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 .
Election/Restrictions
Claims 3, 30-31, 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/04/2026.
Applicant’s election without traverse of 1, 2, 4, 6-9, 14, 16, and 24-28 in the reply filed on 08/04/2026 is acknowledged.
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.
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: a securing mechanism in claim 1.
The limitation “a securing mechanism, wherein the securing mechanism is configured to engage the lid portion with the base portion so as to hold in position, in use, an aerosol generating article so as to prevent relative movement of the aerosol generating article” in claim 1 is interpreted under 35 U.S.C. § 112(f). The term “securing mechanism” is a generic placeholder coupled with functional language and is not modified by sufficient structure for performing the recited function. Accordingly, the broadest reasonable interpretation of the limitation encompasses the corresponding structures described in the Specification for performing the recited function and equivalents thereof, including a hinge, magnetic securing elements, a clamping mechanism, a magnetic strut, a snap-fit mechanism, gripping elements, clasps, and a cam lock.
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 § 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.
Claims 1, 2, 4, 6, 7, and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Spieles et al. (WO 2020/239599 A1).
Regarding claim 1, Spieles teaches an aerosol provision device comprising:
a lid portion (hinged lid 4, p. 11, ll. 3–9);
a base portion (aerosol generating device 2 having an internal cavity shaped and sized to receive cartridge 6, p. 11, ll. 10–14);
and a securing mechanism configured to engage the lid portion with the base portion so as to hold in position, in use, an aerosol generating article so as to prevent relative movement of the aerosol generating article (hinged lid 4 can be closed to grip cartridge 6 and secure it in position, p. 11, ll. 3–9), wherein the lid portion and the base portion are configured to hold the aerosol generating article, in use, in position between the lid portion and the base portion (cartridge 6 fits within the internal cavity and is gripped and secured by hinged lid 4, p. 11, ll. 3–14; Figs. 1A–2B).
Regarding claim 2, Spieles teaches the device of claim 1 further comprising one or more heating elements (first heater 30 and second heater 32 positioned adjacent respective major surfaces of aerosol generating substrate 10, p. 15, ll. 24–30; p. 16, ll. 1–9). The recitation that the securing mechanism holds the aerosol generating article so as to prevent relative movement toward or away from the one or more heating elements is functional language that does not require additional structure beyond the recited securing mechanism and heating elements. Spieles teaches the recited structure, which is capable of performing the claimed function because hinged lid 4 grips and secures cartridge 6 in position relative to heaters 30, 32 (p. 11, ll. 3–9; p. 15, ll. 24–30).
Regarding claim 4, Spieles teaches the device of claim 1 further comprising one or more heating elements defining a planar surface (first and second heaters 30, 32 positioned adjacent the major surfaces 12b, 12a of slab 10, p. 15, ll. 24–30; Figs. 8–9), wherein the device is configured to hold a substantially planar aerosol generating article parallel to the planar surface (aerosol generating substrate 10 is a slab having a substantially cuboid or rectangular-prism shape and major surfaces 12a, 12b maintained in a flat configuration, p. 12, ll. 3–22). The recitation concerning preventing relative movement substantially perpendicular to the planar surface is functional language that does not require additional structure beyond the recited securing mechanism and heating elements. Spieles teaches the recited structure, which is capable of performing the claimed function.
Regarding claim 6, Spieles teaches the device of claim 2 wherein the lid portion and/or the base portion comprise one or more walls configured to form, when the lid portion is engaged with the base portion, an aerosol chamber (device 2 includes an internal cavity shaped and sized to receive cartridge 6 and hinged lid 4 closes over and grips cartridge 6, p. 11, ll. 3–14; Figs. 1A–2B). The recitation that, in use, the lid portion and/or base portion uniformly apply pressure through the one or more walls onto a substantially planar aerosol generating article so as to prevent relative movement and maintain separation between the heating elements and the article is functional language that does not require additional structure beyond the recited walls, securing mechanism, and heating elements. Spieles teaches the recited structure, which is capable of performing the claimed function because lid 4 grips and secures cartridge 6 in the receiving cavity relative to heaters 30, 32 (p. 11, ll. 3–14; p. 15, ll. 24–30).
