DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s election filed August 10, 2026. Claims 5-10 have been elected. Claims 1-4 and 12-15 are withdrawn from consideration.
Election/Restrictions
Applicant's election with traverse of claims 5-10 in the reply filed on August 10, 2026 is acknowledged. The traversal is on the ground(s) that Claim 1 is a linking claim to the other inventions, claim 5 and 11 as the independent claims, and the restriction does not impose a serious burden. This is not found persuasive because search burden is not considered when requiring a restriction under PCT practice. This application was filed under the provisions of PCT Rule 13.1, under PCT Rule 13.2 which requires the single general inventive concept. Under unity of invention where the invention does not have unity because the shared technical feature does not make a contribution over the prior art a restriction between the inventions is proper. Applicant has applied the improper analysis (MPEP 809, 803, 808.02) in the argument made against the restriction.
The requirement is still deemed proper and is therefore made FINAL.
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.
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 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 20140166029 A1 (hereinafter WEIGENSBERG) in view of US 20060144412 A1 (hereinafter MISHRA). MISHRA was made of record in the office action mailed June 8, 2026.
Regarding claim 5, WEIGENSBERG discloses an electronic cigarette with a flavor enhancement to improve or add to the flavor an e-cig (abstract). WEIGENSBERG discloses the smoking substitute device (Fig. 1, e-cig, ¶22) having a fluid inlet (Fig. 1, air flow 108 passing a flow sensor 104, ¶23) that is fluidly connected to a fluid outlet (mouthpiece ¶24) by a passageway (Fig. 1, air flow 108, ¶22) in which an aerosol generator (Fig. 1, heating element 111, ¶22) is positioned. WEIGENSBERG further discloses that the smoking substitute device comprises a flavourant provider (¶24). WEIGENSBERG discloses that the e-cig may include one or more flavor enhancement mechanisms or flavor boosters (¶24). WEIGENSBERG teaches that the enhancement mechanism may be selected from several types such as a shell (¶30), a sticker (¶29), or the wick or heating element itself (¶41) in order to provide both gustatory and olfactory enhancements to the e-Cig (¶24).
WEIGENSBERG does not disclose a flavourant provider of claim 1.
MISHRA teaches an improved delivery of additives through encapsulation using cross-linking (abstract). MISHRA teaches that the preferred polymer used for encapsulant include polysaccharides (¶22) and that suitable sorbents also include fibers (¶76, ¶81-¶82). Further it is made of note that polysaccharide is a broad term in the art meaning a “carbohydrate polymer of many monosaccharides” and includes materials such as cellulose, starch, agar, pectin, polysugar, polysialic acid, glycoside, and many more (See OneLook Thesaurus reference included in office action mailed June 8, 2026). MISHRA teaches that the encapsulated flavorant is crosslinked with filler polymers (i.e. polysaccharides and others ¶23-¶24). MISHRA teaches that the encapsulated additive may be a microcapsule (¶98). MISHRA teaches that the encapsulated additives are added to smoking articles to provide additives to the mainstream smoke while overcoming the migration disadvantages caused by providing additives alone (¶16).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified WEIGENSBERG to provide a flavourant provider of claim 1 as taught in MISHRA. WEIGENSBERG discloses the addition of flavor carrying enhancers to modify the taste of the vapor (¶24). WEIGENSBERG teaches through several embodiments possible enhancers including the teaching of a shell formed from cellulose acetate or an impregnated sponge (¶30). A person of ordinary skill in the art would obviously use the encapsulated flavorant of MISHRA as the flavor enhancer carrier in WEIGENSBERG. Doing so would provide enhancement of the e-cig flavor to the user (WEIGENSBERG ¶24) while preventing flavor migration (MISHRA ¶16). This is a motivation to combine supported by (A) Combining prior art elements according to known methods to yield predictable results (See MPEP 2143, I, (A)).
Regarding claim 6, modified WEIGENSBERG discloses the smoking substitute device according to claim 5 as discussed above. WEIGENSBERG further discloses wherein the flavourant provider is positioned in the passageway between the fluid outlet and the aerosol generator (¶24). WEIGENSBERG discloses that the enhancer may be adjacent the cartomizer or in the mouthpiece (¶24). This is considered to be in the passageway between the fluid outlet and the generator. See also Fig. 7.
Regarding claim 7, modified WEIGENSBERG discloses the smoking substitute device according to claim 6 as discussed above. WEIGENSBERG further discloses wherein the flavourant provider is frictionally disposed in the passageway (¶36).
Regarding claim 8, modified WEIGENSBERG discloses the smoking substitute device according to claim 5 as discussed above. WEIGENSBERG further teaches wherein the flavourant provider is positioned between a reservoir for an aerosol precursor and a heating element, such that the flavourant provider acts as a wick for delivering aerosol precursor to the heating element.
WEIGENSBERG teaches an alternate embodiment where the wick includes the flavoring agent (¶41). WEIGENSBERG teaches that when the wick is flavored the first few puffs of the e-Cig may be improved by the flavor agent on the wick being activated which may overcome any initial burning smell (¶41). With this embodiment, the wick is the flavorant provider (see also claim 14). So when e-liquid is wicked and provided to the heater this claim limitation is met (¶4).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of WEIGENSBERG to wherein the flavourant provider is positioned between a reservoir for an aerosol precursor and a heating element, such that the flavourant provider acts as a wick for delivering aerosol precursor to the heating element. A person of ordinary skill in the art would obviously provide a flavored wick in a smoking device. Doing so would improve the first few puff of the e-cig to prevent an initial burning smell (¶41).
Regarding claim 9, modified WEIGENSBERG discloses the smoking substitute device according to claim 5 as discussed above. WEIGENSBERG further discloses wherein there are a plurality of flavourant providers (¶24). WEIGENSBERG discloses that the e-cig may include one or more flavor enhancement mechanisms (¶24).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over WEIGENSBERG and MISHRA as applied to claim 5 above, and further in view of US 20190183177 A1 (hereinafter HUBBARD.
Regarding claim 10, modified WEIGENSBERG discloses the smoking substitute device according to claim 5 as discussed above. WEIGENSBERG does not disclose an aerosol precursor that is substantially free of flavourant.
HUBBARD teaches aerosol delivery devices with an atomizer for delivering an aerosol precursor composition to a user (abstract). HUBBARD teaches that in certain embodiments the aerosol precursor composition is substantially flavorant-free (¶6). HUBBARD discloses that when several aerosols are used it may be advantageous for the precursor solution to be substantially flavorant-free (¶13). HUBBARD teaches, “that the liquid precursor composition can be substantially flavorant-free so that flavorant compounds are not subjected to conditions within the atomizer that may lead to decomposition or other chemical modification of the flavorant, which could potentially cause deleterious impact on the aerosol delivered by the device, such as negative sensory impact.” (¶28).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified WEIGENSBERG to provide an aerosol precursor that is substantially free of flavourant as taught in HUBBARD. A person of ordinary skill in the art would obviously provide a flavourant free precursor. Doing so would prevent decomposition of chemical modification of the downstream flavourant (HUBBARD ¶28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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