Non-Final Rejection
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 .
Status of Claims
Claims 1-15 are canceled.
Claims 16-30 are pending.
Claim Rejections - 35 USC § 102
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) 16-18, 20, and 23-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0120224 to Mishra et al. (hereinafter Mishra).
With respect to claims 16-18, Mishra teaches a mouthpiece 70 for inhaling an aerosol, the mouthpiece comprising: an airflow path 315,321,384 for an aerosol, the airflow path leading through the mouthpiece; and flavor granules 10a arranged in the airflow path, the flavor granules containing at least one flavoring agent for flavoring the aerosol (para [0066]), wherein the flavor granules are configured to be movable by a user's puff. Note that beads 10a are described as being “loose” within cavity 500 and
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thus, are “configured” to be movable by a user’s puff as they are capable of doing so when the cavity is not packed tightly. See para [0061]. Mishra further discloses the flavor granules comprise a porous matrix material (a hydrogel) including the at least one flavoring agent, and wherein the porous matrix material has a density of between 0.4 and 2 g/cm³. See paras [0067 and 0069]. The hydrogel encapsulates/embeds a releasable flavorant and is thereby inherently porous. Furthermore, Mishra discloses the hydrogel has a density of about 0.80-1.5 g/cm3, which falls within/overlaps the claimed range.
As to claim 20, the porous matrix of Mishra is a hydrogel. Hydrogels are inherently water-insoluble.
With respect to claims 23 and 24, the granules have a diameter from about 0.2 mm to about 2.0 mm, falling within the claimed ranges.
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As to claim 25, the device has a longitudinal axis and the airflow path is partly arranged diagonally to the longitudinal axis. Specifically, air enters at air inlet 440, perpendicular to the longitudinal axis of the device. It must then travel at a diagonal through space 335 to enter air flow path 315. See annotated Figure 2
.
As to claim 26, the mouthpiece of Mishra includes an inlet portion 321,384 configured for receiving the aerosol and an outlet portion 21 configured for outflow of the aerosol, wherein the airflow path is arranged between the inlet portion and outlet portion. See Figure 2.
With respect to claims 27 and 28, the inlet portion includes a longitudinal tubular outer housing that is detachably connectable to a cartridge 72. See Figure 1; para [0048].
As to claim 29, the device includes an outer wall having an air inlet 440.
Claim(s) 16-18, 21, 22, and 25-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,105,831 to Banerjee et al. (hereinafter Banerjee).
With respect to claims 16 and 18, Banerjee teaches a mouthpiece 14 for inhaling an aerosol including an airflow path 11, 13 for an aerosol, the airflow path leading through the mouthpiece; and flavor granules 13 arranged in the airflow path, the flavor granules containing at least one flavoring agent for flavoring the aerosol (col.16, lines 6-
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10; describing densified tobacco particles which will contain natural tobacco flavors), wherein the flavor granules are configured to be movable by a user's puff (as shown in Figure 1, the granules do not completely fill container 12, wherein the flavor granules comprise a porous matrix material (densified tobacco) including the at least one flavoring agent (natural tobacco flavor), and wherein the porous matrix material has a density of between 0.4 and 2 g/cm³. See col.23, lines 42-43 describing densified tobacco as having a density of 0.8 g/cc. See also the embodiment illustrated by Figure 4 and described in col.8, lines 36-64.
With respect to claim 17, because densified tobacco is made from natural tobacco material, it inherently contains natural tobacco flavors “embedded” therein.
As to claim 21, the porous matrix material is densified tobacco, which is a lignocellulosic material.
With respect to claim 22, the porous matrix is tobacco which is a natural lignocellulosic composite of cellulose, hemicellulose, and lignin.
As to claim 25, the mouthpiece 14 comprises a longitudinal axis, wherein the airflow path is partly arranged diagonally to the longitudinal axis. For example, air exiting through the constricted portion 30 will expand to fill the volume within passage 19, creating diagonal flow paths. See annotated Figure 1 below.
