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 12/3/2025 have been fully considered but they are not persuasive.
Applicant argues that Borkovec does not disclose a vaporization element having an outlet. The Office Action asserts that the wick-and-coil structure in Borkovec constitutes a vaporization element with an outlet. Applicant submits that the wick is soaked with liquid and heated by a resistance coil, thereby generating vapor at the surface of the wick. The vapor emerges into the surrounding airflow region, not by passing through any tube, port, or defined outlet.
Examiner respectfully disagrees. Claim 1 does not further define the outlet has having any tube, port or any other structural requirement, other than it being an outlet through which vapor passes. The rejection relies on defining areas of the passageway that meet the claimed requirements for the outlet. In this case, because the generated vapor leaves the vicinity of the heater and wick, while n the pathway, then this area is defined as the outlet of the vaporizer.
Applicant argues that Borkovec does not disclose a hot air channel. Borkovec does not define any corresponding downstream boundary or structural feature that would define the end of a channel. This interpretation is technically untenable because it would require the same component- the wick-and-coil arrangement- to function simultaneously as the vaporization element and as the channel through which heated air is directed towards the outlet of the vaporization element. A wick saturated with liquid and heated to generate vapor cannot, at the same time, serve as a conduit for channel air.
Examiner respectfully disagrees. The channel surrounding the vaporizing element represents the claimed hot air channel, not the vaporization element itself. As Borkovec states, the gas in the channel passes by the heater and through the vaporizer and its outlet (Paragraph [0019]). The rejection relies on the channel up to at least part of the upstream surface of the wick and heater to be considered the heated gas path that directs heated air to the vaporizer outlet, as claimed. It is further noted that claim 1 does not identify any additional structural elements of the hot air channel, other than it being a channel.
Applicant argues that a “channel”, both in its ordinary meaning and as understood by one of ordinary skill in the art, refers to a component having sidewalls – such as a tube or duct-. Borkovec discloses no such structure.
Borkovec discloses a central passage, having an inner lateral surface, for directing the airflow and vapor (Paragraph [0031]). Thus, the central passage appears to meet Applicant’s definition of “channel”.
Applicant argues that Borkovec lacks a dilution air channel. The channel, 42, is an additive inlet that does not convey ambient air at all, nor does it function to introduce dilution air into the airflow passage.
Examiner respectfully disagrees. The courts have generally held that Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I and II.
As taught by Borkovec, the channel, 42, opens into an outer lateral surface of the atomizer/reservoir (Paragraphs [0029] and [0031]). Thus, in the configuration shown in figure 1 of Borkovec, the device is capable of allowing ambient air into the passage, 42, and into the flow, F, of aerosol. Thus, the device of Borkovec is capable of operating as claimed.
Moreover, Borkovec discloses that gas flows freely from outside the device via the additive inlet, 42, and into the central passage (Paragraph [0031]), and under ambient pressure and temperature (Paragraph [0038]). It is clear then, that the device is capable of having ambient gas/air to enter channel 42, in the claimed manner.
Even considering the inclusion of an additive reservoir (an exemplary embodiment), the reservoir itself has air inlets, 76, (Paragraphs [0054]-[0070]). In this embodiment, ambient air is capable of entering air inlet, 76, into the additive reservoir, and then into channel, 42, and into the vapor, in the manner claimed.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 2, 4-8, 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BORKOVEC et al. (US 2018/0242637).
With respect to claim 1, BORKOVEC et al. disclose an electronic smoking device (Abstract) comprising a vaporization element, 26, (Paragraph [0019]; Figure 1) having an outlet, at 32, (See annotated Figure 1, below) and being configured to vaporize a liquid (Paragraphs [0020], [0021]); an airflow passage extending form the outlet of the vaporizer and being configured to convey vapor to an outlet, 36 (Paragraphs [0021]-[0023]); a hot air channel configured to direct heated air towards the outlet of the vaporizer element (See annotated Figure 1, below) and a dilution air channel, 42, configured to direct ambient air into the device and to mix the ambient air with the vapor conveyed into the airflow passage (Paragraphs [0029]-[0031]).
[AltContent: textbox (Ambient air inlet that mixed with vapor in the airflow passage)][AltContent: arrow][AltContent: textbox (Airflow passage)][AltContent: arrow][AltContent: textbox (Hot air channel being the inlet to the vaporizer and the vaporizer area included, which heats the air to vaporize the liquid)][AltContent: ][AltContent: textbox (Vaporizer outlet being upper most surface of heating element and wick)][AltContent: arrow]
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With respect to claim 2, BORKOVEC et al. discloses that the vaporization element is arranged across the cylindrical duct (Paragraphs [0019]—[0020]). Thus, the hot air channel (e.g., the duct leading to and including the area in which the vaporizer is located) is concentrically arranged around the outlet of the vaporization element (See annotated figure 1, above).
With respect to claim 4, BORKOVEC et al. discloses a heater module, 12, and an aerosol module, 14, that are connected together (Paragraphs [0028] and [0013]).
With respect to claim 5, BORKOVEC et al. discloses that the heater module and the aerosol module are connected by a connection element (Paragraph [0014]).
