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
The amendments entered on 9/9/2026 have been accepted. Claims 1, 3, 5-7, 11 are amended. Claims 1, 3, 5-11 are pending. Applicant’s amendments to the claims have overcome the 112(b) rejections previously set forth in the non-final office action mailed 6/9/2026. Applicant’s amendments to the claims have overcome the 112(a) rejections previously set forth in the non-final office action mailed 6/9/2026, as the limitation in question has been removed and the new limitation is considered to be conventional in the art and would be able to be achieved by the person of ordinary skill (that being having aerosol particle size from 2-5μm). Applicant’s amendments to the claims have overcome the objections previously set forth.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 line 2 should read “…an axial length of the protrusion”, as “the” was removed from the claim but “an” was not added to properly introduce this aspect.
Appropriate correction is required.
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 1, 3, 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Leadley (US2019/0083720A1, of record) in view of Han (KR20210012309A, of record).
Regarding claim 1, Leadley teaches a smoking substitute apparatus (vapor provision apparatus [title]) comprising:
An air inlet (air inlet holes such as “214” which bring in atmospheric air to the atomizer [0031-0032]),
An aerosol generator for generating an aerosol from an aerosol precursor for inhalation by a user (atomizer vaporizes liquid into aerosol where it exits through the outlet to a user [abstract, 0032], wherein the aerosol material is stored in the chamber 270),
An outlet formed at a mouthpiece (outlet 280 [0032, Fig. 3]),
An aerosol delivery conduit extending downstream from the aerosol generator to the outlet (air channel wall 432 and air channel 433 which extends from the vapor generation chamber to the vapor outlet through which vapor exits the device during use [0074]),
At least one air flow path between the air flow inlet and outlet and along the aerosol delivery conduit for conveying the aerosol to the user (the air flow path is considered to be from the air inlet to the vaporizer, then through the air channel to the outlet [see Figs. 10a-10b, 0074-0075]),
Wherein, in operation, the aerosol generator heats the aerosol precursor to form vaporized aerosol precursor, the vaporized precursor being transported in the air flow and condensing to form aerosol droplets (the atomizing chamber 465 as in Figs. 10a-10b includes a wick and a heater 450, wherein e-liquid is vaporized and transferred to the outlet [0040]. This would clearly also form droplets during condensation during the temperature change thereof),
Wherein the at least one air flow path and the aerosol generator are configured to control the air flow characteristics at the aerosol generator to provide an aerosol with predetermined particle size characteristics at a first position along the air flow path in the aerosol delivery conduit (the device would necessarily provide a predetermined aerosol droplet size depending on the exact conditions that the aerosol generator and air flow as set. The air channel’s air flow may be set specifically depending on the desired characteristics [0077-0078]),
The apparatus further comprises an air flow disruptor disposed in the aerosol delivery conduit at or downstream of the first position, causing disruption of the air flow downstream of the air flow disruptor and cooling the droplets and wherein the disruptor is a protrusion extending laterally from a side wall (the air flow disruptor may be considered to be, for example, the protrusion “760” which extends laterally from a sidewall of the air channel as in Figs. 12a-12b. The protrusions may also be considered to be “835” as in Figs. 14a-b, for example. In either case, the protrusions extend from a sidewall into the path of the air flow in the air channel, necessarily cause a disruption in the air flow [see Fig. 12b], and would necessarily lead to a cooling of the droplets because of the increased turbulent flow and because of the contact with the protrusion leading to a decrease in temperature [0082-0088]. The first position may be considered to be any position at or prior to the protrusion along the air flow path).
Leadley does not explicitly show a taper in aerosol delivery conduit. However, it is common in the art to have the conduit (the outlet pipe from the atomizer to the outlet) be in a decreasing taper. Han, for example, discloses an aerosol generating device with an atomizer “130”, wherein the vaporized aerosol travels along the airflow path “200” to the outlet “202” [see Fig. 1a, pgs. 2-3 of machine translation]. There is included a flow inclined surface where the walls are inclined towards the outlet and where the cross-sectional area tapers and constricts moving towards the outlet [pg. 3-4 of machine translation], such that this clearly sees the area decrease moving along the principal axis from the upstream to downstream directions. The taper may have a variety of different shapes, and there may be a taper/decreasing cross-section along the entire distance from the atomizer to the outlet [pg. 4 of machine translation, see Fig. 3]. Han further suggests that protrusions may be located along the taper [see Figs. 1c and 2c].
