article such that the inlet valve forms an upstream end of the device, and this involves substituting one alternative configuration for another to yield predictable results. Furthermore, rearrangement of parts, such as the rearrangement of the power source and control circuitry of Bruton to a different position, is prima facie obvious when the operation of the device is not modified. See MPEP § 2144.04 (VI)(C).
Regarding (III), Bruton teaches that the flexible membrane comprising an opening may be any suitable valve ([0060]).
Alarcon, directed to an aerosol-generating device (e-cigarette or electronic smoking device 10; [0031]) comprising a cavity (catomizer, liquid reservoir portion or cartomizer 16; [0031]) configured to receive an aerosol-generating substrate and a flexible membrane (valve chamber 280 that may comprise a duckbill valve 284, 310; Figs. 5A-C, 6A-B; [0094]) arranged at an upstream end of the cavity, the flexible membrane comprising an opening in fluid communication with the cavity wherein the opening is configured to serve as an air inlet for the aerosol-generating device ([0094], [0096]), teaches that at least two openings (slits 300, 302 or 322,324; Figs. 5A-C, 6A-B; [0096], [0098]) are formed in the flexible membrane, the at least two openings comprising slits that intersect, and wherein the at least two intersecting slits form a central portion (Figs. 5A-C, 6A-B).
Langseder, directed to a flexible membrane (orifice valve 12; Figs. 1-8 [0017]), teaches that at least two openings (cross-cut slits 26, 30; Figs. 2, 6; [0021]) are formed in the flexible membrane, the at least two openings comprising slits that intersect (Figs. 2, 6; [0021]), and wherein the at least two intersecting slits form a central portion (Figs. 2, 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bruton by using a flexible membrane valve as taught by Alarcon or Langseder such that at least two openings are formed in the flexible membrane, the at least two openings comprising slits that intersect, wherein the at least two intersecting slits form a central portion because Bruton and Alarcon are directed to aerosol-generating devices comprising flexible membrane openings and Langseder is directed to flexible membrane valves, Alarcon and Langseder teach that flexible membrane valves comprising at least two openings, the at least two openings comprising slits that intersect are art-recognized valves, and this involves substituting one alternative valve for another to yield predictable results.
Regarding claim 17, Bruton teaches that the cavity has a central longitudinal cavity axis (longitudinal axis of the receptacles; [0058]), and wherein the opening is at least partly arranged on the central longitudinal cavity axis (see Fig. 1).
Regarding claim 18, Bruton teaches a central longitudinal device axis (longitudinal axis of the cartomizer; [0058]), wherein the central longitudinal device axis is offset from the central longitudinal cavity axis (see Fig. 1).
Regarding claim 19, Bruton does not explicitly teach that the flexible membrane further comprises a concave part that bulges towards an interior of the cavity.
Alarcon teaches that the flexible membrane comprises a concave part the bulges towards an interior of the cavity (see valve chamber 280 in Fig. 4B, Fig. 5A-C, Fig. 6A-B; [0096]).
Langsedner teaches that the flexible membrane may be concave, convex or flat (Figs. 3, 5, 7) depending on flow properties ([0020]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bruton by making the flexible membrane comprise a concave part that bulges towards an interior of the cavity as taught by Alarcon and Langseder because Bruton and Alarcon are directed to aerosol-generating devices comprising flexible membrane valves and Langseder is directed to flexible membrane valves, Langseder teaches that there are three options for a flexible membrane valve, concave, convex or flat, one having ordinary skill in the art would recognize that each of these valves would exhibit different flow properties, and this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding claim 20, Langseder teaches that the opening is formed in the concave part of the flexible membrane (Figs. 3, 5).
Regarding claim 21, Bruton teaches that the opening is further configured to serve as a sole air inlet for the aerosol-generating device ([0060], Bruton does not teach or suggest other air inlets).
Regarding claim 22, Bruton does not explicitly teach that the flexible membrane further comprises a convex part that bulges outwards from an interior of the cavity.
