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 .
Status of the Claims
Claims are 1-7, 9-14 are pending and are subject to this office action. Claim 14 has been withdrawn as being directed to a non-elected invention. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant's election with traverse of Group I claims 1-7, 9-13 in the reply filed on 07/29/2026 is acknowledged. The traversal is on the grounds that Potter in view of Nakano does not disclose, “wherein the guiding member is configured to guide liquid components condensed from the airflow in a direction toward the main heating element.”
This is not found persuasive because the limitation requiring the guiding member guide condensate toward the main heating element is claimed as intended use of the guiding member. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Potter discloses a cone shaped guiding member (58) arranged in the airflow path (52), where the tip of the cone faces toward the main heating element (48, Fig. 1). Therefore, Potter is considered to disclose each of the structural elements of the claimed guiding element and the guiding element (58) disclosed by Potter is considered to be capable of guiding condensate toward the main heating element.
In regards to the argument that there is no undue burden to examine both Groups I and II, the restriction was based on unity of invention analysis and not independent and distinct analysis, as the application is a national stage application submitted under 35 U.S.C. 371. A lack of examination burden between the groups is not a requirement for unity of invention. Therefore, the Examiner maintains that restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/29/2026.
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.
Claims 1, 3-4, 6, 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US 20220125117 A1) in view of Nakano (US 20210169148 A1).
Regarding claim 1, Potter discloses an e-cigarette (1, “an aerosol generating system”, Fig. 1, [0023]), comprising:
A main unit defined by a portion of the e-cigarette (1) upstream of a vaporization region (56) and a mouthpiece defined by a portion of the e-cigarette (1) downstream of the vaporization region (56, Fig. 1, [0030]),
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The main unit comprises a heater (48, “main heating element”) for heating a vapor precursor material (“an aerosol forming substrate”, Fig. 1, [0030]), and;
The mouthpiece piece comprises:
A flavor insert (8, “sensorial media”, Fig. 1, [0028]),
An airflow path (52) extending from a vaporization region (56) to a mouth end outlet (50, Fig. 1, [0040-0041]), and;
A frusto-conical shaped wall (58, “guiding member”) arranged in the airflow path (52, Fig. 1, [0046-0047]). A frusto-conical shape is considered to be cone shaped, where the narrower end of the frusto-conical shape is considered to be a tip of the cone. Therefore, the tip of the frusto-conical shaped wall (58, “guiding member”) is considered to be facing towards the heater (48, “main heating unit, Fig. 1, [0029]).
In regards to the limitation requiring that the guiding member is configured to guide condensed liquid towards a main heating unit, the Examiner notes that guiding condensate toward the main heating unit is claimed as intended use of the guiding member. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Potter discloses a cone shaped guiding member (58) arranged in the airflow path (52), where the tip of the cone faces toward the main heating element (48, Fig. 1). Therefore, Potter is considered to disclose each of the structural elements of the claimed guiding element and the guiding element (58) disclosed by Potter is considered to be capable of guiding condensate toward the main heating element.
Potter does not explicitly disclose an auxiliary heating element for heating the flavor insert/sensorial media.
However, Nakano, directed to a suction component generator (100, Fig. 1, [0060]), discloses:
An atomization unit (120) comprising a flavor unit (130) for adding flavor to the aerosol generated from an upstream atomizer (122R, Fig. 2, 0070-0071]).
The flavor unit (130) is provided with an electrical load (124R, “an auxiliary heating element”) for heating the flavor unit (130) which can control the amount of flavor generated by varying the amount of heat supplied to the flavor unit (130, Fig. 2, [0074-0075]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Potter by providing a heater to the flavor insert as taught by Nakano because both Potter and Nakano are directed to aerosol generating devices, Nakano teaches the heater can control the amount of flavor released from the flavor unit, and this involves applying a known heater to a flavor unit in a mouthpiece to a similar device to yield predictable results.
Regarding claim 3, Nakano discloses the electrical load (124R, “an auxiliary heating element”) is a resistance heating element ([0075]).
Regarding claim 4, Potter discloses the flavor insert (8, “sensorial media”) comprises shredded, reconstituted, or extruded tobacco ([0023]) which are considered to be porous materials.
Regarding claim 6, Potter discloses the flavor insert (8, “sensorial media”) is arranged in the airflow path (52, Fig. 1, [0028, 0040-0041]).
Nakano discloses an electrical load (124R, “an auxiliary heating element”) arranged around a flavor unit (130, Fig. 2, [0074-0075]).
