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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
Response to Amendment
Claim 1 is amended. Claims 7 and 8 are cancelled. Claims 1-6 and 9-20 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 112(d) have been fully considered and are persuasive. The rejections of 6/26/2025 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(2) have been fully considered and are persuasive. The rejections of 6/26/2025 are overcome.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “the plunger portion being retractable and configured to slide in the longitudinal direction from the first opening of the collar portion and into the housing to a retracted position through the opposing second opening of the collar portion to push the supply packet towards the second end of the housing” (lines 8-12), which is considered to be a limitation regarding the intended use of the claimed mouthpiece. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a mouthpiece that could push a supply packet towards the end of the housing.
Regarding claim 2, the claim recites the limitation “the plunger portion of the mouthpiece is configured to slide so as to compress the supply packet” (lines 1-2), which is considered to be a limitation regarding the intended use of the claimed mouthpiece. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a mouthpiece that could compress the supply packet.
Regarding claim 3, the claim recites the limitation “the plunger portion of the mouthpiece is configured to slide so as to compress the supply packet” (lines 1-2), which is considered to be a limitation regarding the intended use of the claimed mouthpiece. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a mouthpiece that could reduce a volume of the supply packet.
Regarding claim 5, the claim recites the limitation “the plunger portion of the mouthpiece has a side surface and is configured to transition from a protracted position to the retracted position such that at least a majority of the side surface is obscured from view when the plunger portion of the mouthpiece is in the retracted position (lines 1-5), which is considered to be a limitation regarding the intended use of the claimed mouthpiece. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a side surface that could be obscured from view in any manner when in the retracted position.
Regarding claim 10, the claim recites the limitation “wherein the heater is isolated from the pre-vapor formulation until a sliding of the plunger portion of the mouthpiece into the housing to activate the e-vapor device” (lines 1-3), which is considered to be a limitation regarding the intended use of the claimed mouthpiece. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a device that could be used such that the supply packet containing the pre vapor formulation is kept isolated until the mouthpiece is slid into place, for instance, by holding the packet away from the device, or by activating the device without ever inserting the packet into the device at all.
Regarding claim 13, the claim requires the puncture device to be located opposite the supply packet from the mouthpiece. However, the supply packet is not claimed as part of the e-vapor device, and its exact location is considered to be a limitation regarding the intended use of the claimed device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a puncture that could be located on the opposite side of the mouthpiece from the supply packet.
Regarding claim 14, the claim recites the limitation “towards the supply packet” (lines 3-4), which is considered to be a statement regarding the intended use of the claimed device since the supply packet is not claimed as part of the device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required the protrusions to extend in any direction.
Regarding claim 16, the claim recites the limitation “the spring is configured to decompress so as to facilitate a discharge of the pre-vapor formulation from the supply packet” (lines 1-2), which is considered to be a limitation regarding the intended use of the claimed supply packet. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a spring that could facilitate a discharge of pre-vapor formulation.
Regarding claim 20, the claim recites the limitation “a gasket within the housing between the mouthpiece and the supply packet” (lines 1-2), however, the supply packet is not claimed as part of the device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a gasket within the housing that could be placed between the mouthpiece and the supply packet.
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 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 1-5, 11, 13-14 and 20 are rejected under 35 U.S.C. 103 as being obvious over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351).
Regarding claim 1, Kaufman discloses an apparatus for heating smokable material ([0095], figure 5, reference numeral 11) having a body (figure 1, reference numeral 110), which is considered to meet the claim limitation of a housing, having a recess (figure 5, reference numeral 111) that receives a cartridge ([0096], figure 1, reference numeral 1), which is considered to meet the claim limitation of a supply packet. The upper portion of the body is considered to meet the claim limitation of a first end, and the lower portion of the body is considered to meet the claim limitation of a second end. The vertical direction of Kaufman is considered to also be a longitudinal direction since that is the longest axis of the Kaufman device (figure 5). The body has a heating element ([0103], figure 5, reference numeral 115) that heats under the influence of a magnetic field [0106] so that smokable material in the cartridge is volatilized (abstract). The apparatus has a mouthpiece secured to its upper end through a flexible member ([0097], figure 5, reference numeral 120). The mouthpiece is permanently connected to the body through a flexible member [0097], indicating that the mouthpiece can slide relative to the body to be inserted into the body. The mouthpiece has a member for applying pressure to the cartridge through contact so that the cartridge is pressed into the recess [0114], which is considered to meet the claim limitation of pushing. The lower portion of the mouthpiece forms a recessed portion with sidewalls that extend downward (figure 5) that has a second device for puncturing a seal extending through it ([0100], figure 5, reference numeral 123), which is considered to meet the claim limitation of a plunger portion. The smokable material is in the form of a liquid [0067]. The closed position of the mouthpiece is considered to meet the claim limitation of a retracted position. Kaufman does not explicitly disclose a collar portion having first and second openings.
