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 Submission
Applicant’s submission filed on 2026 August 5 has been entered. Claims 1-2, 4-6, 8-9, 11, 13-22, and 24-25 are pending.
Claim Objections
Claim 13 is objected to because of the following informalities:
Claim 13: “the at least one air” should be “the at least one air inlet”.
Appropriate correction is required.
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.
Claims 1-2, 4-6, 8-9, 11, 13-22, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (US 20190124997 A1) in view of Li (US 20180007966 A1).
Claims 1-2 and 25: Qiu teaches an aerosol provision system (fig. 9 and [74-76]) comprising:
a first reservoir (71) for containing an aerosolizable material (cigarette liquid) for vaporizing;
a vaporizer (50) for vaporizing the aerosolizable material (cigarette liquid) from the first reservoir (71), wherein the vaporizer (50) comprises a heating element (523), and wherein the vaporizer (50) is tubular (fig. 8-9);
a cavity ([72], #340), wherein the cavity (340) is configured to receive vaporized aerosolizable material (fig. 8, arrows show flow of aerosol) from the vaporizer (50);
wherein the cavity (340) is configured to be at least partially heated from vaporized aerosolizable material (arrows) and at least partially heated by the heating element (523) of the vaporizer (50).
Qiu does not explicitly teach that the cavity comprises a second reservoir comprising a flavoring material,
the cavity is configured to accommodate the second reservoir, wherein the cavity is configured to receive a consumable part comprising the second reservoir,
and a consumable part, wherein the consumable part comprises a second reservoir; and/or wherein the flavoring material comprises at least one of tobacco and/or nicotine.
Li teaches an aerosol provision system (fig. 1A-C and [40]) comprising a first reservoir ([47], #23) containing an aerosolizable material (pre-vapor formulation), and a cavity (28) containing a consumable part ([72], #80) comprising a second reservoir (#80 comprises an interior volume #82 that holds a flavoring material #85) comprising a flavoring material (85), such that the second reservoir adds a high amount of flavor to generated aerosol [77-78].
Qiu’s cavity (fig. 8-9, #340) is downstream of a heating element (523), and Li’s cavity (fig. 1a-c, #28) is downstream of a heating element (34) to yield expectation to succeed.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Li’s consumable part comprising a second reservoir comprising a flavoring material to Qiu’s cavity, because doing so would add a high amount of flavor to Qiu’s generated aerosol.
Claim 4: modified Qiu teaches an aerosol provision system according to claim 2, wherein the vaporizer (fig. 9 and [74-76], #50) is tubular (fig. 8-9) and surrounds the cavity (340).
Claim 5: modified Qiu teaches an aerosol provision system according to claim 2, wherein the aerosol provision system comprises a first channel (fig. 8, channel between #340 and #50) between the vaporizer (50) and the cavity (340), wherein the vaporizer (50) is configured to impart vaporized aerosolizable material (aerosol) into the first channel (channel between 340 and 50).
Claim 6: modified Qiu teaches an aerosol provision system according to claim 5, wherein the first channel (fig. 8, channel between #340 and #50) is parallel to the cavity (340) and located outside of the cavity (340).
Claim 8: modified Qiu teaches an aerosol provision system according to claim 5, wherein air (fig. 8, arrows) is configured to flow in a first direction (downward) along the first channel (channel between 340 and 50), and vaporized aerosolizable material (aerosol) from the vaporizer (50) is configured to flow in a second direction (upward) through the cavity (340), wherein the second direction (upward) is opposite to the first direction (downward).
Claim 9: modified Qiu teaches an aerosol provision system according to claim 5, wherein the first channel (fig. 8, channel between #340 and #50) and the cavity (340) are separated by a partitioning member (fig. 9, #34).
Claim 11: modified Qiu teaches an aerosol provision system according to claim 1, wherein the aerosol provision system comprises at least one air inlet (fig. 8, #3361) for delivering air into the aerosol provision system.
Claim 13: modified Qiu teaches an aerosol provision system according to claim 12, wherein the at least one air inlet (fig. 8, #3361) comprises a pair of air inlets (3361) located on opposing side surfaces of the aerosol provision system.
Claim 14: modified Qiu teaches an aerosol provision system according to claim 11, wherein the aerosol provision system further comprises a cap (fig. 9 and [71], #336) which is moveable between a first position (position in which 3321 and 3361 are communicated) in which the at least one air inlet (fig. 8, #3361) is open and a second position (position in which 3321 and 3361 are staggered) in which the at least one air inlet (3361) is blocked.