With respect to claim 6, the various seconds of the duct, 32, represent the claimed aerosol forming chamber and a dilution chamber.
[AltContent: textbox (Heated air introduced into the aerosol chamber)][AltContent: oval][AltContent: arrow][AltContent: arrow][AltContent: textbox (Ambient air from dilution channel introduced into dilution chamber)][AltContent: textbox (Dilution chamber)][AltContent: arrow][AltContent: oval][AltContent: ][AltContent: textbox (Downstream end of aerosol forming module)][AltContent: textbox (Upstream end of aerosol forming module)][AltContent: ][AltContent: textbox (Aerosol forming chamber)][AltContent: arrow]
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With respect to claim 7, the aerosol forming chamber is adjacent the upstream end of the aerosol module and the dilution chamber is downstream of the from the aerosol chamber (See annotated figure 1, above).
With respect to claim 8, the heated air is introduced into the aerosol forming chamber and the ambient air is introduced into the dilution chamber (See annotated figure 1, above).
With respect to claim 14, the aerosol forming chamber is formed by the duct, 32, which is formed by the cylindrical inner surface of the reservoir, 34 (Paragraph [0020]). Thus, the inner volume defines the aerosol forming chamber.
With respect to claim 15, the air channels are defined between an outer surface of the tube and an inner wall of the housing
[AltContent: textbox (Air channel between said surfaces)][AltContent: arc][AltContent: textbox (Area between inner surface of housing and outer surface of tube)][AltContent: connector][AltContent: connector][AltContent: textbox (Channel exists between inner surface of housing and outer surface of tube)][AltContent: ]
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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.
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Claim(s) 3, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over BORKOVEC et al. (US 2018/0242637) in view of WENSLEY et al. (US 2014/0144429).
With respect to claim 3, BORKOVEC et al. does not explicitly disclose the claimed capillary tube and heater element. WENSLEY et al. discloses an aerosol delivery device (Paragraph [0075]). The liquid is transported from the reservoir to the vaporizing chamber by a capillary tube, 2206, having an inlet and outlet, and is in thermal contact with a heater element, 2202, and allows for air to flow between the coils and carry away the vaporized material (Paragraph [0157]). It would have been obvious to one having ordinary skill in the art to provide the capillary tube in thermal contact with the heater of WENSLEY et al. for the heater and wick of BORKOVEC et al. so that air can flow between the coils and carry away the vaporized material.
With respect to claim 9, given that the hot air channel is around the heater (BORKOVEC et al.; Paragraph [0019]), it is necessarily in thermal contact with the heater.
With respect to claim 10, BORKOVEC et al. discloses that the tube is centrally arranged and the hot air channel is arranged radially outward from the heater element (Paragraph [0019]).
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Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over BORKOVEC et al. (US 2018/0242637) in view of WENSLEY et al. (US 2014/0144429) as applied to claims 3, 9 and 10 above, and further in view of LIU (US 2016/0270442).
With respect to claims 11 and 12, modified BORKOVEC et al. does not explicitly disclose a pinhole inlet in the connection element. LIU discloses small inlets (e.g., pinhole inlet) within the connection, and around the circumference thereof, to provide the inlet air to the vaporizer (Paragraphs [0009], [0011], [0041] and [0044]) in order to reduce noise (Paragraph [0027]). The inlets are also concentrically arranged around the vaporizer unit, 2 (Figure 3). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide pinhole inlets around the circumference of the connector, and vaporizer, of modified BORKOVEC et al., as taught by LIU, so that less noise is produced when inhaling.
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Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over BORKOVEC et al. (US 2018/0242637) in view of LIU (US 2017/0119057).
With respect to claim 13, BORKOVEC et al. does not explicitly disclose that the hot air channel in the aerosol module is heated by an external heater.
LIU discloses an electronic cigarette (Abstract). The air inlet channels, prior to entering the vaporizer, is heated by a lamp (e.g., external heater) so that the smoke may be preventing from condensing (Paragraphs [0043] and [0058]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide an external heater to the inlet of modified BORKOVEC et al., as taught by LIU so that heated air can be supplied to the vaporizer member and prevent condensing of the vapor.
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Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over BORKOVEC et al. (US 2018/0242637) in view of PANDYA et al. (US 2017/0157341).
With respect to claims 16 and 17¸ BORKOVEC et al. discloses a heater module, 12, and an aerosol module, 14, that are connected together (Paragraphs [0028] and [0013]).
As seen in the rejection of claim 6, the various seconds of the duct, 32, represent the claimed aerosol forming chamber and a dilution chamber.
In the event that the various “chambers” require inherent structural features separate form those listed already, and as Applicant argues, PANDYA et al. discloses that the vaporizer comprise separate and distinct chambers, 15 and 16; heated air is provided, at 35, and the heated vapor mixes with cooler vapor at a mixing chamber, at A (Paragraph [0123]; Figure 4). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide separate and distinct chambers for the vaporization chamber and mixing chamber in BORKOVEC et al. so that the desired mix of warm vapor can be obtained. Moreover, the ambient air (through channel 42) of BORKOVEC et al. also mixing into the mixing chamber provides the desired diluted mixture.
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 ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745