Regarding claim 7, Spieles teaches the device of claim 6 wherein the one or more walls have a circumference or perimeter surrounding the received aerosol generating article (internal cavity shaped and sized to receive cartridge 6, p. 11, ll. 10–14; Figs. 1A–2B). The recitation that, in use, pressure is uniformly applied through the circumference or perimeter is functional language that does not require additional structure beyond the recited chamber-forming walls. Spieles teaches the recited structure, which is capable of performing the claimed function because the cartridge-receiving cavity surrounds cartridge 6 and lid 4 grips and secures the cartridge in position (p. 11, ll. 3–14). Claim 7 recites alternatives (i) and/or (ii); therefore, the perimeter alternative is sufficient and the radial-strut alternative need not also be met.
Regarding claim 16, Spieles teaches the device of claim 1 wherein the securing mechanism comprises a hinge, the lid portion being connected to the base portion through the hinge so as to form a clamshell arrangement (hinged lid 4 of aerosol generating device 2, p. 11, ll. 3–9; Figs. 1A–2B); wherein the aerosol provision device is configured to receive an aerosol generating article when the hinge is in an open position (with hinged lid 4 open, depleted cartridge 6 can be removed and a fresh cartridge 6 fitted in its place, p. 11, ll. 7–9); and wherein the securing mechanism is configured to engage the lid portion with the base portion so as to hold in position, in use, an aerosol generating article so as to prevent relative movement of the aerosol generating article when the hinge is in a closed position (hinged lid 4 can be closed to grip cartridge 6 and secure it in position, p. 11, ll. 5–7).
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 8 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Spieles et al. (WO 2020/239599 A1) in view of Reevell (US 2021/0378308 A1).
Regarding claim 8, Spieles teaches the aerosol provision device of claim 6 as set forth above. Spieles does not teach wherein the one or more walls are configured to embed or partially cut into an aerosol generating article or a substantially planar aerosol generating article.
Reevell teaches a heating chamber 108 having one or more walls including a side wall 126 provided with inwardly extending engagement elements or protrusions 140 that contact the substrate carrier 114 (¶ [0086]). Reevell further teaches that the protrusions 140 press against the substrate carrier 114 and cause compression and indentation of the outer layer 132 of the substrate carrier (¶ [0089]). Reevell teaches that the protrusions increase the contact surface area between the heating chamber and the substrate carrier, thereby improving conductive heating of the aerosol substrate (¶ [0090]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more walls of Spieles to include the inwardly extending protrusions taught by Reevell in order to increase contact with the aerosol generating article and improve conductive heat transfer thereto (Reevell, ¶ [0090]). Accordingly, modified Spieles teaches wherein the one or more walls are configured to embed or partially cut into an aerosol generating article or a substantially planar aerosol generating article (Reevell, ¶ [0089]).
Regarding claim 14, Spieles teaches the aerosol provision device of claim 6 as set forth above. Spieles does not teach that pressure is applied onto a first region of the substantially planar aerosol generating article that does not comprise aerosol generating material and not onto a second region comprising aerosol generating material.
Reevell teaches a substrate carrier 114 having an outer layer 132 surrounding aerosol substrate 128, with protrusions 140 pressing against and indenting the outer layer 132 rather than directly contacting the aerosol substrate 128 (¶ [0089]). Reevell teaches that this arrangement increases contact between the heating chamber and the substrate carrier to improve conductive heat transfer (¶ [0090]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Spieles so that the pressure-applying wall structure contacts a non-aerosol-generating outer region of the article as taught by Reevell in order to improve conductive heat transfer. Accordingly, modified Spieles teaches applying pressure to a first region that does not comprise aerosol-generating material and not directly to a second region comprising aerosol-generating material (Reevell, ¶ [0089]).