Claim 15: modified Qiu teaches an aerosol provision system according to claim 14, wherein the cap (fig. 8 and [71], #336) is rotatable between the first position (3321 and 3361 are communicated) and the second position (3321 and 3361 are staggered).
Claim 16: modified Qiu teaches an aerosol provision system according to claim 11, wherein the aerosol provision system comprises a first channel (fig. 8, channel between #340 and #50) between the vaporizer (50) and the cavity (340), wherein the vaporizer (50) is configured to impart vaporized aerosolizable material (aerosol) into the first channel (channel between 340 and 50), further comprising an initial air channel (inclined portion of 330) between the at least one air inlet (3361) and the first channel (channel between 340 and 50), wherein the initial air channel (inclined portion of 330) is inclined with respect to the first channel (channel between 340 and 50) and the at least one air inlet (3361) for changing the direction of air flowing from the at least one air inlet (3361) into the first channel (channel between 340 and 50).
Claim 17: modified Qiu teaches an aerosol provision system according to claim 16, further comprising a retaining member (fig. 9 and [72], #13 and #34), for gripping a consumable part received in the aerosol provision system (#13 and #34 are capable of gripping and surrounding an inserted part), wherein the retaining member (13 and 34) surrounds the cavity (340), and wherein a surface of the retaining member (13 and 34) defines a first surface (fig. 8, inclined surface of #13 and #34) of the initial air channel (inclined portion of 330).
Claim 18: modified Qiu teaches an aerosol provision system according to claim 17, wherein the retaining member (fig. 9, #13 and #34) is annular, and the surface (fig. 8, inclined surface of #13 and #34) of the retaining member (13 and 34) is a conical surface (the inclined surface of 13 and 34 tapers toward a point and thus resembles a cone).
Claim 19: modified Qiu teaches an aerosol provision system according to claim 17, wherein the first channel (fig. 8, channel between #340 and #50) comprises a first end (topmost end of channel between 340 and 50) and second end (bottommost end of channel between 340 and 50) opposite the first end (topmost end of channel between 340 and 50), wherein the first end (topmost end of channel between 340 and 50) of the first channel is located between the retaining member (13 and 34) and the second end (bottommost end of channel between 340 and 50) of the first channel.
Claim 20: modified Qiu teaches an aerosol provision system according to claim 16, wherein the first reservoir (fig. 9, #71) comprises a sealing member ([70], #33 is inserted into and seals an end of #710) for sealing a portion of the first reservoir (71), wherein the sealing member (33) comprises a surface (radially innermost surface of 33) which defines a second surface of the initial air channel (fig. 8, inclined portion of #330).
Claim 21: modified Qiu teaches an aerosol provision system according to claim 1, wherein the vaporizer comprises an aerosolizable material transport element (fig. 9 and [76], liquid guiding member #521) for delivering ([27], the liquid guiding member absorbs cigarette liquid and delivers the cigarette liquid to the atomizing chamber) aerosolizable material (cigarette liquid) from the first reservoir (71) to the heating element (523).
Claim 22: modified Qiu teaches an aerosol provision system according to claim 1, wherein the first reservoir (fig. 9, #71) is cylindrical (fig. 7).
Claim 24: modified Qiu teaches an aerosol provision system according to claim 1, wherein the first reservoir (fig. 9, #71) comprises a transparent or translucent portion ([81], #981 enables a user to observe liquid in #71 which requires that #71 comprise a transparent or translucent portion) for allowing a user to observe a quantity of aerosolizable material (cigarette liquid) inside the first reservoir (71).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-6, 11, 13-15, 21-22, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,969,546 in view of Qiu (US 20190124997 A1).
Claims 1 and 4: ‘546 recites an aerosol provision system (C12, apparatus for generating an inhalable medium) comprising:
a first reservoir (container) for containing an aerosolizable material (liquid) for vaporizing;
a vaporizer (heater) for vaporizing the aerosolizable material (liquid) from the first reservoir (container), wherein the vaporizer (heater) comprises a heating element;
a second reservoir (flavor element’s reservoir) comprising a flavoring material (flavor), wherein the second reservoir (flavor element’s reservoir) is configured to receive vaporized aerosolizable material (aerosol) from the vaporizer (heater);
wherein flavoring material (flavor) from the second reservoir (flavor element’s reservoir) is configured to be at least partially heated (the flavor element is capable of being heated by hot aerosol) from vaporized aerosolizable material (aerosol) from the vaporizer (heater) which flows through the second reservoir (flavor element’s reservoir) and at least partially heated by the heating element of the vaporizer (heater).