One of ordinary skill in the art would have found it obvious to modify the conduit of Leadley so as to have a taper as suggested by Han. One would have been motivated so as to ensure that the aerosol generated is smoothly moved along the airflow path, which makes the delivery of the generated aerosol easier [pg. 3-4 of machine translation]. Because Leadley’s protrusions as in Fig. 12b may be located along the entire extent of the air channel, and because Han suggests that the taper may be present for up to the entire extent of the air channel, the protrusion of the flow disruptor would necessarily be located on the tapered portion of the aerosol delivery conduit.
Regarding claim 3, modified Leadley makes obvious the tapered portion extends for at least ¼ of an axial length of the aerosol delivery conduit (Han fig. 1A clearly suggests a tapered portion that is at least ¼ of the length of the conduit. And further, Han clearly suggests as in Fig. 3 that the tapered portion may be present along the entire extent from the atomizer to the outlet from the device, such that this would clearly be above one quarter of the length).
Regarding claim 5, modified Leadley makes obvious the protrusion extending from the sidewall of the aerosol delivery conduit (as noted above, the protrusions as in Fig. 12 and 14 clearly extend from the sidewall), the protrusion extending in a direction substantially perpendicular to the principal axis towards the principal axis for a radial protrusion distance of less than half of the diameter of the aerosol delivery conduit at the position of the protrusion (see Fig. 12A, wherein this is a cross-section along the air channel such that the principal axis would be going into/out of the page, akin to the instant Fig. 23. The radial protrusion distance would be the extension up/down in Fig. 12A, and this is clearly less than half of the diameter of the air channel at this portion of the protrusion. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125).
Regarding claim 6, modified Leadley makes obvious the axial length of the protrusion along the axial direction is 0.5 to 2 times the radial protrusion distance (Fig. 12B of Leadley provides a view of the protrusions along the axial extent of the aerosol delivery conduit. The radial protrusion distance would be up/down, and the axial distance would be left/right of each protrusion. From a measurement of the figures, the axial length of the protrusion is approximately 0.5 compared to a standard value of 1.0 for the radial distance, yielding an axial length of approximately 0.5 times the radial distance. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And additionally/alternatively, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). See MPEP 2144.04 (IV). Applicant has not demonstrated any showing of unexpected results nor criticality to its claimed range).
Regarding claim 7, modified Leadley makes obvious an apparatus wherein circumferential length of the protrusion is 0.5 to 2 times the radial protrusion distance (Fig. 12A provides a view of the protrusion along a cross-section of the air channel, such that the radial distance is up/down and the circumferential length is left/right. From only a simple observation, the circumferential length is well within the claimed range, and has a circumferential length that is approximately 1.3 times that of the radial distance based upon Fig. 12A. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125. And additionally/alternatively, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). See MPEP 2144.04 (IV). Applicant has not demonstrated any showing of unexpected results nor criticality to its claimed range).
Regarding claim 8, modified Leadley makes obvious an apparatus wherein the protrusion includes an air flow facing surface which is disposed obliquely to the principal axis of the aerosol delivery conduit and impacted by air from the upstream to downstream direction (see Leadley Fig. 14A, for example, wherein the protrusion may be formed at an angle inclined to the air channel wall [0087]. As the principal axis is along the direction of the air flow “836”, the protrusion arranged at the angle is clearly arranged obliquely to it, and would be impacted by air from upstream to downstream directions [Fig. 14A]. The angle of the protrusion may be set at a variety of angles, such as from 10-70deg [0089]).
Regarding claim 9, modified Leadley makes obvious an apparatus wherein the air flow facing surface is substantially planar (see Fig. 14A for example, wherein the air flow facing surface is clearly planar).
Regarding claim 10, modified Leadley makes obvious an apparatus wherein the protrusion has the form of a blade (the protrusions of either Figs. 12a-b and 14a-14b are considered to be in the shape of a blade, because they are substantially rectangular and have a longer extent than width. The protrusions also look substantially similar to that of the instant application Figs. 23-24).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Leadley (US2019/0083720A1, of record) in view of Han (KR20210012309A, of record), as applied to claim 1 above, and further in view of Janardhan (US2021/0127740A1, of record) and at least one of Nerudia (EP3794989A1) and Wensley (US20160213065A1).
