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 .
Status of the Claims
This Office Action is in response to Applicant’s amendments filed 01/06/2026.
Claims 16-25 and 27-37 are pending and are subject to this Office Action.
Claims 30-35 are withdrawn.
Claims 16 and 27 are amended.
Claims 36-37 are newly added.
Claim 26 is cancelled.
Response to Amendment
The Examiner withdraws the objection to the drawings for reference characters not mentioned in the description, due to Applicant’s direction toward the supporting line in the specification.
The Examiner withdraws the 112 rejection of claim 16 as being indefinite due to amendments to the claims filed 01/06/2026.
Response to Arguments
Applicant’s arguments, see pages 9-17, filed 01/06/2026, with respect to the rejection of claim 16 under USC 103 have been fully considered but they are not persuasive.
On pages 9-10 the Applicant argues that prior art Bruton does not appropriately teach a flexible membrane provided at an upstream end of the aerosol-generating device. Specifically, the Applicant references Bruton Fig. 1 and claims that the air inlet 23 is the upstream end, which would not teach the claimed invention.
The Examiner disagrees.
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 (see Fig. 1). As such, Bruton teaches the invention as claimed.
The Examiner notes that Bruton teaches the rearrangement of parts such that the flexible membranes may be located at various locations along the passage 26 (see Fig. 4B).
The Examiner further notes that advantages of the instant invention as described by the Applicant on page 10 (e.g., improved cleaning due to the upstream location of the valve) are not explicitly recited by the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Thus, Bruton still teaches the device as claimed.
On pages 11-13 the Applicant argues that Bruton does not appropriately suggest modification to use a solid aerosol generating substrate. Specifically, the Applicant argues that Bruton is designed to be used with a liquid substrate and its associated components, further referencing the protrusion and valve configuration of Bruton. As such, the modification to a solid aerosol generating substrate would render Bruton unsatisfactory for its intended purpose.
The Examiner disagrees.
The purpose of the device of Bruton is to provide an aerosol to a user. Bruton paragraph [0003] states that this may be accomplished using a liquid aerosol precursor or a solid aerosol precursor. Both forms of aerosol precursor function in aerosol provision systems comprising an airflow path that mixes with a heated aerosol precursor, as described by Bruton ([0003]). One having ordinary skill in the art would recognize that devices may be configured for using a liquid or a solid aerosol precursor, and would understand the basic requirements (e.g., different heater arrangements) needed to undergo such a modification (such as the replacement of cartomizer 4 for a different cartomizer as described in [0131]). Bruton even states that other embodiments may be formed with a solid aerosol generating substrate ([0131]). Thus, modification from a liquid to a solid inhalable precursor would neither change the purpose or the overall operation (i.e., to heat an aerosol precursor) of the device.
Furthermore, regarding the protrusions 45 of the cartridge intended to open the valve, the Examiner notes that Bruton requires the protrusion configuration in only one embodiment of the device. In other embodiments (such as that depicted in Fig. 4B; [0084]), this protrusion would not be necessary. Thus, the protrusion is not essential to the operation of the device. Furthermore, even if the protrusion embodiment were necessary, it would be obvious to one having ordinary skill in the art that when modifying the aerosol generating substrate to be a solid, the valve would still need to open to allow airflow to the substrate. This may require redesigning the solid substrate to include the protrusions or using a different valve. The Examiner notes that in combination with the valves of Alarcon and Langseder, the substrate would not require a protrusion.
On page 13 the Applicant argues that there is no motivation to use the valve of Alarcon. Specifically, the Applicant’s notes that the valve of Bruton is mechanically opened whereas Alarcon's is opened by air pressure.
The Examiner disagrees.
Bruton teaches that while the flexible membrane (flow restriction member 25) in the specified example are one-way valves opened in response to a downward force applied by the substrate (Figs. 3a-3b; [0060]), the flexible membrane may be comprised of any suitable valve opened by an applied force ([0060]). For example, the flexible membranes 25’’ displayed in Fig. 4b would be expected to open due to a different force, due to the different depicted configuration (Fig. 4b; [0084]).
Alarcon teaches a flexible membrane (valve chamber 280 that may comprise a duckbill valve 284, 310; Figs. 5A-C, 6A-B; [0094]) that opens due to the force of airflow.
While the direction that each flexible membrane opens might vary, one having ordinary skill in the art would recognize that this modification involves merely substituting one alternative valve for another to yield predictable results.
On page 14 the Applicant argues that because Langseder is of a different field of invention and because Langseder does not teach allowing air through the valve, there is no motivation to modify Bruton with Langseder.
The Examiner disagrees.
Firstly, regarding field of inventions, Bruton is directed to an aerosol generating device comprising a flexible membrane. Langseder is directed to a container valve (flexible membrane). While Langseder may be primarily categorized in another field of invention, one having ordinary skill in the art of aerosol generating devices would know to look to the valve arts to select appropriate or alternative flexible membranes.
Secondly, regarding allowance of air through a valve, Langseder teaches that the valve is configured to dispense both fluid and air when pressure is applied ([0021]). It would be expected that in the absence of fluid, air would still be dispensed through the valve. The teaching that air is prevented from flowing in the other direction through the valve ([0025]) would not inhibit its function as a one-way airflow valve. Thus, its application to Bruton, which similarly teaches the use of a one-way valve (Bruton [0060]), is appropriate.
On pages 14-17 the Applicant argues that modification of Bruton to arrive at the claimed invention would require improper hindsight reasoning. However, as explained above, the Examiner maintains that the prior art rejection of claim 16 in view of Bruton, Alarcon and Langseder is appropriate.
The following is a modified rejection based on Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
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 28-29 and 36 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.
Regarding claim 28, the claim recites the limitation “wherein the central portion comprises an aperture”. It is unclear if the claimed aperture is separate from the “the opening [comprising] at least two openings” recited by claim 16, as an opening is regarded as being equivalent to an aperture. For examination purposes, the aperture will be considered any opening formed by the slits.
Claim 29 is rejected by virtue of its dependency on claim 28.
Regarding claim 36, the claim recites the limitations “the first lip” and “the opposing second lip”. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, the limitations will be read as “a first lip” and “an opposing second lip”, respectively.
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, 27-29 and 36-37 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) and Langseder et al. (US 20070114250 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 or (II) 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 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), 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). Alarcon teaches that the slits form an aperture when deformed (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, whether that aperture be by nature of the intersecting slits or by deformation of the slits.
Regarding claim 29, Langseder depicts that 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 that is wider than the non-deformed slits (Fig. 5C, 6B; [0099]).
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]).
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 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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