‘546 does not recite that the vaporizer is tubular,
and that the vaporizer is tubular and surrounds the cavity.
Qiu teaches an aerosol provision system (fig. 8-9 and [69]) comprising a vaporizer (50) that is tubular and surrounds a cavity (340), such that air and aerosol can mix together in order to avoid aerosol effusing [69].
Specifying that ‘546’s vaporizer is tubular would maintain the vaporizer’s functionality, absent evidence to the contrary. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was an obvious matter of choice absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that ‘546’s vaporizer is tubular and surrounds the cavity as taught by Qiu, because doing so would enable air and aerosol to mix together in order to avoid effusing and would otherwise be a patentably indistinct change in shape.
Claim 2: modified ‘546 teaches an aerosol provision system according to claim 1, further comprising a cavity (C12, aperture) which is configured to accommodate the second reservoir (flavor element’s reservoir), wherein the cavity (aperture) is configured to receive a consumable part (flavor element) comprising the second reservoir (flavor element’s reservoir).
Claim 5: modified ‘546 teaches an aerosol provision system according to claim 2, wherein the aerosol provision system comprises a first channel (C12, second opening) between the vaporizer (heater) and the cavity (aperture), wherein the vaporizer (heater) is configured to impart vaporized aerosolizable material (aerosol) into the first channel (second opening).
Claim 6: modified ‘546 teaches an aerosol provision system according to claim 5, wherein the first channel (C12, second opening) is parallel to (the second opening and the aperture are integral and continuous) the cavity (aperture).
Claim 11: modified ‘546 teaches an aerosol provision system according to claim 1, wherein the aerosol provision system comprises at least one air inlet (C12, a user inhales on the apparatus and the apparatus generates flow of an aerosol which indicates that air enters the apparatus).
Claim 13: modified ‘546 teaches an aerosol provision system according to claim 12.
Modified ‘546 does not explicitly teach that the at least one air inlet comprises a pair of air inlets located on opposing side surfaces of the aerosol provision system.
Qiu teaches an aerosol provision system (fig. 8 and [71]) comprising a pair of air inlets (3361) located on opposing side surfaces of the aerosol provision system.
Duplicating ‘546’s air inlet into a pair of inlets would yield an expected two air inlets through which air can enter the device. See MPEP 2144.04(VI)(B): In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to duplicate ‘546’s air inlet into a pair of air inlets as taught by Qiu, because doing so would be a patentably indistinct duplication of parts.
Claims 14-15: modified ‘546 teaches an aerosol provision system according to claim 11.
Modified ‘546 does not explicitly teach a cap which is moveable between a first position in which the at least one air inlet is open and a second position in which the at least one air inlet is blocked,
wherein the cap is rotatable between the first position and the second position.
Qiu teaches an aerosol provision system (fig. 9 and [71]) comprising a cap (336) which is rotatable between a first position (position in which 3321 and 3361 are communicated) in which the at least one air inlet (fig. 8, #3361) is open and a second position (position in which 3321 and 3361 are staggered) in which the at least one air inlet (3361) is blocked, such that a user can adjust the amount of air flowing into the device.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s cap which is rotatable between a first position in which the at least one air inlet is open and a second position in which the at least one air inlet is blocked, because doing so would enable a user to adjust the amount of air flowing into the device.
Claim 21: modified ‘546 teaches an aerosol provision system according to claim 1.
Modified ‘546 does not explicitly teach an aerosolizable material transport element for delivering aerosolizable material from the first reservoir to the heating element.
Qiu teaches an aerosol provision system (fig. 9 and [76]) comprising an aerosolizable material transport element (521) for delivering aerosolizable material from a first reservoir (71) to a heating element (523), such that the aerosolizable material transport element absorbs aerosolizable material and thereafter delivers aerosolizable material to the heating element [27].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s aerosolizable material transport element to ‘546’s first reservoir and heating element, because doing so would enable aerosolizable material to be absorbed and thereafter delivered to ‘546’s heating element.
Claim 22: modified ‘546 teaches an aerosol provision system according to claim 1.
Modified ‘546 does not explicitly teach that the first reservoir is cylindrical, and/or the second reservoir is cylindrical.
Qiu teaches an aerosol provision system (fig. 9 and [74]) comprising a first reservoir (71) that is cylindrical.
Specifying that ‘546’s first reservoir is cylindrical would maintain the first reservoir’s functionality, absent evidence to the contrary. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was an obvious matter of choice absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that ‘546’s first reservoir is tubular as taught by Qiu, because doing so would be a patentably indistinct change in shape.