Bruton does not explicitly teach that the flexible membrane further comprises a concave part that bulges towards an interior of the cavity.
Langsedner teaches that the flexible membrane may be concave, convex or flat (Figs. 3, 5, 7) depending on flow properties ([0020]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bruton by making the flexible membrane comprise a concave part that bulges towards an interior of the cavity as taught by Langseder because Bruton is directed to an aerosol-generating device comprising a flexible membrane valve and Langseder is directed to flexible membrane valves, Langseder teaches that there are three options for a flexible membrane valve, concave, convex or flat, one having ordinary skill in the art would recognize that each of these valves would exhibit different flow properties, and this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding claim 23, Langseder teaches that that the opening is formed in the convex part of the flexible membrane (Figs. 3, 5).
Regarding claim 24, Bruton depicts a mounting element, wherein the flexible membrane is mounted in the mounting element (Fig. 1 protrusions/shoulders surrounding membrane 25 may be considered a "mounting element").
Regarding claim 25, Bruton depicts that the mounting element is arranged at the upstream end of the aerosol-generating device (Fig. 1, upon modification with Liu, as in the rejection of claim 16 above, the mounting element would be located at an upstream end of the device), and that the mounting element is a mounting frame (Fig. 1 protrusions/shoulders surrounding membrane 25 may be considered a "mounting frame").
Regarding claim 27, Alarcon teaches that it is known in the art for flexible membrane-type valves to comprise a first lip and a second lip formed in the flexible membrane, the first lip and the second lip abutting each other (lips 296, 298 or 318,320; Figs. 5A-C, 6A-B; [0096], [0098]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art that each slit may comprise a first lip and a second lip formed in the flexible membrane, the first lip and the second lip abutting each other.
Regarding claim 28, Langseder teaches that the central portion comprises an aperture (Fig. 6 demonstrates that when multiple slits are intersected, an aperture forms), wherein a width of the aperture is larger than a width of the slits (see Fig. 6). Alarcon teaches that the slits form an aperture when deformed (Fig. 5C, 6B; [0099]) that is wider than the non-deformed slits (Fig. 5C, 6B; [0099]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art that the membrane comprising at least two slits may comprise an aperture in the central portion wherein a width of the aperture is larger than a width of the slits, whether that aperture be by nature of the intersecting slits or by deformation of the slits.
Regarding claim 36, Alarcon teaches that it is known in the art for flexible membrane-type valves to comprise a first lip and an opposing second lip spaced apart (lips 296, 298 or 318,320; Figs. 5C-6B; [0097-0099]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art that each slit may comprise a first lip and an opposite second lip spaced apart to create an opening.
Regarding claim 37, Bruton teaches that the cavity 24 is further configured to receive a tubular aerosol-generating article (reservoirs 41 may be tubular shaped; Fig. 2; [0055-0056]).
Regarding claim 38, Bruton teaches that the flexible membrane is configured to allow a cleaning tool to pass through the opening (a cleaning tool such as a flexible swab/pipe cleaner would reasonably be expected to pass through any flexible opening).
Regarding claim 39, Bruton teaches that the flexible membrane is configured to allow a cleaning tool to pass through the opening along the central longitudinal cavity axis (a cleaning tool such as a flexible swab/pipe cleaner could reasonably be expected to pass through the opening along the central longitudinal/vertical cavity axis).
Regarding claim 40, modified Bruton teaches that the flexible membrane forms an outer part of a housing of the aerosol-generating device (upon modification with Liu as in the rejection of claim 16 above, the flexible membrane of Bruton would be considered to form an upstream end of the device and part of the outer boundary of the device housing 20).
Regarding claim 41, modified Bruton teaches that the upstream end of the aerosol-generating device is the most upstream point of an airflow through the aerosol-generating device (upon modification with Liu as in the rejection of claim 16 above, air would be expected to enter the device at flexible membrane 25, thus demarcating the most upstream point of airflow through the device).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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