Regarding claim 11, Leadley comprises aerosol precursor which is a liquid stored in the reservoir to be vaporized [0029]. Leadley does not explicitly give the temperatures at a first position at/before the protrusion and a second position at the outlet. However, temperatures at the claimed ranges are common within the art. Janardhan teaches a smoking substitute apparatus (Figs. 3-4) with an air flow path between the inlet 440 and outlet 21, where the aerosol generator is considered to be the heater 319 and wick 328 together which generates an aerosol [0043]. The apparatus includes a mechanical aerosol convertor insert (MAC) “32”, where the MAC is included in the air flow path moving towards the outlet and functions as a protrusion which adjusts the air flow [see Fig. 4 for location of the MAC and Figs. 8-10 for exemplary embodiments]. The MAC results in heat exchange such that such that the temperature is reduced, for a temperature reduction of 30C or more when it is included [0079]. The temperatures without the MAC insert, akin to the temperatures at a location prior to the insert, are much greater than 70C [Table 1, 0079]. The embodiments with the MAC insert are cooled at or below 60C [0079-0083, Table 1]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to modify the apparatus with the suggested temperatures of Janardhan. One would have been motivated so as to lower the outlet temperature and to improve the mouth feel [0081-0082]. As Leadley’s apparatus includes protrusions in the air flow path of the same manner as Janardhan, one of ordinary skill in the art would have expected similar temperature drops at the different positions.
Leadley does not explicitly give the aerosol particle size at the positions with a Dv50 particle size from 2-5μm, however having particle sizes ranging from 2-5μm is conventional within the art and would have been obvious. Nerudia, for example, teaches a smoking substitute apparatus [title] which is similarly concerned with turbulent air properties and particle sizes [see Figs. 9-20, for example]. Nerudia has the d50 particle size preferably from 1-5um for example [0039], wherein the droplet size d50 is defined in the same manner as the instant specification [0040]. One of ordinary skill in the art would have found it obvious so as to set the aerosol particle size within the range as suggested by Nerudia. One would have been motivated so as to improve interaction between the aerosol particles and the user’s lungs [0039]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And as these particle sizes yield beneficial properties, it would have been obvious for the person of ordinary skill in the art to situate the particle size at the first/second positions within this range and to reasonably expect the beneficial properties. Additionally, applicant has not demonstrated any showing of criticality nor unexpected results.
In the alternate, Wensley teaches an electronic vaporization device [abstract, Figs. 1+] in the same field of endeavor. Wensley teaches that the device may produce an aerosol with a particle size in the range of 1-3 microns. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the aerosol particle size to be as suggested by Wensley. One would have been motivated so as to settle in the lung more efficiently and to prevent the particles from being easily exhaled [0052]. And as Wensley suggests a particle size of this, this would overlap with a Dv50 particle size value, as the Dv50 particle size would have a wider range of values (as it merely means that 50% of the sample’s volume is smaller and 50% is larger). And as these particle sizes yield beneficial properties, it would have been obvious for the person of ordinary skill in the art to situate the particle size at the first/second positions within this range and to reasonably expect said beneficial properties. Additionally, applicant has not demonstrated any showing of criticality nor unexpected results.
Claims 1, 3, 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (EP3692830A1, of record) in view of Han (KR20210012309A, of record).
Regarding claim 1, Murray teaches a smoking substitute apparatus (smoking substitute device [title]) comprising:
An air inlet (air inlet 107 [Fig. 3]),
An aerosol generator for generating an aerosol from an aerosol precursor for inhalation by a user (the aerosol generator is the combination of the wick “110” and the heating element “111”, which generates an aerosol from the e-liquid “104” [Fig. 3, 0061]),
An outlet formed at a mouthpiece (outlet “108”),
An aerosol delivery conduit extending downstream from the aerosol generator to the outlet (fluid flow passage “106” extends between the air inlet “107” and the outlet “108” at opposite sides of the consumable [Fig. 3, 0060]),
At least one air flow path between the air flow inlet and outlet and along the aerosol delivery conduit for conveying the aerosol to the user (as in Fig. 3, the air flow path is shown by the arrows and travels between the inlet to the outlet through the conduit “106”),
Wherein, in operation, the aerosol generator heats the aerosol precursor to form vaporized aerosol precursor, the vaporized precursor being transported in the air flow and condensing to form aerosol droplets (as stated previously, the aerosol generator “110”/”111” heats the e-liquid “104” to form vaporized precursor which travels through the airflow path [Fig. 3, 0060], and droplets would necessarily form when traveling along the surface due to condensation),
Wherein the at least one air flow path and the aerosol generator are configured to control the air flow characteristics at the aerosol generator to provide an aerosol with predetermined particle size characteristics at a first position along the air flow path in the aerosol delivery conduit (the device would necessarily provide a predetermined aerosol droplet size depending on the exact conditions that the aerosol generator and air flow as set. The air channel’s air flow may be set specifically depending on the desired characteristics [0062]),
The apparatus further comprises an air flow disruptor disposed in the aerosol delivery conduit at or downstream of the first position, causing disruption of the air flow downstream of the air flow disruptor and cooling the droplets and wherein the disruptor is a protrusion extending laterally from a side wall (the air flow disruptor may be considered to be, for example, the protrusions that are shown in Figs. 6-8. As these project into the air flow path, these would clearly disrupt the air flow, and there is formed a condensation surface “130” due to the cooling of the vapor. The first position is considered any position at or prior to the protrusion along the air flow path),
Murray does not explicitly show a taper in aerosol delivery conduit. However, it is common in the art to have the conduit (the outlet pipe from the atomizer to the outlet) be in a decreasing taper. Han, for example, discloses an aerosol generating device with an atomizer “130”, wherein the vaporized aerosol travels along the airflow path “200” to the outlet “202” [see Fig. 1a, pgs. 2-3 of machine translation]. There is included a flow inclined surface where the walls are inclined towards the outlet and where the cross-sectional area tapers and constricts moving towards the outlet [pg. 3-4 of machine translation], such that this clearly sees the area decrease moving along the principal axis from the upstream to downstream directions. The taper may have a variety of different shapes, and there may be a taper/decreasing cross-section along the entire distance from the atomizer to the outlet [pg. 4 of machine translation, see Fig. 3]. Han further suggests that protrusions may be located along the taper [see Figs. 1c and 2c].
One of ordinary skill in the art would have found it obvious to modify the conduit of Murray so as to have a taper as suggested by Han. One would have been motivated so as to ensure that the aerosol generated is smoothly moved along the airflow path, which makes the delivery of the generated aerosol easier [pg. 3-4 of machine translation]. Because Murray’s protrusions may be located along an extent of the air channel, and because Han suggests that the taper may be present for up to the entire extent of the air channel from the vaporizer to the outlet, the protrusion of the flow disruptor would necessarily be located on the tapered portion of the aerosol delivery conduit.
Regarding claim 3, modified Murray makes obvious the tapered portion extends for at least ¼ of an axial length of the aerosol delivery conduit (Han fig. 1A clearly suggests a tapered portion that is at least ¼ of the length of the conduit. And further, Han clearly suggests as in Fig. 3 that the tapered portion may be present along the entire extent from the atomizer to the outlet from the device, such that this would clearly be above one quarter of the length).
Regarding claim 5, modified Murray makes obvious the protrusion extending from the sidewall of the aerosol delivery conduit (as noted above, the protrusions as in Figs. 6-8 clearly extend from the sidewall), the protrusion extending in a direction substantially perpendicular to the principal axis towards the principal axis for a radial protrusion distance of less than half of the diameter of the aerosol delivery conduit at the position of the protrusion (see Fig. 6 and 8, wherein each embodiment has a protrusion extending in a direction substantially perpendicular to the principal axis where the principal axis is up/down in the figures. It is noted that “substantially” is treated as a broad term as the instant specification does not specifically define this, MPEP 2173.05(b). The upper protrusions of Fig. 8 and the protrusions of Fig. 6 are both considered substantially perpendicular, as they are largely or nearly entirely in the perpendicular direction. In both embodiments, the protrusions extend less than half of a radial distance of the diameter of the conduit. Moreover, it is held that guidance as provided by the figures is sufficient to enable public possession of an inventive concept. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125).
Regarding claim 6, modified Murray makes obvious the axial length of the protrusion along the axial direction is 0.5 to 2 times the radial protrusion distance (the axial length of the protrusions would be in an up/down direction in Figs. 6-8. Murray does not limit the size of its protrusions/fins [0068-0071]. Tt has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). See MPEP 2144.04 (IV). Applicant has not demonstrated any showing of unexpected results nor criticality to its claimed range).
