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 .
Election/Restrictions
Claim 35 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (group II, an aerosol generating device), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/27/2026.
Response to Arguments
Applicant's arguments filed 7/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the clean out tube of McGrath is not a fixing element because the tube does not prevent the heating module 50 from moving away from the internal support structure. The examiner disagrees. The effect of the fixing element in the claim is not specified and therefore, under the broadest reasonable interpretation, it is clear that the tube fixes the housing through which passes to the housing’s internal support structure [0113]. In addition, McGrath discloses that the tube, “…is arranged to support and locate the heater arrangement 23 in the chamber 160.” [0087]
The applicant argues that the o-ring 41d is not in contact (and therefore cannot be compressed between) with the housing module and the body and is instead between the body and the clean-out tube (or fixing element). The examiner disagrees. McGrath discloses that the housing module (50) is the entire arrangement including the clean out tube (see figure 7). This results in the o-ring being compressed between the internal support structure and the housing module (because the module includes the end tube).
The applicant argues that claim 18 recites distinct relationships among the housing part, the body, the fixing element, and the elastomeric seal. The examiner disagrees. The fixing element is not claimed as a distinct element and is instead claimed as part of the housing (“fixing the housing part to the body with a fixing element that extends through an attachment opening of the housing part”). Therefore, the fixing element can be considered part of the housing.
The applicant argues that the fixing element in claim 18 is a single element. This is incorrect. The claim is comprising in scope and therefore more than one fixing element is not excluded by the current claim language.
The applicant argues that the screws of McGrath do not penetrate through an opening. The examiner disagrees. As illustrated in figure 13 and 14, the member 15a and 15b have openings (cutaway portions, 16i) and curved cutaway portions for the screws. These are considered to be openings. The term opening is interpreted using the broadest reasonable interpretation to mean an open area and does not mean that it must be a through hole with material all around it.
The applicant argues that the office action does not explain how the threaded connection of Rebensdorf would modifying McGrath. The examiner disagrees. The office action discusses replacing the friction fit attachment using o-rings of McGrath with a threaded connection and o-ring.
It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the screw fixation and parallel compression of the o-ring disclosed by Rebensdorf to connect the tube and housing. It is notoriously well known that threaded screw connections are alternatives to fiction fit fixation of two parts (friction fit being the method of fixation disclosed by McGrath et al. and it would have been obvious to one of ordinary skill in the art at the time of invention to attach two part together with a o-ring and threads instead of an o-ring and friction fit.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 18-20 and 22-27is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGrath et al. (US 20220192261 A1, with priority to GB1904748.9A).
Regarding claim 18-20, and 22, McGrath et al. disclose positioning a housing module (50, see figures 6 (bottom portion) and 8 below) inside a body of an aerosol generating device and fixing the housing to the body using an end tube (41, i.e. fixing element) that extends through an attachment opening of the housing part (i.e. part 53 or others), and an elastomeric seal (41d, o-ring) is compressed between the side of the housing part (41) and the body (37, figure 6, sides face one another), and the fixing element 41 protrudes through an opening in the elastomeric seal (i.e. the o-ring has a hollow center)[0113].
PNG
media_image1.png
357
470
media_image1.png
Greyscale
PNG
media_image2.png
285
426
media_image2.png
Greyscale
Regarding claim 22, the seal is compressed by a force (i.e. between two walls) that is perpendicular to the direction that the fixing element extends through the seal.
Regarding claim 24, the o-ring as shown is overmolded over a connection port (tube 41) configured to be connected to an external connector (37).
Regarding claims 25 and 27, the housing part is removably fixed to the body with the at least one fixing element as illustrated and removal would not damage either part.
Regarding claim 18, 23, and 26, McGrath et al. disclose positioning a housing on a body with a fixing element (41 and 73e) and n elastomeric seal (15a, 15b, see figures 10, 12, 13, and 14 below) where the fixing elements extends through an attachment opening of the housing part compressing the seal where the housing surrounds the seal. The fixing elements include tube 41 and screws 43 and the corresponding central and peripheral opening as shown in figures 12-14).
PNG
media_image3.png
309
386
media_image3.png
Greyscale
PNG
media_image4.png
312
482
media_image4.png
Greyscale
PNG
media_image5.png
318
376
media_image5.png
Greyscale
PNG
media_image6.png
634
548
media_image6.png
Greyscale
Claim(s) 18 and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCoy (US 20010039953 A1).
Regarding claims 18 and 34, McCory discloses a housing that partially defines an outer surface of an aerosol generating device (smoke is considered an aerosol). The body (13) has a fixing element (outer surface 7, with threads illustrated) that extends through an attachment opening (12) of the housing part (8). A elastomeric seal, ring 2, is compressed between the fixing element the (7), the body (13), and the housing (8). Attaching the fixing element through an opening in the elastomeric seal (i.e. the seal is a ring and the fixing element passes through the center) forms the device. See figure 1 below.
PNG
media_image7.png
407
317
media_image7.png
Greyscale
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGrath et al. (US 20220192261 A1, with priority to GB1904748.9A) as applied to claim 18 above, and further in view of Rebensdorf (US 20040084055).
Regarding claim 21, McGrath et al. do not disclose that the o-ring is compressed in a direction that is “mainly in a direction parallel to a direction in which the at least one fixing element extends through the attachment opening.” However, it is well-known in the art to use different types of connections. For instance, Rebensdorf discloses a smoking article with a fixing element and an o-ring to seal the connection. The o-ring is arranged on the end surface of one element and is compressed in a longitudinal direction (i.e. parallel to the fixing element extension through the o-ring. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the screw fixation and parallel compression of the o-ring disclosed by Rebensdorf to connect the tube and housing. It is notoriously well known that threaded screw connections are alternatives to fiction fit fixation of two parts (friction fit being the method of fixation disclosed by McGrath et al. and it would have been obvious to one of ordinary skill in the art at the time of invention to attach two part together with a o-ring and threads instead of an o-ring and friction fit.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael J Felton/Primary Examiner, Art Unit 1747
Prosecution Insights