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With respect to claim 26, the mouthpiece further includes an inlet portion 28 and an outlet portion 30, wherein the airflow path is arranged between the inlet and outlet portion.
As to claims 27 and 28, Banerjee teaches that the fuel element 10 and the aerosol generating means 12, together forming a tubular section, “may be produced without a built-in mouthend piece or aerosol delivery means, for use with a separate, disposable or reusable mouthend piece” (col.5, lines 53-57).
Claim Rejections - 35 USC § 103
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.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mishra and further in view of US 12,575,603 to Hubbard et al. (hereinafter Hubbard).
With respect to claim 30, Mishra does not teach that the mouthpiece is detachably connected to the cartridge containing an aerosol-forming material because they are both contained within section 70 of the device. However, Hubbard discloses a device for generating an aerosol from an aerosol-forming material in a cartridge 84 and a mouthpiece 80 detachably connected to the cartridge and containing a flavor-generating component. See Figure 4; col.19, lines 32-35. See also, Figure 2 and col.18, lines 49-67. It would have been obvious to one of ordinary skill in the art to construct the device of Mishra such that the mouthpiece is separable from the remainder of the device so as to permit easy replacement thereof when the flavor granules have been depleted.
Claim(s) 16-21 and 25-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over in Hubbard view of US 2017/0188626 to Davis et al. (hereinafter Davis).
With respect to claims 16 and 18, Hubbard teaches a mouthpiece 56 for inhaling an aerosol, the mouthpiece comprising: an airflow path 58,54 for an aerosol (col.18, lines 53-59), the airflow path leading through the mouthpiece; and flavor granules 62 arranged in the airflow path. For example, Hubbard discloses that the wall structures “may exhibit some level of permeability or porosity that merely reduces or retards
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(without completely blocking) transport of aerosol between the pathways, such as porous ceramic structures, porous glass structures, or fibrous mat materials (i.e. fiberglass).” See col.7, lines 50-55. Thus, the internal walls of mouthpiece 56 may be porous such that aerosol in path 58,54 may flow into the air flow path containing granules 62 before exiting at 70.
Hubbard further teaches the flavor granules containing at least one flavoring agent for flavoring the aerosol (col.8, line 11-col.9, line 62), wherein the flavor granules are “configured” to be movable by a user's puff, for example when the chamber is partly filled as shown in Figures 2 and 5. The flavor granules comprise a porous matrix material including the at least one flavoring agent (col.8, lines 35-37). Hubbard is silent to the density of the porous material.
Davis discloses porous materials, such as porous glass and porous ceramics, for absorbing and releasing an aerosol precursor composition in a smoking article. Davis teaches the density of the porous materials falls within the range of 0.25 to about 3 g/cm3 or about 0.5 to about 2.5 g/cm3. See paras [0096 and 0101]. Davis further teaches that parameters such as density and porosity affect the “storage and/or transport ability” of the porous material. See para [0106]. Thus, it would have been obvious for a POSITA to choose the density disclosed by Davis in the granules of Hubbard, particularly when using the porous ceramic structures, as having suitable storage and transport properties for porous ceramic in an aerosol generating device.
As to claim 17, Hubbard teaches that the flavoring agent is embedded (infused) with the porous matrix. See col.8, lines 35-63.
With respect to claim 19, Hubbard is silent to the porosity of the porous material. Davis teaches porous glass and ceramics having a porosity of “about 10% to about 40%” (about 0.10 to about 0.40). See paras [0095 and 0100]. As Davis teaches that parameters such as density and porosity affect the “storage and/or transport ability” of the porous material (para [0106]), it would have been obvious for a POSITA to choose the porosity disclosed by Davis in the porous ceramic granules of Hubbard, as having suitable storage and transport properties for porous glass and ceramic in an aerosol generating device.
With respect to claim 20, Hubbard discloses matrix materials that are water insoluble (ceramics, polymers, metals, etc.) See col.8, lines 35-40.