Claim 24: modified ‘546 teaches an aerosol provision system according to claim 1.
Modified ‘546 does not explicitly teach that the first reservoir comprises a transparent or translucent portion for allowing a user to observe a quantity of aerosolizable material inside the first reservoir.
Qiu teaches an aerosol provision system (fig. 9 and [81]) comprising a first reservoir (71) comprising a transparent or translucent portion ([81], #981 enables a user to observe liquid in #71 which requires that #71 comprise a transparent or translucent portion), such that a user can observe a quantity of aerosolizable material inside the first reservoir [81].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s transparent or translucent portion to ‘546’s first reservoir, because doing so would enable a user to observe a quantity of aerosolizable material inside the first reservoir.
Claim 25: ‘modified 546 teaches an aerosol provision system according to claim 1, further comprising a consumable part (C12, flavor element), wherein the consumable part (flavor element) comprises the second reservoir (flavor element’s reservoir).
Response to Arguments
Applicant’s arguments of 2026 August 5 have been carefully considered but are not persuasive.
Applicant argues (p. 7, “Li Does Not Disclose the Claimed Second Reservoir”) that Li teaches a flavor insert (Li fig. 1A-C and [72], #80) in which flavor material (85) can be retained, rather than a consumable part comprising a second reservoir. However, a flavor insert in which flavor material can be retained reads on a consumable part (flavor insert) comprising a second reservoir (volume in which flavor material can be reserved/retained). Qiu teaches a first reservoir (Qiu fig. 9 and [74-76], #71) and a cavity (340), and Li teaches a cavity (Li fig. 1A-C and [72], #28) comprising a consumable part (80) comprising a second reservoir (80 reserves and retains 85) for the benefit of adding a high amount of flavor to generated aerosol [Li 77-78], and one of ordinary skill would be motivated to add Li’s consumable part to Qiu’s cavity to achieve the same flavoring benefit.
Applicant argues (p. 8, “Li Does Not Teach Heating…”) that it is “insufficient” to rely on Qiu’s heating element and Li’s flavor-containing structure to establish that a flavor-containing structure positioned in Qiu’s cavity (Qiu fig. 8-9 and [69], #340) would be configured to be at least partially heated by Qiu’s heating element (523). However, Qiu’s heating element (523) surrounds a cavity (340), so one of ordinary skill would know that a nonzero amount of heat from the heating element (523) can reach the cavity (340). Arguing to the contrary is akin to arguing that heat moves from the instant heater (applicant fig. 3 and [48], #22) to a surrounded cavity (102) only because the instant inventors explicitly disclose so. See MPEP 2144.01: “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976). The courts have held that a reference teaching “at least one methylene group attached to the sulfur atom” implies at least one non-methylene group attached to the sulfur atom. See MPEP 2144.03: if a specification is silent on how a certain function is achieved, as the instant specification appears to be with partial heating, then the silence may suggest that finding how to achieve the function is within ordinary skill. Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339, 2020 USPQ2d 10476 (Fed. Cir. 2020). The courts have held that a specification disclosing that user locations and maps are transmitted, without disclosing how the transmissions are done, suggests that one of ordinary skill in the art was more than capable of transmitting by known methods. In the instant case, the instant specification disclosing a cavity at least partially heatable by a heater, without disclosing how the heating is done, suggests that the cavity being partially heatable by the heater is evident to one of ordinary skill, by the same reasoning.
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Applicant argues (p. 9, “The Proposed Combination…”) that Qiu in view of Li does not teach a second reservoir configured to be at least partially heated by a heating element. However, as in the above analysis, Qiu in view of Li does teach a second reservoir (Qiu fig. 8-9, and [69], #340 to which Li fig. 1A-C and [72], #80 is added) configured to be at least partially heated by a heating element (Qiu #523).
Applicant argues (p. 9, “The Office Action Has Not Established a Reason…”) that the examiner’s rationale “does not correspond to the full scope of the claimed modification”. However, the examiner’s rationale does motivate adding Li’s consumable part (Li fig. 1A-C and [72], #80) to Qiu’s cavity (Qiu fig. 8-9 and [69], #340) for Li’s same benefit of adding a high amount of flavor to generated aerosol [Li 77-78]. In doing so, one of ordinary skill would arrive at the full scope of instant claim 1.
Double Patenting: a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. See MPEP 804(I)(B)(1).
Applicant has neither shown patentable distinctness nor filed a terminal disclaimer, so the double patenting rejection is iterated.
Conclusion
THIS ACTION IS MADE FINAL. 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 Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 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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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights