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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 2/10/2026 is acknowledged.
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/10/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an aerosol generator for generating aerosol from the aerosol-generating material when the consumable is located in the chamber” in claim 1; and
“a heating assembly for applying heat to the consumable to generate aerosol from the aerosol-generating material when the consumable is located in the chamber” in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The claim limitations are being interpreted as follows:
The limitation “an aerosol generator for generating aerosol from the aerosol-generating material when the consumable is located in the chamber” in claim 1 is being interpreted as non-heating devices including vibrators, a pressurizers, and electrostatic devices (p. 10, ll.13-17) and heating assemblies for applying heat to the consumable (p. 5, ll. 10-11), and equivalents thereof. Since “heating assembly” also implicates 112(f) (see above), the interpretation of the limitation will also include to the structures listed below in b.
The limitation “a heating assembly for applying heat to the consumable to generate aerosol from the aerosol-generating material when the consumable is located in the chamber” in claim 14 is being interpreted as a resistive/Joule heater and an induction heater (p. 10, ll. 9-11) and equivalents thereof.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-3, 6, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fournier et al. (US 2003/0154991; of record).
Regarding claim 1, Fournier discloses an electrical smoking system (abstract; “aerosol provision system”) comprising:
a reusable lighter (25; Fig. 1; “aerosol provision device”) comprising:
a heater fixture (39; Fig. 3B) having a space inside ([0022]; Fig. 3B; “chamber”) for receiving a cigarette (23; Fig. 3C; “consumable”) comprising a tobacco rod (60; Fig. 4; “aerosol-generating material”), and
heater elements (37; “aerosol generator for generating aerosol” according to 112(f) interpretation above) for controlling generation of aerosol at or about the heater ([0088]), the space having a right end (“proximal end”) comprising an opening (see annotated Fig. 3B; interpreted as the circumference of space surrounding the cigarette receiver 27) through which a cigarette is insertable into the space (see Fig. 3C), and a left end (“distal end”) comprising a stop-piece (183) comprising a tapered wall that tapers toward a central axis of the chamber (see annotated Fig. 3B) and being spaced from the opening (Fig. 3B); and
a cigarette receiver (27; “adapter”) having an opening (55; Fig. 3A) capable of determining a maximum width of the cigarette insertable into the space via the opening (see below).
Regarding the claim limitation “an adapter to selectively determine a maximum width of the consumable inserted into the chamber via the opening,” the instant specification states that the adapter selectively determines a maximum width of the consumable insertable into the chamber by partially blocking the opening by a different degree (p. 4, ll. 10-16). In other words, the adapter of the instant invention selectively determines the maximum width of the consumable by specifying the diameter of the bore (see p. 4, ll. 18-20). Since Fournier’s opening (55) has a fixed diameter (see Fig. 3B), one of skill in the art would understand that Fournier’s opening “selectively determines a maximum width of the consumable insertable…” by preventing cigarettes having a larger diameter from being inserted.
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Regarding claim 2, Fournier discloses the cigarette receiver (27) is positioned relative to the opening to partially block the opening (see Fig. 3B).
Regarding claim 3, Fournier discloses the cigarette receiver (27) comprises a main body (see annotated Fig. 3B) positionable relative to the opening to partially block the opening (see Fig. 3B), and a bore (see annotated Fig. 3B; interpreted as part of the opening 55) through which the cigarette is insertable into the opening (Fig. 3C), wherein the bore is formed in the main body (Fig. 3B) and has a width smaller (annotated Fig. 3B; see diameter in red) than a maximum width of the opening (annotated Fig. 3B; see diameter in green).
Regarding claim 6, Fournier discloses the space having a main portion (see Fig. 3B) having a width (annotated Fig. 3B; see diameter in blue) greater than the width of the bore (annotated Fig. 3B; see diameter in red).
Regarding claim 13, Fournier discloses the cigarette (23) comprising the tobacco rod (60; Fig. 4; “aerosol-generating material”).
Regarding claim 14, Fournier discloses the heater elements (37; “heating assembly for applying heat…” according to 112(f) interpretation above).
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 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.
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Acconcia et al. (WO 2020/025746; of record; US 2021/0298360 is referenced herein for citations) in view of Reevell (US 2018/0214645).
Regarding claim 1, Acconcia discloses a system (abstract; “aerosol provision system”) comprising:
an aerosol generating device (Fig. 1; [0077]; “aerosol provision device”) comprising:
a heating chamber (18; “chamber”) allowing for an aerosol-generating article (34; Fig. 4; “consumable”) comprising an aerosol-forming substrate ([0005]; “aerosol-generating material”) to be inserted ([0081]; “receiving”), and
a heating element (20; [0045], [0078] “aerosol generator for generating aerosol…” according to 112(f) interpretation above), the heating chamber having a right end (see annotated Fig. 1; “proximal end”) comprising an opening (see annotated Fig. 1), and a distal end (see annotated Fig. 1) distanced from the opening (see annotated Fig. 1); and
an adapter element (24; Fig. 2-3; “adapter”) has a bore (see annotated Fig. 4) having an inner diameter preferably between 5 mm to 6.5 mm ([0084]).
