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
The amendments entered on 7/22/2026 have been accepted. Claims 1 and 12-13 are amended. Claim 5 is canceled. Claims 1-4, 6-14 are pending. Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 has an inadvertent line break between lines 3 and 4 of the claim.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-10 are 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.
Each of dependent claims 6-10 claim dependency to claim 5 which has been canceled. As such, it is not clear what claim these dependent claims are referring to, such that the metes and bounds of the claims cannot be determined. Claims 6-10 will be examined such their dependency is tied to claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As claim 1 now positively recites the flavour element received in the aperture, claim 6 contains no unique limitations. The limitations of the flavour element protruding beyond the first opening and protruding beyond the second opening are present in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2, 4-14 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US2015/0351456A1, of record) and in view of Ivey (US2014/0290650A1, of record).
Regarding claim 1, Johnson discloses a mouthpiece (“41” as in Fig. 5A) for an apparatus for generating an inhalable medium (the electronic cigarette “60” as in Fig. 5 is for generating tobacco smoke [0043]),
the mouthpiece defining an aperture extending from a first opening at a mouth end of the mouthpiece to a second opening at an opposing, apparatus end of the mouthpiece (the rightmost portion of “41” which is an opening “38” of the mouthpiece may be considered the first opening. An innermost portion of “41” may be considered any portion of “41” which is located to the left of the first opening, as no specific limitations/structure is required of this second opening, such that it may be considered the portion of “41” located around the numbers “67” in Fig. 5a, for example. The aperture would thus be considered to be the inner portions of “41” which run between these openings),
the mouthpiece being arranged to receive in the aperture a flavor element for imparting a flavor to a flow of at least one of a vapor and an aerosol that passes through the mouthpiece in use, and the mouthpiece comprising the flavor element in the aperture (the mouthpiece may include a replaceable cartridge “62” which is inserted into the mouthpiece [0043], where the cartridge “62” may include flavoring agents to provide the user with nicotine and smoke when the user draws upon the mouthpiece [0044]. Therefore the aerosol/vapor from the arrow A leaving the main atomizer would then pass through the element “62” before leaving the device),
such that the flavor element protrudes beyond a second opening for contact with a component of said apparatus (Johnson has its flavor element 62 extend longitudinally inwards, as in Fig. 5A. As the mouthpiece second opening may be considered to be around the numbers “67” as in Fig. 5a, it would reasonably be considered from Fig. 5A that the element “62” protrudes beyond this opening of the mouthpiece and contacts the apparatus (such as at 29’ in Fig. 5A or at the inner surface of “65”). Additionally, it is noted that the apparatus is not specifically claimed, as the claims are tied to “a mouthpiece”, such that the flavor element contacting a component of an apparatus would merely be an intended use of the mouthpiece that does not specifically limit the structure of said mouthpiece).
Johnson does not explicitly show the cartridge “62” protruding beyond the first opening into the users mouth. However, it is well known within the art for flavor elements/cartridges to extend through an outer opening of the mouthpiece. Ivey, for example, discloses a vapor dispenser system [title], that uses vapor-producing material to expel vapor from the tube for inhalation [abstract], such that Ivey is clearly of similar subject matter and pertinent to the subject at hand. Ivey teaches that a flavor tube “116” extends out of the housing [see Fig. 1], wherein it contains a hole “118” which the vapor flows out of [0046]. The flavor tube “116” is able to be resiliently received and releasably frictionally retained in a collar [0046-0047]. One of ordinary skill in the art would have found it obvious to modify the flavor element of Johnson so as to protrude out of the mouthpiece of the device as suggested by Ivey. One would have been motivated so as to allow for the tubes to be easily and quickly manually removed and replaced with another flavor and so as to replace a depleted flavor tube [Ivey, 0046-0047]. In such a modification, the flavor element would be reasonably considered to protrude through the first opening (so as to be easily removed and changed) as suggested by Ivey and protruding through an inner second opening as suggested by Johnson’s inner portion’s of Fig. 5.