Therefore, providing the electrical load (124R, “an auxiliary heating element”) disclosed by Nakano around the flavor insert (8, “sensorial media”) disclosed by Potter would result in both the auxiliary heating element and sensorial media being arranged in the airflow path (Potter: 52, Fig. 1) of the mouthpiece.
Regarding claim 9, Potter discloses:
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A longitudinal axis of the frusto-conical shaped wall (58, “guiding member”) is arranged in parallel to the longitudinal axis of the e-cigarette (1, “aerosol generating system”, Fig. 1),
A base of the frusto-conical shaped wall (58, “guiding member”) is directed towards a proximal end of the e-cigarette (1, Fig. 1),
The frusto-conical shaped wall (58, “guiding member”) is hollow (Fig. 1, [0047]), and;
A downstream airflow chamber arranged in the hollow frusto-conical shaped wall (58, “guiding member”, Fig. 1).
Potter does not explicitly disclose an upstream airflow chamber surrounding the hollow cone shaped guiding member.
However, Nakano, directed to a suction component generator (100, Fig. 1, [0060]), discloses:
An atomization unit (120) comprising a flavor unit (130) for adding flavor to the aerosol generated from an upstream atomizer (122R, Fig. 2, 0070-0071]).
A second flow path (129) extending from a vaporization zone downstream of an electrical load (122R) and the mouthpiece end, which bypasses the flavor unit (130) to allow some aerosol to be delivered to mouthpiece end without adding flavor (Fig. 1, Fig. 2, [0078]).
The second flow path (129) is considered to be an upstream airflow chamber surrounding the flavor unit (130).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Potter, in view of Nakano, by providing a second airflow path extending from the vaporization region to the mouthpiece end as taught by Nakano because both Potter and Nakano are directed to aerosol generating devices, Nakano teaches the second airflow path bypasses the flavor unit and allows a portion of the aerosol to be delivered to the mouthpiece end without adding flavor, and this involves applying a known bypass flow path to a similar mouthpiece in a similar device to yield predictable results.
Regarding claim 10, Potter discloses the hollow frusto-conical shaped wall (58, “guiding member”) comprises an aperture at the tip of the cone which is in fluid communication with the vaporization zone (56, Fig. 1). Nakano discloses a second airflow path (129, “upstream airflow chamber”) in fluid communication with a vaporization zone (Fig. 2, [0078]).
Therefore the aperture at the tip of the cone (Potter: Fig. 1) is considered to fluidly connect the upstream airflow chamber (Nakano: second airflow path 129, Fig. 2) and downstream airflow chamber (Potter: interior of guiding member 58, Fig. 1).
Regarding claim 11, Potter discloses the base of the hollow frusto-conical shaped wall (58, “guiding member”) comprises an aperture configured as an airflow outlet port at the mouth end (50) of the e-cigarette (1, “an aerosol generating system”, Fig. 1, [0028]).
Regarding claim 12, Nakano discloses a second flow path (129, “upstream airflow chamber”) surrounding the flavor unit (130) and electrical load (124R, “an auxiliary heating element”, Fig. 2). Therefore, the flavor insert (Potter: 8, Fig. 1) and electrical load (Nakano: 124R, “an auxiliary heating element”, Fig. 2) are considered to be posited within the upstream airflow chamber (Nakano: 129).
Regarding claim 13, Potter discloses the main unit (portion of the e-cigarette (1) upstream of a vaporization region (56)) comprises a reservoir (44, “liquid storage portion”) comprising an e-liquid (“liquid aerosol forming substrate”), where the heater (48, “main heating unit”) is configured for heating the e-liquid ( “liquid aerosol forming substrate”, Fig. 1, [0026, 0029]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US 20220125117 A1) in view of Nakano (US 20210169148 A1), as applied to claim 1 above, further in view of Potter (US 20220232891 A1, hereinafter referred to as Potter ‘2891).
Regarding claim 2, Potter discloses a main unit defined by a portion of the e-cigarette (1) upstream of a vaporization region (56) and a mouthpiece defined by a portion of the e-cigarette (1) downstream of the vaporization region (56, Fig. 1, [0030])
Potter does not explicitly disclose the mouthpiece is replaceable.