Regarding the claim limitation “an adapter to selectively determine a maximum width of the consumable inserted into the chamber via the opening,” the instant specification states that the adapter selectively determines a maximum width of the consumable insertable into the chamber by partially blocking the opening by a different degree (p. 4, ll. 10-16). In other words, the adapter of the instant invention selectively determines the maximum width of the consumable by specifying the diameter of the bore (see p. 4, ll. 18-20). Since Acconcia’s adapter element having the bore with a fixed inner diameter of between 5 mm to 6.5 mm, one of skill in the art would understand that Acconcia’s bore “selectively determines a maximum width of the consumable insertable…” by preventing cigarettes having a diameter larger than between 5 mm to 6.5 mm from being inserted.
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Acconcia further suggests using a multiple of different aerosol-generating articles having different shapes and diameters with a single aerosol-generating device ([0003]).
However, Acconcia is silent as to the distal end comprising a tapered wall that tapers towards a central axis of the chamber with distance from the opening.
Reevell teaches an aerosol-generating device (abstract) comprising a receiving chamber (3; see Figs. 12-13) having a bottom wall (34; Fig. 14) having two recesses (35, 36) arranged in a staggered manner such that the second recess forms a recess of the first recess ([0154]; the inner wall is considered a “tapered wall that tapers towards a central axis”) in order to accommodate three types of consumables (41, 42, 43; Fig. 15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Acconcia’s chamber having flat distal end to include Reevell’s staggered recess configuration in order obtain the predictable result and beneficial result of better accommodating different sized aerosol-generating articles, as suggested by Acconcia, at the lower end of the heating chamber (Reevell; [0098]).
Regarding claim 2, modified Acconcia teaches wherein the adapter element (24) is inserted into the opening in the heating chamber (Fig. 5; [0079]; “partially block the opening”).
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Regarding claim 3, modified Acconcia discloses the adapter element comprises a main body (see annotated Fig. 2 above) positioned inside the opening to partially block the opening (see annotated Fig. 5 above), and a bore (see annotated Fig. 2 above) through which an aerosol-generating article (34) is inserted into the opening (see annotated Fig. 5 above), the bore formed in the main body (see annotated Fig. 2) and having a width (see green width in annotated Fig. 5) smaller than a maximum width of the opening (see red width in annotated Fig. 5).
Regarding claim 4-5, modified Acconcia discloses the bore (see annotated Fig. 4) having an inner diameter preferably between 5 mm to 6.5 mm ([0084]; overlaps the claimed range of “5.0-5.5 mm” and “6.5-7.0 mm”). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 6, modified Acconcia discloses the chamber comprises a main portion (see annotated Fig. 5) having a width (see blue width in annotated Fig. 5) greater than the width of the bore (see green width in annotated Fig. 5).
Regarding claim 11, modified Acconcia discloses that the diameter of the cavity of different adapter elements (“plurality of adapters”) may be varied to enable the usage of aerosol-generating articles of different diameters in conjunction with a single aerosol-generating device ([0031]).
Regarding the claim limitation “each of the plurality of adapters to selectively determine a different maximum width of the consumable inserted into the chamber via the opening,” the instant specification states that the adapter selectively determines a maximum width of the consumable insertable into the chamber by partially blocking the opening by a different degree (p. 4, ll. 10-16). In other words, the adapter of the instant invention selectively determines the maximum width of the consumable by specifying the diameter of the bore (see p. 4, ll. 18-20). Since modified Acconcia uses multiple adapter elements having cavities of varied but fixed diameters, one of skill in the art would understand that each of the adapter elements used in Acconcia would “selectively determine a maximum width of the consumable insertable…” by preventing cigarettes having a diameter larger than the specified diameter of the cavity.
Regarding claim 12, modified Acconcia discloses that each of the different adapter elements ([0031]) has a main body (see annotated Fig. 3 above) positionable relative to the opening to partially block the opening (see annotated Fig. 5 above), and a bore (see annotated Fig. 3 above) through which an aerosol-generating article (34) is insertable (see annotated Fig. 5), the bore being formed in the main body (see annotated Fig. 3), and each of the bores having their diameter being varied to accommodate aerosol-generating articles having different diameters ([0031]).
Regarding claim 13, modified Acconcia discloses the aerosol-generating article (34; Fig. 5; “consumable”) comprising the aerosol-forming substrate ([0005]; “aerosol-generating material”).
Regarding claim 14, modified Acconcia discloses the heating element (20; [0045], [0078] “heating assembly for applying heat…” according to 112(f) interpretation above).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Acconcia et al. in view of Reevell as applied to claim 1 above, and further in view of Avedissian (US 2021/0052000).