Regarding claim 2, modified Johnson makes obvious the apparatus end of the mouthpiece is arranged to be releasably connectable to said apparatus (the mouthpiece is removably connectable [0037]).
Regarding claim 4, modified Johnson makes obvious the mouthpiece is arranged to allow said flavor elements to be removed or replaced in the aperture (the cartridge “62” of Johnson may be removable from the aperture [0043-0044]).
Regarding claim 6, modified Johnson makes obvious the flavor element protruding beyond the first and second openings (when modified by Ivey the flavor element would protrude beyond the mouthpiece from a first opening, and Johnson already suggests the element “62” protruding beyond a second opening which may be considered to be any inner portion of the mouthpiece towards the apparatus side as in Fig. 5a).
Regarding claim 7, modified Johnson makes obvious wherein a cross-section of the flavor element matches a cross section of the aperture (as in Fig. 5 of Johnson, the cartridge and aperture cross-sections are clearly substantially equal as the cartridge is snugly implanted therein).
Regarding claim 8, modified Johnson makes obvious the flavor element is one or more of certain qualities (the cartridge may be cylindrical [Fig. 5, 0045]).
Regarding claim 9, modified Johnson makes obvious the flavor element comprises tobacco (the cartridge may comprise nicotine and other flavoring elements [0044]).
Regarding claim 10, modified Johnson makes obvious the flavor element defines a flow path for an aerosol or vapor to run from one end to another (the flavor element “62” as inserted into Fig. 5 of Johnson would necessarily required the aerosol/vapor as shown in arrow “A” to travel across the flavor element form one end to the other so as to exit the mouthpiece and enter the users mouth).
Regarding claim 11, modified Johnson makes obvious an apparatus with the mouthpiece of claim 1 (the apparatus for generating an aerosol is shown in Fig. 5 of Johnson which shows the electronic cigarette [0043}]. As above in claim 1, Johnson as modified by Ivey suggests a flavor element protruding from two openings of the mouthpiece, although it is noted that this claim does not explicitly require the flavor element present in the apparatus).
Regarding claim 12, modified Johnson makes obvious an apparatus wherein the flavor element is received in the aperture of the mouthpiece (the flavor element is considered “62” which is inserted into the device “60” as in Fig. 5 of Johnson. And as modified by Ivey the resultant combination would have the element “62” protruding past two openings under the broadest reasonable interpretation of the claimed limitations),
a container for holding a liquid (the device includes, in addition to the flavor element “62”, a replaceable PG/atomizer cartridge that is located upstream of the flavor element [Fig. 5a]. This element works as conventionally, wherein aerosol is produced from liquid propylene glycol/glycerin [0043] which then has the resultant aerosol leave towards the right of Fig. 5a. The container for holding the liquid therefore would be located inside of the replaceable pg/atomizer cartridge [0043+, Fig. 5]),
a heater for volatizing liquid in the container to generate flow of at least a vapor or aerosol and the flow passes through the flavor element (as above, the atomizer cartridge in the middle of the device of Fig. 5A would necessarily have a heater so as to atomize the liquid to generate the vapor [0043-0044]. The outlet from the first atomizer cartridge follows the arrow “A” in Fig. 5A, such that it then travels to the right and passes through the replaceable cartridge “62” which is the flavor element [0043-0044] to where the vapor is then inhaled by a user).
Regarding claim 13, modified Johnson makes obvious an apparatus wherein the flavor elements comprise one or more constituents and in use at least one of the vapor/aerosol passes through the flavor elements to entrain constituents of the flow (the elements of the cartridge “62” includes nicotine and flavoring elements [0044]. These elements mix with the elements from the other replaceable cartridges “64” [0044]).
