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
Claims 1, 3, 7 and 10 are amended. Claim 9 is cancelled. Claims 1-8 and 10 are presently examined.
Applicant’s arguments regarding the objection to the specification have been fully considered and are persuasive. The objection of 4/24/2026 is withdrawn.
Applicant’s arguments regarding the objections to the specification have been fully considered and are persuasive. The objections of 4/24/2026 are withdrawn.
Applicant’s arguments regarding the objections to the claims have been fully considered and are persuasive. The objections of 4/24/2026 are withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 4/24/2026 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 103 have been fully considered and are persuasive. The rejections of 4/24/2026 are overcome.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim requires the sealing element prevent air from flowing through the flavor carrier. However, applicant’s specification indicates that the flavor carrier is a porous structure (page 8, lines 15-17, figure 3, reference numeral 42) that is directly adjacent to interior of the aerosol extraction cavity (page 8, lines 8-10, figure 3, reference numeral 4) where air flows during use of the device (page 9, lines 9-16). Therefore, from the aerosol extraction cavity could enter the porous body of the flavor carrier. The sealing element has no impact on this air flow since it is located totally outside the aerosol product. The claim therefore introduces new matter into the disclosure. Claims 2-8 and 10 introduce new matter by dependence.
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 1-8 and 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.
Regarding claim 1, the claim recites the limitation “so as to define a sole airflow path for external air directly entering the hollow aerosol extraction cavity.” It is unclear whether use of the word “sole” excludes all other possible airflow pathways through the device, or whether it merely indicates that there exists an airflow path that can function whether or not other paths are present. The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required a single airflow path that may or may not interact with other airflow paths. Claims 2-8 and 10 are indefinite by dependence.
Regarding claim 3, there is insufficient antecedent basis for the limitation “the sidewall through holes” in the claim, rendering the claim indefinite. For the purposes of this Office action, the claim will be interpreted as if recited the sidewall through hole. Claim 8 is indefinite by dependence.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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