However, Potter ‘2891, directed to an e-cigarette (1, Fig. 1, [0039]), discloses:
A removable receptacle (8, “a mouthpiece”) having a flavoring material (36, Fig. 1, [0039, 0045])
The receptacle (8, “mouthpiece”) may be removed from a cartridge (4) at interface (10) when the user wants to change flavors ([0043]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Potter, in view of Nakano, by providing the mouthpiece as a replaceable component as taught by Potter ‘2891 because both Potter and Potter ‘2891 are directed to aerosol generating devices, Potter ‘2891 teaches having a replaceable flavor containing mouthpiece allows the user to change flavors, and this involves making a component separable in a known manner in a similar device to yield predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US 20220125117 A1) in view of Nakano (US 20210169148 A1), as applied to claim 1 above, further in view of Garcia Garcia (US 20240057224 A1).
Regarding claim 5, Nakano discloses the electrical load (124R, , “auxiliary heating element”) is in direct physical contact with a cylindrical body (131) housing the flavor source ([0070]).
Nakano does not explicitly disclose the electrical load (124R, “auxiliary heating element”) is in direct contact with the flavor source/ sensorial media.
However, Garcia Garcia, directed to a heating oven (10, Fig. 1) for an aerosol generating device ([0001]), discloses:
A heating oven (10) comprising heaters (18) in direct physical contact with a tobacco substrate stick which provides beneficial heat transfer to the stick (Fig. 1, [0172-0173]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Potter, in view of Nakano, by providing the electrical load/auxiliary heating element in direct contact with the sensorial media as taught by Garcia Garcia because both Potter and Garcia Garcia are directed to aerosol generating devices, Garcia Garcia teaches the direct physical contact between the heater and substrate allows for efficient heat transfer, and this involves applying a known arrangement of a heater and substrate to similar device to yield predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US 20220125117 A1) in view of Nakano (US 20210169148 A1), as applied to claim 1 above, further in view of Bessant (US 20180070640 A1).
Regarding claim 7, Potter discloses a frusto-conical shaped wall (58, “guiding member”, Fig. 1).
Potter does not explicitly disclose a surface of the guiding member comprises a hydrophobic material.
However, Bessant, directed to an electronic aerosol-generating smoking device (abstract), discloses:
A hydrophobic surface in a flow channel of a mouthpiece comprising a hydrophobic coating ([0014, 0085-0086])
The hydrophobic surface prevents formation of condensation on the surface which facilitates cleaning ([0035, 0038-0039]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Potter, in view of Nakano, by providing a hydrophobic coating on the flow channel of the mouthpiece as taught by Bessant because both Potter and Bessant are directed to aerosol generating devices, Bessant teaches the hydrophobic coating prevents formation of condensation on the surface and facilitates cleaning, and this involves applying a known hydrophobic coating on a flow channel of a mouthpiece in a similar device to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No.18/687,490 in view of Nakano (US 20210169148 A1).
Regarding claim 1, copending Application No.18/687,490 recites an aerosol generating system comprising:
A mouthpiece comprising:
an airflow path of the mouthpiece and a cone-shaped guiding member;
wherein the cone-shaped guiding member is arranged in the airflow path of the mouthpiece,
wherein the cone-shaped guiding member is configured to guide condensed liquid components in a direction towards an upstream end of the airflow path of the mouthpiece, and wherein a tip of the cone-shaped guiding member faces in a direction towards a distal end of the mouthpiece.
a main unit comprising an atomizer; and
wherein the cone-shaped guiding member is configured to guide liquid components condensed from the airflow in a direction towards the atomizer.
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims differ in that claim 1 of the instant case further requires the mouthpiece comprises a sensorial media and an auxiliary heating element for heating the sensorial media.
However, Nakano, directed to a suction component generator (100, Fig. 1, [0060]), discloses:
An atomization unit (120) comprising a flavor unit (130, “sensorial media”) for adding flavor to the aerosol generated from an upstream atomizer (122R, Fig. 2, 0070-0071]).
The flavor unit (130) is provided with an electrical load (124R, “an auxiliary heating element”) for heating the flavor unit (130, Fig. 2, [0074-0075]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify copending Application No.18/687,490 by providing a flavor unit and heater as taught by Nakano because both copending Application No.18/687,490 and Nakano are directed to aerosol generating devices, Nakano teaches the flavor unit and heater provide flavor to the aerosol, and this involves applying a known flavor unit and heater to a similar mouthpiece to a similar system to yield predictable results.
Therefore, all of the elements of provisionally rejected claim 1 are present and obvious over conflicting claim 13 of co-pending Application No. 18/687,490.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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