Regarding claim 7, modified Murray makes obvious an apparatus wherein circumferential length of the protrusion is 0.5 to 2 times the radial protrusion distance (The protrusions as shown in Figs. 6 and 8 would necessarily have a circumferential extent to them, which would be the extent along the circumference of the conduit. It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). See MPEP 2144.04 (IV). Applicant has not demonstrated any showing of unexpected results nor criticality to its claimed range).
Regarding claim 8, modified Murray makes obvious an apparatus wherein the protrusion includes an air flow facing surface which is disposed obliquely to the principal axis of the aerosol delivery conduit and impacted by air from the upstream to downstream direction (see Murray Figs. 7-8 in particular, wherein the protrusions may be formed at an angle inclined to the air channel wall. As the principal axis is up/down in these figures, the protrusion/fin arranged at an angle would clearly be arranged obliquely to it, and would be impacted by air from upstream to the downstream direction. The angle of the protrusion may be adjusted [0071, Fig. 8]).
Regarding claim 9, modified Murray makes obvious an apparatus wherein the air flow facing surface is substantially planar (see Figs. 7-8 of Murray, wherein the fins “132” are clearly substantially planar, and wherein the condensation “130” forms on an upstream surface thereof).
Regarding claim 10, modified Murray makes obvious an apparatus wherein the protrusion has the form of a blade (the protrusions of any of Figs. 6-8 are considered to be in the shape of a blade, because they are substantially rectangular and have a long extent. The protrusions also look substantially similar to that of the instant application Figs. 23-24, and the instant application does not specifically define blade such that the term is given its broadest reasonable interpretation).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Murray (EP3692830A1, of record) in view of Han (KR20210012309A, of record), as applied to claim 1 above, and further in view of Janardhan (US2021/0127740A1, of record), and at least one of Nerudia (EP3794989A1) and Wensley (US20160213065A1).
Regarding claim 11, Murray comprises aerosol precursor which is an e-liquid stored in the reservoir to be vaporized [Fig. 3]. Murray does not explicitly give the temperatures at a first position at/before the protrusion and a second position at the outlet. However, temperatures at the claimed ranges are common within the art. Janardhan teaches a smoking substitute apparatus (Figs. 3-4) with an air flow path between the inlet 440 and outlet 21, where the aerosol generator is considered to be the heater 319 and wick 328 together which generates an aerosol [0043]. The apparatus includes a mechanical aerosol convertor insert (MAC) “32”, where the MAC is included in the air flow path moving towards the outlet and functions as a protrusion which adjusts the air flow [see Fig. 4 for location of the MAC and Figs. 8-10 for exemplary embodiments]. The MAC results in heat exchange such that such that the temperature is reduced, for a temperature reduction of 30C or more when it is included [0079]. The temperatures without the MAC insert, akin to the temperatures at a location prior to the insert, are much greater than 70C [Table 1, 0079]. The embodiments with the MAC insert are cooled at or below 60C [0079-0083, Table 1]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art would have found it obvious to modify the apparatus with the suggested temperatures of Janardhan. One would have been motivated so as to lower the outlet temperature and to improve the mouth feel [0081-0082]. As Murray’s apparatus includes protrusions in the air flow path of the same manner as Janardhan, one of ordinary skill in the art would have expected similar temperature drops at the different positions.
Murray does not explicitly give the aerosol particle size at the positions with a Dv50 particle size from 2-5μm, however having particle sizes ranging from 2-5μm is conventional within the art and would have been obvious. Nerudia, for example, teaches a smoking substitute apparatus [title] which is similarly concerned with turbulent air properties and particle sizes [see Figs. 9-20, for example]. Nerudia has the d50 particle size preferably from 1-5um for example [0039], wherein the droplet size d50 is defined in the same manner as the instant specification [0040]. One of ordinary skill in the art would have found it obvious so as to set the aerosol particle size within the range as suggested by Nerudia. One would have been motivated so as to improve interaction between the aerosol particles and the user’s lungs [0039]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And as these particle sizes yield beneficial properties, it would have been obvious for the person of ordinary skill in the art to situate the particle size at the first/second positions within this range and to reasonably expect the beneficial properties. Additionally, applicant has not demonstrated any showing of criticality nor unexpected results.