Regarding claim 14, modified Johnson makes obvious an apparatus wherein the container for holding liquid comprises a recess into which the element is received (under the broadest reasonable interpretation thereof, the “recess” of the container of liquid around the cartridges “64” may be considered all of the portions to the right of “64” in Fig. 5A. As there is no liquid container in these portions of the apparatus, this may be considered to be recessed compared to the location of the liquid/atomizer around “64” in Fig. 5A. It being noted that the claim does not specifically require for the liquid container to comprise a recess into which the element is received wherein the recess is located on both radial ends of the innermost inserted portion of the flavor element (for example, as shown in Applicant’s Fig. 4b)).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US2015/0351456A1, of record) and in view of Ivey (US2014/0290650A1, of record), as applied to claim 1 above, and further in view of Li (EP3020292, of record).
Regarding claim 3, Johnson does not explicitly show a chamfer at the second opening for contacting the apparatus. However, it is known within the art to have angled portions/chamfers on connecting portions so as to improve the structure of the device. Li, for example, discloses a mouthpiece of an aerosol generating device (see Fig. 1), which has several angled/chamfered portions on the inner portions of the mouthpiece “102” which connect with the rest of the surrounding device [see Fig. 1]. One of ordinary skill in the art would have found it obvious to modify the mouthpiece of Johnson so as to have chamfers. One would have been motivated so as to ensure proper sealing of the device [Li, 0010+].
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Weigensberg (US2014/0166029A1, of record).
Regarding claim 1, Weigensberg discloses a mouthpiece (outer portion of the cartomizer “113” as in Figs. 6-7, where it is located in the rightmost portion as in Fig. 5) for an apparatus for generating an inhalable medium (the overall device of the cartomizer generates an aerosol mist as a replacement for cigarette smoke [0003]),
the mouthpiece defining an aperture extending from a first opening at a mouth end of the mouthpiece to a second opening at an opposing, apparatus end of the mouthpiece (as in Fig. 7, the outermost portion of the cartomizer, and thus also the mouthpiece, may be made to have a flavor booster “702” extending in the aperture of the mouthpiece. In this example, the first opening of the mouthpiece would be the rightmost opening of the cartomizer, and the second opening would be located partially inwards from the outermost portion of the cartomizer, wherein the flavor booster is clearly inserted in this portion. The “mouthpiece” is shown in greater detail as a longitudinal outer end of the cartomizer as in Fig. 5),
the mouthpiece being arranged to receive in the aperture a flavor element for imparting a flavor to a flow of at least one of a vapor and an aerosol that passes through the mouthpiece in use (as in Fig. 7, the flavor element “702” may be inserted into the mouthpiece thereof. The aerosol from the cartomizer mixes with flavoring agents of the flavor booster “702” so as to change the olfactory experience and taste [0036]),
such that the flavor element protrudes beyond a second opening for contact with a component of said apparatus (it is noted that Weigensberg suggests a flavor element that protrudes beyond both openings. The flavor booster may extend past the end of the cartomizer (and thus what may be considered the mouthpiece) as shown in Fig. 6. This alternative embodiment is utilized so as to have the flavor booster as the point of contact with the smoker [0034]. Having the flavor booster arranged as such further enhances the flavor as experienced by the smoker and with greater intensity [0034]. The flavor booster, as in Fig. 7, may be made to extend inwards into the cartomizer beyond the opening [Fig. 7]. The flavor booster’s length may be increased so as to vary the effect of the flavoring agents [0036], such that it would have been obvious to extend the flavor booster beyond what is shown in Fig. 7 so as to maximize the flavoring effects thereof. One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to combine the flavor booster dimensionality of Weigensberg’s Figs. 6-7 so as to have the flavor booster extend beyond an outer portion of the cartomizer and to have an extended length inserting into the cartomizer. One would have been motivated to have the flavor booster protrude beyond the end of the cartomizer so as to enhance the flavor and intensity of the flavor [0034], and one would have found it obvious to increase the longitudinal length of the flavor booster so as to have greater control of the flavoring so as to achieve varying effects of the agents [0036]. As such, a combination of these flavor boosting dimensionality would have been obvious for a person of ordinary skill in the art, and in such a combination, the flavor booster would have clearly extended beyond both a first opening and a second opening thereof).