Ricketts teaches a cartridge for an aerosol generating system having a contain for storing an aerosol forming substrate (abstract) that is covered with a lid (figure 1, reference numeral 104), which is considered to meet the claim limitation of a collar, that has an outlet (figure 1, reference numeral 106) that has a gasket that receives a liquid transport element and has upper and lower ends, which are considered to meet the claim limitations of first and second openings, respectively (column 11, lines 11-19, figure 1, reference numeral 122). The gasket improves resistance to leakage (column 4, lines 36-41).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the upper side of the cartridge of Kaufman with the gasket of Ricketts. One would have been motivated to do so since Ricketts a lid and gasket that prevent leakage from a cartridge.
Regarding claim 2, it is evident that the device for puncturing the cartridge could also be used to compress the cartridge if it were used with insufficient force to completely puncture the cartridge.
Regarding claim 3, it is evident that the device for puncturing the cartridge could also be used to reduce the volume of a compressible supply packet if it were used with insufficient force to completely puncture the cartridge.
Regarding claim 4, Kaufman discloses that the device for puncturing the cartridge is located on the lower end of the mouthpiece (figure 5). It is therefore evident that the mouthpiece is moved downward to puncture the cartridge, it moves towards the heater since the heater is located within the body below the mouthpiece.
Regarding claim 5, it is evident that the sides of the mouthpiece of Kaufman could be obscured from view when the mouthpiece is retracted in a variety of manners, such as wrapping the entire device in a piece of paper.
Regarding claim 11, Kaufman discloses that the recess has a constant external dimension along its length [0081]. It is therefore evident that an annular space would be formed between the body and the recess walls, which is considered to meet the claim limitation of a chimney.
Regarding claims 13 and 14, Kaufman additionally discloses all the claim limitations as set forth above. Kaufman discloses that the mouthpiece has a second device for puncturing the seal of the cartridge ([0100], figure 5, reference numeral 123). The mouthpiece is considered to be within the housing since the devices extend within the housing. The first and second devices for puncturing are considered to meet the claim limitation of protrusions that come from a plate. The first ([0098], figure 5, reference numeral 122) and second channels ([0100], figure 5, reference numeral 124) indicate that the plate is porous. The puncturing device may be part of the body rather than part of the mouthpiece [0102]. Modified Kaufman does not explicitly teach the puncture device located opposite the mouthpiece on the bottom of the recess.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the puncture device of Kaufman opposite the mouthpiece on the bottom of the recess. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding claim 20, the gasket of modified Kaufman is considered to meet the claim limitation of the claimed gasket.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being obvious over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351) as applied to claim 1 above, and further in view of Koester (WO 94/22510).
Regarding claim 6, modified Kaufman teaches all the claim limitations as set forth above. Modified Kaufman does not explicitly teach the mouthpiece configured to transition irreversibly to the retracted position.
Koester teaches a dispenser for a drug having a housing or cylinder (figure 1, reference numeral 1) that irreversibly engages windows (figure 1, reference numeral 20) of a plunger (abstract, figure 1, reference numeral 4). The drug to be dispensed is stored in a chamber (page 3, line 33, page 4, line 1, figure 1, reference numeral 7) that is punctured when the plunger is pressed to expel the dosage through an outlet pipe (page 2, lines 13-16, page 4, lines 10-15, figure 1, reference numeral 3). Koester additionally teaches this mechanism meets the security demands of not allowing the plunger to be pulled outward once pressed home into the cylinder and the dispenser clearly indicates whether it is used or unused.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the mouthpiece and body of modified Kaufman with the plunger and housing of Koester, respectively. One would have been motivated to do so since Koester teaches a dispenser that meets security demands by not allowing the plunger to be pulled outward once pressed home into a cylinder and clearly indicating whether it is used or unused.
Regarding claim 9, modified Kaufman teaches all the claim limitations as set forth above. Modified Kaufman does not explicitly teach the mouthpiece locking in the retracted position.