In the alternate, Wensley teaches an electronic vaporization device [abstract, Figs. 1+] in the same field of endeavor. Wensley teaches that the device may produce an aerosol with a particle size in the range of 1-3 microns. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the aerosol particle size to be as suggested by Wensley. One would have been motivated so as to settle in the lung more efficiently and to prevent the particles from being easily exhaled [0052]. And as Wensley suggests a particle size of this, this would overlap with a Dv50 particle size value, as the Dv50 particle size would have a wider range of values (as it merely means that 50% of the sample’s volume is smaller and 50% is larger). And as these particle sizes yield beneficial properties, it would have been obvious for the person of ordinary skill in the art to situate the particle size at the first/second positions within this range and to reasonably expect said beneficial properties. Additionally, applicant has not demonstrated any showing of criticality nor unexpected results.
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant argues on pgs. 8-10 of their filed Remarks dated 9/9/2026 that the protrusions of Leadley introduce turbulence while Han’s taper provides smooth movement of aerosol along the airflow path, such that there would be no reason to combine as this is contrary to Leadley’s intention.
The Examiner respectfully disagrees. Han clearly provides embodiments which possess both a taper and protrusions that are located at the tapered portions (see Figs. 1c and 2c of Han). These guides may be formed to “protrude a predetermined distance” from one side and they may be spaced apart from each other, such that these protrusions are situated so as to “control the flow of aerosol generated” and to “increase the mixing effect of air” (i.e., increase turbulence). It is noted that these protrusions are located specifically at tapered portions of the tube. It is clear from the teachings of Han that the smooth movement of having the tapered shape does not negatively work with having protrusions in the tube, but rather they can work together as evidenced by these embodiments. The taper causing a movement of air does not preclude the addition of protrusions nor the impact of the turbulence, as the overall airflow must still exit outwards towards a user. Applicant’s arguments are found unconvincing.
Additionally, it must be noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Where having a protrusion as taught by Leadley and a taper as taught by Han are obvious, the combined teachings of these reference would have reasonably suggested the smoking apparatus with the protrusion formed on the tapered portion. And if Applicant intends to argue teaching away, it is noted that there is no basis in Leadley which teaches away from having a taper in the pipe. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123. A teaching away is generally recognized as needing to “criticize, discredit, or otherwise discourage the solution claimed”, see MPEP 2145 X. Leadley in no way does any of these actions regarding a potential taper of its pipe, such that the combination with Han is still found reasonable.
Applicant argues that Leadley’s protrusions would not be necessarily located on Han’s tapered portion, and that the combination of these specific embodiments is impermissible hindsight. Applicant argues that neither reference teaches or suggests the claimed combination.
The Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the rationale was taken only from the prior art in question and does not include knowledge gleaned only form the applicant’s disclosure. The embodiments and the rationale thereof are described in the prior art, such that there is no impermissible hindsight. And regarding the modifications as made, as the tapered portion may be made to extend across the entirety of the pipe, it would necessarily result in the protrusions being formed on the taper.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s arguments against Leadley and Han individually are not convincing as the rejection is based upon the combination thereof.
Applicant argues that Murray does not teach the inclusion of the protruding elements to provide controlled introduction of turbulence to promote further cooling of the droplets.
In response to applicant's argument that Murray’s invention obtains different results, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). And as Murray contains protrusions which are on the aerosol delivery conduit in the same manner as the instant application, this structure would result in the same effect of turbulence of the airflow even if Murray does not explicitly state as such. "When the claimed and prior art products of identical or substantially identical in structure or composition, a prima facie case of obviousness has been established”, see MPEP 2112.01 I. And further, "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”, see MPEP 2112.01 II.
Applicant argues on pg. 11 that “Combining Murray’s air disrupting elements with Han’s taper would run contrary” to the teachings of Han to use a taper for smooth movement.
Applicant appears to be admitting that Murray’s protrusions would be “air disrupting elements” despite their earlier arguments stating that Murray would not result in turbulent flow. The Examiner agrees that Murray’s protrusions may be considered to be air disrupting elements because of their presence in the air outlet pipe. Regarding the combination of references, the Examiner respectfully disagrees. As with the response to arguments of Leadley/Han above, there is no teaching away in Murray that would preclude the suggested combination, Han provides evidence that the combination of a taper and protrusions may result in beneficial properties, and motivation is provided in Murray/Han for the stated combination. Applicant’s arguments are not found convincing.
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.
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