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Spieles et al. (WO 2020/239599 A1) in view of Thorsen et al. (US 2020/0268053 A1).
Regarding claim 9, Spieles teaches the aerosol provision device of claim 6 as set forth above. However, Spieles does not teach wherein the one or more walls comprise one or more partially deformable regions.
Thorsen teaches an inner wall 110 comprising deformable structures 127, 129, wherein the deformable structures deform to accommodate thermal expansion of the inner wall during heating and return toward their original positions after cooling (Thorsen, ¶ [0094]; Fig. 10). Thorsen teaches that the deformable structures advantageously accommodate thermal expansion of the inner wall during heating (Thorsen, ¶ [0094]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more walls of Spieles to include the deformable structures taught by Thorsen in order to accommodate thermal expansion of the wall during heating (Thorsen, ¶ [0094]). Such a modification would have amounted to the use of a known technique, namely providing deformable regions in a heating-zone wall to accommodate thermal expansion, to improve a similar heating device in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over Spieles et al. (WO 2020/239599 A1) in view of Smutney et al. (US 2009/0308391 A1).
Regarding claim 24, Spieles teaches the aerosol provision device of claim 1 as set forth above. However, Spieles does not teach wherein the securing mechanism comprises a cam lock configured to engage the lid portion with the base portion.
Smutney teaches an inhaler having a mechanism for receiving and reconfiguring a cartridge, wherein the mechanism may comprise a cam configured to reconfigure the cartridge upon rotation of the housing or mouthpiece (¶ [0010]). Smutney further teaches that movement of the cartridge between a containment position and a dosing position may be accomplished by a cam (¶ [0148]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the securing mechanism of Spieles to include the cam mechanism taught by Smutney to provide a known mechanism for moving and securing the aerosol-generating article in an operative position during use (Smutney, ¶¶ [0010], [0148]). This modification would have amounted to the use of a known technique, namely a cam-operated positioning and securing mechanism, to improve a similar aerosol/inhaler device in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Claims 25–28 are rejected under 35 U.S.C. § 103 as being unpatentable over Spieles et al. (WO 2020/239599 A1) in view of Smutney et al. (US 2009/0308391 A1) and Stuart et al. (US 2019/0351160 A1).
Regarding claim 25, Spieles as modified by Smutney teaches the aerosol provision device of claim 24 as set forth above. However, modified Spieles does not teach wherein the cam lock comprises an off-centre cam configured to roll down so as to hold in position, in use, an aerosol generating article so as to prevent relative movement of the aerosol generating article.
Stuart teaches a cam 1386 comprising a generally cylindrical body 1388 having an inwardly projecting cam lug 1438 that is off-centre on the cylindrical body 1388 (¶ [0210]). Stuart further teaches that rotation of the mouthpiece cover causes the cam lug 1438 to move downward, thereby driving the associated sleeve vertically downward and applying a downward force through the mechanism (¶ [0235]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the cam mechanism of Spieles in view of Smutney to include the off-centre cam taught by Stuart to provide a known mechanism for converting rotational movement of the lid portion into a downward holding force (Stuart, ¶¶ [0210], [0235]). The recitation “so as to hold in position, in use, an aerosol generating article so as to prevent relative movement of the aerosol generating article” is functional language that does not impart an additional structural limitation, and the modified device having the recited off-centre cam is capable of performing the recited function. This modification would have amounted to the use of a known technique, namely an off-centre cam for converting rotational movement into a downward force, to improve a similar cam-operated securing mechanism in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Regarding claim 26, Spieles as modified by Smutney and Stuart teaches the aerosol provision device of claim 25 as set forth above. However, the combination does not expressly teach wherein the lid portion and/or base portion comprises a plenum for forming an aerosol forming chamber, wherein the off-centre cam is configured to roll down to exert a force on the plenum so as to hold in position, in use, an aerosol generating article by the plenum so as to prevent relative movement of the aerosol generating article.