Regarding claim 2, Weigensberg suggests the mouthpiece is releasably connectable to said apparatus (Weigensberg suggests that the mouthpiece may be removably connectable [0024, 0037-0040, Claim 11]).
Regarding claim 3, Weigensberg suggests that the mouthpiece has a chamfer at the second opening for contacting with said component of said apparatus (Fig. 7 of Weigensberg does not explicitly show a chamfer of the mouthpiece. Figs. 8-10 show a mouthpiece placed on a cartomizer, wherein in Fig. 9 an angled recess “906” is formed on the connecting portions thereof. Under the broadest reasonable interpretation, these angled portions may be considered a “chamfer” which is utilized between connecting elements. One would have found it obvious to apply this type of angled design to the mouthpiece of Figs. 7-6 as used in the rejection of claim 1 above. One would have found it obvious to apply as this structure enables fast and easy mounting/dismounting, which is flexible but firm [0039]. And when applied, the chamfer on the mouthpiece would clearly contact a component of the apparatus).
Regarding claim 4, Weigensberg suggests that the mouthpiece is arranged to allow flavor element to be removed from and/or replaced (the flavor booster “702” may be unlocked to permit replacement [0036]).
Regarding claim 6, Weigensberg suggests that the flavor element protrudes beyond the first and second opening (Weigensberg, as modified in the rejection of claim 1 above, would have the flavor booster extending beyond the cartomizer as in Fig. 6 and would extend into the cartomizer an extended length as in Fig. 7, such that it is reasonably suggested that the flavor element protrudes beyond both openings).
Regarding claim 7, Weigensberg suggests that a cross section of the flavor element matches a cross section of the aperture (as in the cross-section shown in Fig. 7 for example, the flavor element would clearly match the cross section of the aperture as that is where the flavor element is inserted into).
Regarding claim 8, Weigensberg suggests that the flavor element is one or more of different properties (as in Fig. 7, the flavor booster is clearly in a cylindrical shape. And further, Weigensberg suggests that the flavor boosters may be porous [0031].
Regarding claim 9, Weigensberg suggests that the flavor element is or comprises tobacco (flavor may include tobacco fragrance, added nicotine, etc. [0003]).
Regarding claim 10, Weigensberg suggests that the flavor element is arranged to define a flow path for an aerosol/vapor to run from one end to the other (the flavor booster as in Fig. 7 may be embedded at least partially inside the cartomizer. As the air exits to the right of the figure, also as shown in the cross-section of Fig. 5 of a cartomizer, the vapor/aerosol would necessarily be running from one to an other end of the flavor booster in operation of the device).
Regarding claim 11, Weigensberg suggests that the apparatus comprising the mouthpiece of claim 1 (the apparatus for generating an aerosol is shown in Fig. 7 of Weigensberg which is an electronic cigarette comprising a battery, cartomizer, and the flavor booster. As above in claim 1, Weigensberg as modified by Weigensberg suggests a flavor element protruding from two openings of the mouthpiece (that being the rightmost portion of the mouthpiece as the flavor booster may extend out of the cartomizer, and an inner portion of the mouthpiece as the flavor booster may extend lengthwise into the cartomizer however much as necessary for advantageous flavoring properties to be realized), although it is noted that this claim does not explicitly require the flavor element present in the apparatus).