As to claim 21, Hubbard teaches matrices of ceramic material (col.8, line 39).
As to claims 23 and 24, Hubbard is silent to the size of the granules. Mishra discloses granules having a diameter from about 0.2 mm to about 2.0 mm, falling within the claimed ranges. It would have been obvious to form the granules of Hubbard to have a size within the range of Mishra, as being a size suitable to fit within a hand-held aerosol-generating device like that of Hubbard while also a sufficient size to contain flavorant to be aerosolized.
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With respect to claim 25, as shown in annotated Figure 2, the porous nature of the internal walls would have permitted flow from airflow path 54 through the granules 62, thereby creating diagonally arranged air flow paths.
As to claim 26, Hubbard teaches an inlet portion (internal walls of mouthpiece 56) configured for receiving the aerosol and an outlet portion (open wall portion of internal wall) configured for outflow of the aerosol, wherein the airflow path is arranged between the inlet portion and the outlet portion. See annotated Figure 2 above.
With respect to claims 27 and 28, Hubbard discloses that the flavor-containing cartridge may be disposable and removably attached to the delivery device. See col.13, lines 24-39. In the figures, the flavor-containing cartridge is tubular and arranged along a longitudinal axis of the device.
As to claim 29, Hubbard teaches that an outer wall contains an ambient air inlet 62.
With respect to claim 30, Hubbard discloses a device for generating an aerosol from an aerosol-forming material in a cartridge 84 and a mouthpiece 80 detachably connected to the cartridge and containing a flavor-generating component. See Figure 4; col.19, lines 32-35. See also, Figure 2 and col.18, lines 49-67.
Claim(s) 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard and Davis as applied to claim 16 above, and further in view of Mishra.
Hubbard is silent to the size of the granules. Mishra discloses granules having a diameter from about 0.2 mm to about 2.0 mm, falling within the claimed ranges. It would have been obvious to form the granules of Hubbard to have a size within the range of Mishra, as being a size suitable to fit within a hand-held aerosol-generating device like that of Hubbard while also a sufficient size to contain flavorant to be aerosolized.
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee as applied to claim 17 above, and further in view of Davis.
As to claim 19, Banerjee is not limited to densified tobacco particles for the substrate. Additionally, particulate alumina may be used alone or in combination with the densified tobacco particles. See col.8, lines 40-45; col.9, lines 30-32; col.15, lines 54-68. Banerjee does not disclose the density or porosity of the particulate alumina.
Davis discloses porous materials, such as porous alumina ceramics (paras [0097, 0102], for absorbing and releasing an aerosol precursor composition in a smoking article. Davis teaches the density of the porous materials falls within the range of 0.25 to about 3 g/cm3 or about 0.5 to about 2.5 g/cm3 (paras [0096 and 0101) and the porosity is “about 10% to about 40%” (about 0.10 to about 0.40). See paras [0095 and 0100]. Davis further teaches that parameters such as density and porosity affect the “storage and/or transport ability” of the porous material. See para [0106]. Thus, it would have been obvious for a POSITA to choose the density disclosed by Davis in the granules of Banerjee, particularly when using porous ceramic structures, as having suitable storage and transport properties for porous ceramic in an aerosol generating device.
With respect to claim 20, alumina ceramics are water-insoluble.
Claim(s) 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee as applied to claim 16 above, and further in view of Mishra.
Banerjee is silent to the size of the granules. Mishra discloses granules having a diameter from about 0.2 mm to about 2.0 mm, falling within the claimed ranges. It would have been obvious to form the granules of Banerjee to have a size within the range of Mishra, as being a size suitable to fit within a hand-held aerosol-generating device like that of Banerjee while also a sufficient size to contain flavorant to be aerosolized.
Response to Arguments
Applicant's arguments filed 3 September 2026 have been fully considered but they are not persuasive with respect to the rejection over Mishra.