Regarding claim 7, modified Acconcia discloses the aerosol provision system as discussed above with respect to claim 1, wherein the adapter elements are removable so that different adapter elements having different sized cavities can be used in conjunction with different aerosol-generating articles ([0025]).
However, modified Acconcia is silent as to the adapter comprises a first threaded connection and the aerosol provision device comprises a second threaded connection, the first threaded connection releasably connectable to the second threaded connection to locate the adapter relative to the aerosol provision system.
Avedissian teaches a cigar, cigarillo, and cigarette holder (abstract) comprising a reducer ring (101; Fig. 1; “adapter”) and a shaft (105), wherein the reducer ring is sized to fit around a diameter of a tobacco product and can come in many sizes to fit around different diameter cigars, cigarillos, and even cigarette ([0017]), wherein the reducer ring has a wall that is threaded (“first threaded connection”) and matches the threaded pattern (“second threaded connection”) grooved unto an internal wall of the shaft such that the reducer ring is screwed tight unto the shaft (([0018]; “releasably connectable”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Acconcia’s adapter element and heating chamber to include threads as in Avedissian in order to obtain the predictable result of screwing the adapter onto the heating chamber (Avedissian; [0018]) thus making the adapter removable as suggested by Acconcia. Moreover, it has been held that making the apparatus parts integral or separable when the operation of the apparatus is not otherwise changed is within the level of ordinary skill in the art. See MPEP 2144.04(V).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Acconcia et al. in view of Reevell as applied to claim 1 above, and further in view of Saygili (US 2019/0014818) as evidenced by American Elements (“Melting Point of Common Metals, Alloys, & Other Materials”) and Science Insights (“What Is PEEK Material? Composition and Key Properties”).
Regarding claim 8, modified Acconcia discloses the aerosol provision system as discussed above with respect to claim 1.
However, modified Acconcia is silent as to the adapter comprises a material having a melting point greater than 300 °C. Specifically, Acconcia does not disclose what material is used to form the adapter element.
Saygili teaches a holder for an aerosol generating article (title), the holder (220; Fig. 2A) comprising body (210; “aerosol provision device”) and a sleeve (220; “adapter”) such that a heat source of the article is inserted into the passage of the body ([0081]), and wherein the sleeve is made of suitable materials such as polyether ether ketone (PEEK), polyoxymethylene (POM), and high density polyethylene (HDPE) ([0026]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Acconcia’s adapter element to be made out of PEEK as in Saygili because “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” MPEP 2144.07.
Regarding the claim limitation “a melting point greater than 300°C,” Science Insights shows that PEEK has a melting point of 340 °C (p. 1, para.1).
Regarding claim 9, modified Acconcia discloses the aerosol provision system as discussed above with respect to claim 1.
However, modified Acconcia is silent as to the adapter comprises a polyoxymethylene. Specifically, Acconcia does not disclose what material is used to form the adapter element.
Saygili teaches a holder for an aerosol generating article (title), the holder (220; Fig. 2A) comprising body (210; “aerosol provision device”) and a sleeve (220; “adapter”) such that a heat source of the article is inserted into the passage of the body ([0081]), and wherein the sleeve is made of suitable materials such as polyether ether ketone (PEEK), polyoxymethylene (POM), and high density polyethylene (HDPE) ([0026]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Acconcia’s adapter element to be made out of POM as in Saygili because “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” MPEP 2144.07.
Regarding claim 10, modified Acconcia discloses the aerosol provision system as discussed above with respect to claim 1.
However, modified Acconcia is silent as to wherein a wall of the chamber comprises a material that is more heat resistant than a material of the adapter. Specifically, Acconcia does not disclose what materials are used to form the adapter element and the heating chamber.
Saygili teaches a holder for an aerosol generating article (title), the holder (220; Fig. 2A) comprising body (210; “aerosol provision device”) and a sleeve (220; “adapter”) such that a heat source of the article is inserted into the passage of the body ([0081]), and wherein the sleeve is made of suitable materials such as polyether ether ketone (PEEK), polyoxymethylene (POM), and high density polyethylene (HDPE) ([0026]), and the body is formed of any suitable material including metals such as aluminum ([0015]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Acconcia’s adapter element to be made out of PEEK as in Saygili and to have modified Acconcia’s heating chamber to be made out of aluminum as in Saygili because “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” MPEP 2144.07.
Regarding the claim limitation “a material that is more heat resistant…,” the claim limitation “heat resistant” is defined by Merriam-Webster dictionary as “not easily burned or melted.” Thus, a material that is “more heat resistant” is a material that burns and/or melts at a higher temperature. Here, modified Acconcia’s heating chamber made out of aluminum, having a melting point of 660.32°C (evidenced by American Elements on p. 2, second entry) is higher than Acconcia’s adapter element made out of PEEK, having a melting point of 340 °C (evidenced by Science Insights on p. 1, para.1).
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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