Smutney teaches an inhaler having a cartridge holder and associated air-flow structure defining a chamber/flow path for receiving the cartridge and conducting inhalation air through the cartridge toward the mouthpiece (Smutney, ¶¶ [0125]–[0127]). Stuart teaches that rotation of the mouthpiece cover causes the off-centre cam arrangement to move downward and apply a downward force through the associated structure (Stuart, ¶ [0235]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the off-centre cam of modified Spieles to exert its downward force on the chamber-forming structure taught by Smutney so that the received aerosol-generating article is retained in its operative position during use (Smutney, ¶¶ [0125]–[0127]; Stuart, ¶ [0235]). The recitation “so as to hold in position, in use, an aerosol generating article by the plenum so as to prevent relative movement of the aerosol generating article” is functional language that does not impart an additional structural limitation, and the modified device is capable of performing the recited function. This modification would have amounted to the use of a known technique, namely applying a cam-generated holding force to a chamber-forming article support, to improve a similar inhaler securing arrangement in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Regarding claim 27, Spieles as modified by Smutney and Stuart teaches the aerosol provision device of claim 25 as set forth above. However, the combination does not expressly teach wherein the aerosol provision device further comprises a slidable platform configured to extend outwards from the device to receive an aerosol generating article, wherein the slidable platform is configured to retract into the device so as to insert the aerosol generating article into the device and wherein the slidable platform is connected to the off-centre cam such that the off-centre cam is configured to roll down as the slidable platform retracts into the device.
Smutney teaches a sled 317 comprising a cartridge holder 315 for receiving a cartridge, wherein the sled is movable relative to the housing and movement of the sled during closing of the inhaler moves the cartridge from a loading/containment position into a dosing position within the device (¶¶ [0138]–[0140]). Smutney further expressly recognizes that a cartridge-reconfiguring mechanism may employ a sled, slide tray, or carriage, and may employ a cam responsive to rotation of the housing or mouthpiece (¶ [0010]). Stuart teaches an off-centre cam lug 1438 (¶ [0210]) that moves downward upon rotation of the mouthpiece cover (¶ [0235]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the device of Spieles in view of Smutney and Stuart such that Smutney’s slidable cartridge-supporting platform is operatively connected to Stuart’s off-centre cam, such that retraction of the platform during closing produces the downward movement of the off-centre cam, to coordinate insertion of the aerosol-generating article with application of the cam-generated holding force (Smutney, ¶¶ [0010], [0138]–[0140]; Stuart, ¶¶ [0210], [0235]). This modification would have amounted to the use of a known technique, namely a cam-operated movable cartridge support, to improve a similar inhaler mechanism in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Regarding claim 28, Spieles as modified by Smutney and Stuart teaches the aerosol provision device of claim 27 as set forth above. However, the combination does not expressly teach wherein the slidable platform is configured to receive the aerosol generating article when the hinge is in the open position and wherein the slidable platform is configured to retract into the device as the hinge is taken from the open position to the closed position.
Smutney teaches a mouthpiece 330 connected to housing 320 through a hinge mechanism 313, together with a sled 317 operatively coupled to the opening and closing mechanism, such that opening and closing the inhaler simultaneously moves the cartridge between its loading/containment position and its dosing position (¶ [0140]). Smutney further teaches that the cartridge-reconfiguring mechanism may comprise a sled, slide tray, or carriage and may operate automatically upon closing the device from an open configuration (¶ [0010]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Spieles such that the slidable platform taught by Smutney receives the aerosol-generating article when the hinged device is open and retracts into the device as the hinge moves from the open position to the closed position, in order to automatically position the article for use during closing of the device (Smutney, ¶¶ [0010], [0140]). This modification would have amounted to the use of a known technique, namely coupling a movable article-supporting platform to movement of a hinged closure, to improve a similar inhaler device in the same way, with no more than predictable results (MPEP § 2143(I)(C)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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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.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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