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 Amendment
Applicant’s arguments, see Arguments/Remarks, filed 1-2-2026, with respect to the Objection to the Drawings have been fully considered and are persuasive. The Objection of the drawings has been withdrawn.
The office action is in response to Applicant’s Election/Restriction filed 7-8-2025.
Claims 1-7, 9-10, and 14-15 are presently examined.
Claim 1 and 11 are currently amended.
Claims 14 and 15 are new.
Claim Rejections - 35 USC § 112
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Specifically claim 9 requires the tool is configured to fail as a result of the tool being removed from the closure means. However, there are no structural requirements for the tool to be configured to fail as a result of the tool being removed from the closure means in the claim or the specification. Therefore, the limitation the tool is configured to fail as a result of the tool being removed from the closure means is interpreted to be non-limiting.
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.
The term “closure means” is described in the instant specification as being provided for preventing access to the first opening (see instant specification page 17 lines 17-21) and/or for providing access to the first opening (see instant specification page 18 line 9), therefore for the purposes of compact prosecution the claim limitation “closure means” is being interpreted to include any part that can be configured for preventing (in a first position) and providing (in a second position) access to the opening and equivalents thereof, as set forth in the specification (instant spec page 18), and can include a fastening mechanism, cap, sliding member, or cover which is consistent with the instant specification on page 20 last paragraph. For example, see also instant FIG 3B, closure means 100.
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: fastening mechanism in claim 15 and 29, the instant specification explains the fastening mechanism is a part that is used to affix the closure means in place, see FIG 3B and instant specification page 17 last paragraph and page 18, first paragraph. Therefore, the claim limitation “fastening mechanism” is interpreted to include any part that is capable of being configured to affix the closure means in place.
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.
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.
Claims 1-3, 9, 10, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gerkin (US20150257441A1) in view of Monsees (US 20160345631 A1).
Regarding Claim 1, Gerkin discloses an aerosol provision system comprising
a refillable chamber for nicotine material (refill cartridge [0029]), the refillable chamber comprising
an opening for insertion of nicotine material into the refillable chamber (the first end 106 defines an aperture 112 through which access is provided to the chamber 110 which is an opening for insertion of nicotine material into the refillable container [0030], see FIG 2)),
a closure means for preventing access to the opening (intended use) wherein the closure means is movable from a first position in which access to the opening is prevented (See e.g., FIG 10, plug 114 is in a first attached position in which access can be prevented to the opening), and
a second position in which access to the opening is possible (See FIG 11, plug 114 is in detached position in which access to the opening is possible) wherein
the nicotine provision system is configured such that movement of the closure means between the first position and the second position requires use of a tool (e.g., tool 122, see [0034] and FIG 3, the tool 122 is configured to engage with the closure means to allow the closure means to be moved from the first attached position to the second detached position e.g., to remove and engage the plug 114, see FIG 10-13 and [0041] which describes the removal of the plug 114 using the tool 122), wherein
the closure means is located in a recess from (in) the nicotine delivery system and the tool is configured to be inserted inside the recess for moving the closure means between the first and second positions. (e.g., tool 122, see FIG 10, and [0034] where the tool is inserted into the plug which is a recess from the nicotine delivery system, the tool is inserted and is therefore configured to be inserted into the recess for moving the closure means between the first and second positions, e.g., compare FIG 10 to FIG 11 where the closure means is moved between the first and second positions).
However, Gerkin fails to explicitly disclose the closure means is located within the recess from the nicotine delivery system (within is being interpreted as flush or recessed)
Gerkin fails to explicitly disclose the tool can be configured to be inserted inside the recess (intended use) to reach the closure means for moving the closure means between a first and second position.
However, Monsees teaches an atomizing system with a closure that can be configured for providing and preventing access to a compartment (intended use) and teaches the closure is preferably found within a recessed region of the device [0161]. Monsees teaches an aerosol generating device and teaches closures such as lids or caps should be recessed entirely into the body of the device in order to prevent inadvertent removal of the lid in the users pocket or to prevent accidental opening [0161]. Therefore, it would be obvious to a person of ordinary skill in the art to modify the closure means of Gerkin to be recessed and located inside of the device of Monsees to prevent inadvertent removal of the lid or to prevent accidental opening [0161].
Additionally modified Gerkin with the recessed closure means would require the tool configured to be inserted inside of the recess to reach the closure means for removing the closure means between a first and a second position.
Regarding Claim 2, modified Gerkin teaches the claim limitations as set forth above. Additionally, Gerkin teaches a system that includes a compartment (package) for storing the tool, wherein the tool is removable from the compartment (see FIG 14 and [0043] a plurality of tools may be stored together in the compartment as illustrated, the tools are removable from the compartment, to be used to open the closure means covering the refillable chamber as shown in FIGs 10-13).