Regarding Mishra and the rejection of claims 16-18, 20, and 23-29, applicant argues that because “Mishra does not state that cavity 500 is partly filled or otherwise contains enough unoccupied space for airflow to move beads 10a,” Mishra cannot necessarily teach puff-induced movement. Product claim 16 recites “wherein the flavor granules are configured to be movable by a user’s puff.” The arguments point to nothing in the claims or written description suggesting that ‘configured to’ should be construed more narrowly than ‘capable of.’ In fact, the only parameters disclosed by the specification related to the granules being “configured to be movable by a user’s puff” is the particle diameter of 0.7 to 4.7 mm, which “may be particularly well suited for the flavor granules to be configured to be movable by a user’s puff” (emphasis added) and a density of 0.4-2 g/cm3 which “density may be advantageous in order to allow the flavor granules to be movable by a user’s puff” (emphasis added). See paras [0013, 0014, 0021, 0022]. Both the density and particle diameter are taught as suggestions (“may have” and “may be”) not as a necessity to achieve movement by a user’s puff. Further, the specification is silent to how the practitioner would choose or optimize a particular combination of density and particle size that would be configured to be movable by a user’s puff, or how any other parameters such as user puff strength and cavity total fill volume would affect whether a granule is “configured to be movable by a user’s puff” and nowhere does the specification teach that “configured to” should be limited to elements intentionally or specially designed for the recited function of being movable by a user’s puff. Accordingly, the phrase "configured to” does not necessarily limit the prior art to a showing of a purposeful design that performs a specific function. This interpretation is consistent with that held by the CAFC in In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026, non-precedential). Thus, the broadest reasonable interpretation of “configured to be movable by a user’s puff” would be “capable of” being movable by a user’s puff.
Turning now to Mishra, Figure 2 illustrates an embodiment wherein the cavity 500 is only partially filled with beads 10a. Additionally, Mishra discloses that “the vapor contacts and flows between the beads 10a within the cavity 500” (emphasis added) and notes that the beads may be either loose or interconnected. See para [0061]. In para [0066] Mishra teaches “the vapor within the e-vaping device 60 may flow around and/or through the encapsulated flavorant 10a-e.” The bead size (0.2-2 mm; para [0061]) and hydrogel density (0.80-1.5 g/cm3; para [0069]) overlap or lie within the ranges disclosed by the instant specification as being adapted to be movable by a user’s puff. Thus, the beads of Mishra are “configured to” be movable by a user’s puff because they are capable of such when present in a partially filled cavity, in a loose form where the vapor may flow between the beads, and the user’s puff is of sufficient strength.
Applicant further argues that Mishra “also does not disclose that beads 10a comprise a porous matrix material including the flavoring agent.” As set forth above, Mishra clearly states that the “the vapor within the e-vaping device 60 may flow around and/or through the encapsulated flavorant 10a-e” (emphasis added). Flow through the beads would require a porous matrix. Moreover, innate porosity is an inherent property of hydrogels. For example, Wikipedia describes a hydrogel as “a biphasic material, a mixture of porous and permeable solids and at least 10% of water or other interstitial fluid. The solid phase is a water insoluble three dimensional network of polymers, having absorbed a large amount of water or biological fluids.” Similarly, Biology Insights states “Hydrogels are materials defined by their ability to absorb and hold substantial amounts of water. They consist of a three-dimensional network of polymer chains, creating a structure that is solid yet highly porous and permeable. This composition allows them to become swollen with water without dissolving.” The three dimensional polymer network is the matrix of the hydrogel. Thus, the hydrogel of Mishra is inherently a porous matrix.
As to applicant’s arguments that Mishra does not teach that the hydrogel is water-insoluble, the examiner again asserts that this is an inherent property of a hydrogel and this assertion is supported by both Wikipedia (“The solid phase is a water insoluble three dimensional network of polymers…”) and Biology Insights (“This composition allows them to become swollen with water without dissolving.”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST.
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/ELIZABETH L MCKANE/Primary Examiner, Art Unit 3991
Prosecution Insights