Regarding claim 12, modified Weigensberg makes obvious an apparatus wherein the flavor element is received in the aperture of the mouthpiece (the flavor element is considered “702” which is inserted into the device as in Fig. 7 of Weigensberg. And as modified by Weigensberg the resultant combination would have the flavor element “702” protruding past two openings under the broadest reasonable interpretation of the claimed limitations),
a container for holding a liquid (the device as in Fig. 7 includes the cartomizer. The cartomizer is shown in greater detail in Fig. 1 and Fig. 5. There is included in the cartomizer e-liquid [0022], such that there is necessarily a container for holding said liquid inside the cartomizer for its operation),
a heater for volatizing liquid in the container to generate flow of at least a vapor or aerosol and the flow passes through the flavor element (as above, the cartomizer in the middle of the device of Fig. 7 would necessarily have a heating element “111” so as to atomize the e-liquid to form the smoke/aerosol/vapor to be inhaled [Fig. 1, 0022-0023]. The atomizer “112” in the cartomizer may have a wick such that the liquid is absorbed by the wick and then heated to form the vapor [0022-0023]. As in Fig. 5 and 7, the outlet from the cartomizer/atomizer moves along the right side of the cartomizer and necessarily passes through the flavor element before entering the users lips).
Regarding claim 13, modified Weigensberg makes obvious an apparatus wherein the flavor elements comprise one or more constituents and in use at least one of the vapor/aerosol passes through the flavor elements to entrain constituents of the flow (the flavor elements may include tobacco fragrance, menthol taste, or other flavors [0003, 0016]. The flavor booster is located adjacent to the cartomizer such that the flavorizer provides flavor the vapor from the e-cig [0024-0027], such that it would clearly entrain constituents of the flow).
Regarding claim 14, modified Weigensberg makes obvious an apparatus wherein the container for holding liquid comprises a recess into which the element is received (under the broadest reasonable interpretation thereof, the “recess” of the container of liquid around the cartomizer may be considered any/all of the portions to the right of the atomizer of Fig. 5/7. As there is no liquid container in these portions of the apparatus, this may be considered to be recessed compared to the location of the liquid/atomizer. It being noted that the claim does not specifically require for the liquid container to comprise a recess into which the element is received wherein the recess is located on both radial ends of the innermost inserted portion of the flavor element (for example, as shown in Applicant’s Fig. 4b)).
Response to Arguments
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant argues on pgs. 7-9 that the rejection in view of Johnson/Ivey that the second opening could not be around the number 67 because this is a reservoir which is a part of the cartridge and that the flavor element doesn’t contact the apparatus. Applicant agues that the modification in view of Ivey would not work because the cartridge of Johnson is too large and because Ivey doesn’t disclose the flavor element being received in an aperture and protruding beyond a second opening. Applicant argues that Ivey is used for a different purpose, relating to cocktails instead of e-cigarettes, and that speed is not that important for e-cigarettes.
The Examiner respectfully disagrees. Applicant’ misunderstands the rejection in question. As there are no specific structural requirements regarding the second opening, any innermost portion of “41” may be considered to be the second opening which is on an opposite apparatus side of the mouthpiece. To indicate possible locations of what may be considered this opening, the numbers “67” are indicated as a possible location which is located on an apparatus side compared to a first opening located on the mouth end. Any location which is located on an apparatus side of the mouthpiece may be considered to be this second opening, under the broadest reasonable interpretation of the claims, including the vertical slice at “67”, or at the number “62” for example. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As such, the flavor element would be considered to protrude inwards beyond what is considered to be this second opening and to contact the apparatus, such as at the location of 29’ or the inner surface of “65” which contacts the main apparatus body as in Fig. 5A.
Additionally, it is noted that the claim is tied to “a mouthpiece for an apparatus”, such that details of the apparatus are merely considered to be an intended use that does not structurally limit the mouthpiece in question. As the claims are tied to a mouthpiece, the limitation requiring for a flavor element to contact a component of said apparatus are considered to be an intended use of the mouthpiece/flavor element which would have been obvious given the variety of apparatus types. If applicant wishes to specifically require this limitation, the claims must be tied to the apparatus and not the mouthpiece specifically which does not include features of the apparatus.