Regarding Claim 3, modified Gerkin teaches the claim limitations as set forth above. Additionally, Gerkin discloses a cover for covering the compartment when the compartment is storing the tool when the tool is not in use (e.g., the packaging compartment illustrated in FIG 14 for storing the tool when not in use, the package in FIG 14 is clearly illustrated as sealed/closed (a cover).
Regarding Claim 9, modified Gerkin teaches all of the claim limitations as set forth above.
Additionally, Gerkin teaches the tool is configured to be removed from the closure means after the tool has been utilized to move the closure means back from the second position to the first position (See FIGs 10-13, note position of closure as closure is moved from the first attached position or closed position in FIG 10 to the open second position in FIG 12, see also FIG 11 and 13 which illustrate varying degrees of the closure being open), and wherein
the tool is configured to fail as a result of the tool being removed from the closure means (e.g., “configured to fail “does not have a clear structural requirement and is therefore interpreted as not limiting, see 112b above).
Regarding Claim 10, modified Gerkin teaches all of the claim limitations as set forth above.
Additionally, Gerkin teaches the closure means comprises a sliding member (see Gerkin annotated FIG 19 below, e.g., the plug slides) which is slidable between a closed position in which access to the first opening is prevented and open position in which access to the opening is possible (FIGs 11-13),
the sliding member is configured to require the use of the tool to slide the sliding member between the open position and the closed position (see FIG.10 – FIG 12, the sliding member is configured to require the use of the tool to slide the sliding member between the open position and the closed position)
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Regarding Claim 14, modified Gerkin teaches the claim limitations as set forth above. Additionally, Monsees teaches the closure means does not project (is recessed entirely into the body of the device [0161]) from the recess in the first position. E.g., an ordinary artisan would appreciate that the closure as modified by Monsees does not project from the recess in the first position [0161].
Regarding Claim 15, modified Gerkin teaches the claim limitations as set forth above. Additionally, modified Gerkin teaches the closure means is located within the recess from the nicotine delivery system in both the first position and the second position. E.g., Monsees [0161] teaches the closure can be hinged or swiveled up when the closure means is located within the recess in the first and second position. Thus, the closure means can be in the recess in both the first position and second position when the tool of Gerkin is inserted to pivot the closure means between the first and second positions.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gerkin (US20150257441A1) and Monsees (US 20160345631 A1) as applied to claim 3 above, and further in view of Fisher (US20080309458A1).
Regarding Claim 4, Gerkin teaches the claim limitations as set forth above. As explained above Gerkin discloses a compartment for storing the tool when the tool is not in use (e.g., see FIG 14). However, Gerkin is silent regarding a lock for preventing access to the compartment.
However, Fisher teaches an electronic lock box with a compartment similar to the compartment of Gerkin in that it’s a compartment for storing closure means and additionally teaches a lock for preventing access to the compartment (See FIG 8 and [0055]). Fisher also teaches that its useful to issue an electronic key for accessing the compartment and for security of the keys because the access to the device can be changed electronically which makes it more cost effective by providing electronic access to the compartment holding physical keys (see [0089] – [0092]). It would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to store the compartment of Gerkin inside of the electronic lock box of Fisher in order to increase security of the keys and to be able to provide electronic access to the compartment holding the keys.
Regarding Claim 5, modified Gerkin teaches all of the claim limitations as set forth above. Additionally, Fisher teaches the lock comprises a physical lock. (see [0055] and FIG 8)
Regarding Claim 6, modified Gerkin teaches all of the claim limitations as set forth above. Additionally, Fisher teaches the lock comprises an electronic lock. ([0035] Fig 8 is a perspective view of an electronic lock)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gerkin (US20150257441A1) in view of Monsees (US 20160345631 A1) as applied to claim 1, and additionally as evidenced by Hodgson (US8820521B2)
Regarding Claim 7, modified Gerkin teaches all of the claim limitations as set forth above. Although Gerkin does not explicitly disclose at least one of the tool or the closure means is configured to be single-use, single use in general is well known as being clean and hygienic as evidenced by Hodgson. (e.g,. throwing the tool away after use)
For example, Hodgson discloses a single use system keeps the contents of the container hygienic (column 4 line 14), (see also column 9 lines 10-11).
Therefore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the closure means of Gerkin to have a single use, as single use systems are well known in the art to be more hygienic as evidenced by Hodgson.
Making the closure means of Gerkin single use would be predictable for a person having ordinary skill in the art before the effective filing date of the claimed invention for predictable use such as safety or hygienic, and this merely involves applying suitable characteristics known in the art with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 1-2-2026 regarding the 102(a)(1) Rejection have been fully considered and are found persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection has been made in view of Gerkin (US20150257441A1) and Monsees (US 20160345631 A1), as set forth above in claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 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 on 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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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
Prosecution Insights