Koester teaches a dispenser for a drug having a housing or cylinder (figure 1, reference numeral 1) that irreversibly engages windows (figure 1, reference numeral 20) of a plunger (abstract, figure 1, reference numeral 4). The drug to be dispensed is stored in a chamber (page 3, line 33, page 4, line 1, figure 1, reference numeral 7) that is punctured when the plunger is pressed to expel the dosage through an outlet pipe (page 2, lines 13-16, page 4, lines 10-15, figure 1, reference numeral 3). Koester additionally teaches this mechanism meets the security demands of not allowing the plunger to be pulled outward once pressed home into the cylinder and the dispenser clearly indicates whether it is used or unused.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the mouthpiece and body of modified Kaufman with the plunger and housing of Koester, respectively. One would have been motivated to do so since Koester teaches a dispenser that meets security demands by not allowing the plunger to be pulled outward once pressed home into a cylinder and clearly indicating whether it is used or unused.
Claim 10 is rejected under 35 U.S.C. 103 as being obvious over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351) as applied to claim 1 above, and further in view of Monsees (US 2013/0042865).
Regarding claim 10, modified Kaufman teaches all the claim limitations as set forth above. It is evident that the cartridge could be isolated from the device since the cartridge is removable. Modified Kaufman does not explicitly teach activating the device when the mouthpiece is moved into the body.
Monsees teaches an electronic vaporization device (abstract) having a mouthpiece connected to a detector that turns the device on when the mouthpiece is moved to the retracted position [0089].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to activate the device of modified Kaufman when the mouthpiece is moved to the retracted position. One would have been motivated to do so since Monsees teaches activating an electronic vaporization device when the mouthpiece is moved into a proper position.
Claim 12 is rejected under 35 U.S.C. 103 as being obvious over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351) as applied to claim 11 above, and further view of Thorens (US 10,206,428).
Regarding claim 12, modified Kaufman teaches all the claim limitations as set forth above. Modified Kaufman does not explicitly teach the mouthpiece sliding into the annular space defined by modified Kaufman.
Thorens teaches an aerosol generating device having an open ended annular recess defined between first and second walls that retains a mouthpiece cover (abstract) through compression or gripping structures (column 3, lines 43-52).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an annular recess to accommodate the mouthpiece in the annular space of modified Kaufman. One would have been motivated to do so since Thorens teaches that annular spaces retain mouthpieces within the housing.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351) as applied to claim 1 above, and further in view of Corbacho (US 2010/0095957).
Regarding claim 15, modified Kaufman teaches all the claim limitations as set forth above. Modified Kaufman does not explicitly teach a spring positioned between the mouthpiece and the supply packet.
Corbacho teaches a nasal sprayer (abstract) having a spring ([0054], figure 2, reference numeral 51) that is compressed by a proximal front end ([0053], figure 2, reference numeral 25) of the nasal sprayer. When the spring is fully compressed, additional force causes a piston ([0053], figure 2, reference numeral 47) to move forward to puncture a rupturable bottom ([0054], figure 2, reference numeral 41) of a monodose medicine package ([0054], figure 2, reference numeral 53). Carbacho additionally discloses that this mechanism enables a uniform profile regardless of the speed of depression [0020].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the mouthpiece of modified Kaufman with the spring mechanism of Carbacho. One would have been motivated to do so since Corbacho teaches a mechanism the produces a uniform profile regardless of the speed of depression.
Regarding claim 16, it is evident that the spring of modified Corbacho could cause a discharge from a supply packet if the supply packet were located in the path of the spring as it released.
Regarding claim 17, Corbacho teaches that the spring is compressed when it is being loaded for firing (figure 3) and is subsequently decompressed as it compresses the monodose to release the monodose ([0053], figure 4).
Regarding claim 18, Corbacho teaches that the piston has a distal end in the form of a flat plate ([0053], figure 2, reference numeral 45), which is considered to meet the claim limitation of a diffuser plate configured to distribute the compressive force over a surface of the diffuser plate.
Claim 19 is rejected under 35 U.S.C. 103 as being obvious over Kaufman (US 2017/0055574) in view of Ricketts (US 10,588,351) as applied to claim 1 above, and further in view of Perez (US 9,833,021).
Regarding claim 19, modified Kaufman teaches all the claim limitations as set forth above. Modified Kaufman does not explicitly teach an absorbent pad.
Perez teaches an electronic cigarette device (abstract) having a tank well (figure 2, reference numeral 216) with an absorbent material on its bottom to catch any excess fluid that may accidentally escape (column 5, lines 63-67, column 6, lines 1-19).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the recess of modified Kaufman with the absorbent pad of Perez. One would have been motivated to do so since Perez teaches an absorbent material that catches any excess fluid that accidentally escapes other components.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection are entered as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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