Regarding the arguments of the cartridge being much too large to be received within the opening 38 of Johnson, these arguments are not found convincing. Johnson in no way limits the size of its opening “38” to what is depicted in Figs. 5A. Fig. 5A is a single view showing one possibility, but Johnson provides no discussion regarding the size of this hole (no details regarding size/opening nor compared to the size of the cartridge) such that it is not reasonable to consider this parameter as one that is required to achieve the effects of Johnson. Applicant is attempting to overly limit the reference of Johnson beyond what Johnson actually suggests/limits so as to restrict possible modifications thereof, without a basis in Johnson. The modification to have a different opening so as to allow the flavor element to be received from this aperture would have been obvious in view of Ivey, and without any teachings from Johnson this cannot be considered teaching away. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123.
Regarding the arguments of Ivey being tied to a separate field of use, the Examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). While Ivey does have an intended use of cocktails, Ivey also is also more broadly tied to “vapor dispensing system for dispensing flavored vapors”, such that the flavor elements in vapor forms that Ivey deals with would be of high interest to a person of ordinary skill in the art dealing with aerosol-generating apparatuses with flavor elements in the vapor form. While Applicant argues that speed is not as big of a factor for e-cigarettes compared to cocktails, this does not change that fact that speed would still be considered a very important factor (among others) that the user and manufacturer alike would wish to optimize to provide the best performance. Allowing a simple and speedy insertion/removal of a flavor element through the mouthpiece opening would clearly be an obvious modification of Johnson in view of Ivey.
Applicant argues on pgs. 10-11 of their remarks that, in regards to the rejections in view of Weigensberg, that Figs. 6-7 are highly schematic and that Fig. 5 is a more representative view. Applicant argues that there is no clear and unambiguous disclosure that the flavor booster protrudes beyond the first opening in Fig. 6, and that Fig. 7 does not clearly disclose the flavor booster located within an aperture of the mouthpiece.
The Examiner respectfully disagrees. First, it is noted that Fig. 5 is described as a separate embodiment from that of Figs. 6 or 7 [0033-0036, 0010-0012], such that what is shown/described in a Fig. 5 embodiment would not lead to nonobviousness of a separate embodiment. While some features would clearly be in common given that both embodiments contain a cartomizer for example, where Fig. 6 clearly and unambiguously depicts the flavor booster being disposed as an outer portion of the mouthpiece/apparatus, it is unclear why Applicant argues that one would forgo the teachings of the embodiment of Fig. 6 and instead limit themselves to what is depicted in the separate embodiment of Fig. 5. Applicant is overly limiting the prior art beyond what it would reasonably suggest to the person of ordinary skill in the art. One would not restrict the placement/dimensions of the flavor booster by the depiction in Fig. 5 when Fig. 6 and Fig. 7 provide alternative placements and rationales for having the flavor booster arranged in the specified manner.
The Examiner disagrees with the further arguments regarding Weigensberg. As Applicant admits, Weigensberg specifically shows the flavor booster being depicted protruding outward of an end of the mouthpiece/apparatus [Fig. 6], details that the flavor booster may be fitted or screwed into a proximal end of the cartomizer, and that the lips of the smoker may be the points of contact with the flavor booster [0034]. All of these features clearly teach/suggest to the person of ordinary skill in the art that the flavor booster would extend beyond a first opening of the mouthpiece. If the flavor booster was flush or recessed (as Applicant argues), there would be no contact made with the lips as the lips extend around the end of the smoking article such that it would need to be protruding. Applicant’s interpretation is expressly against the teachings of Weigensberg and is not convincing. And similarly regarding the teachings of Fig. 7 of Weigensberg, it is made quite clear by Weigensberg that the flavor booster may be made to extend inwards into the cartomizer beyond the opening so as to increase the effect of the flavoring agents and maximize the flavoring effects thereof (and that the flavoring booster may be made to have an extended length). With the combination of features as suggested in the rejections of record above, it would have been obvious to have the flavor booster extend beyond a first opening so as to have the booster enhance the taste with greater intensity, and to provide a length moving into the cartomizer as suggested by Fig. 7 in order to vary the effect of the flavoring agents and maximize the effects thereof.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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