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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 3/22/2026 has been considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities: pg. 26 line 36 should read “the” instead of “thee”.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract of the disclosure is objected to because it is well over 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 3, 5-7, 11 are objected to because of the following informalities:
Claim 3 line 3 should read “…an axial length of the aerosol delivery conduit” because this was not previously introduced.
It is recommended that claim 5 lines 2-3 have the following lines removed because the exact same verbiage is already present in claim 1 2nd page lines 3-4: “wherein the protrusion of the flow disruptor extends from the side wall of the aerosol delivery conduit,”.
Claim 6 lines 1-2 should read “…wherein an axial length of the protrusion, projected along an axial direction of…”, because these were not previously introduced.
Claim 7 line 2 should read “…wherein a circumferential length of the protrusion”, because this was not previously introduced.
Claim 11 lines 2-3 should read “…wherein an average temperature of the droplets at the first position is at least 70C, and so that an average temperature of the aerosol droplets…”, because these were not previously introduced.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, the limitation of claim 11: “wherein the aerosol particle size characteristics are substantially the same at the first position as at the second position”.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim 11 covers a smoking substitute apparatus which has aerosol particle size characteristics which are substantially the same at the first and second positions, where the size characteristics may be diameter (although not expressly limited to this). The first position is located at or before the air flow disruptor (protrusion), and the second position is located at the outlet. After consideration of the factors above, it is determined that the specification does not provide direction on how to achieve a substantially same particle size at the first position and the second position.
Applicant’s originally filed specification details that there are a substantial number of factors which affect the particle size, including at least the air flow path/turbulence rate, flow speed and air velocity (including average and maximum velocities), temperature of the inlet air, cooling rate through the device, and the chosen type of aerosol precursor (see Figs. 9-16 and pgs. 11-12 of the instant specification, for example). The claims do not cover all or even most of these varying factors (only dealing with the presence of a protrusion and preferred temperature), such that the breadth of the claims is limited and do not recite the critical factors which affect the aerosol particle size.
The state of the art acknowledges that the inclusion of protrusions in the air flow path increases turbulence, decreases temperature, and affects the particle size distribution (see Janardhan [Figs. 4, 9, 0071-0072, 0074, 0082]). It does not seem standard in the prior art or well known to one of ordinary skill in the art to provide protrusions while also keeping a particle size the same on both sides of the protrusion. Keeping the particle size the same while also including protrusions (which would lower the particle size via the increase in turbulent flow) is contrary for the inclusion of protrusions.
While Applicant does provide some amount of direction via identifying several factors which affect a particle size distribution, these are not meaningfully combined into a single embodiment or suggested to a person of ordinary skill in the art how the apparatus is to be controlled so as to ensure that the particle size remains constant. The identified factors affect the particle size in varying and contrasting ways that would lead to very different results in the particle size depending on which variables are chosen. There would essentially have to be chosen a perfect balance in all of these known variables so as to hit a “sweet spot”, wherein the other particle size factors would counteract the natural decrease in particle size that would be expected given the increase in turbulent flow because of the protrusion. It is not at all clear what this would look like, or how one of ordinary skill in the art would arrive upon the limitation as claimed.
Applicant has not provided any working examples wherein the particle size characteristics are substantially the same at the first and second positions.
The specification does not adequately express how these various contrasting and conflicting factors are to be combined so as to keep an aerosol particle size the same at the first and second positions. It would necessitate a considerable amount of experimentation so as to determine the optimum type of aerosol precursor, cooling rate, temperature of the inlet air, temperature of the vaporizer, flow speed and air velocity, and air flow path characteristics so as to ensure that the particle size at the first and second positions were substantially the same. Applicant provides no clear path forward for determining how to achieve this other than identifying the factors that affect the particle size.
With regards to factors (B) and (D)-(E), these factors have been considered but do not resolve the issue of undue experimentation. As such, claim 11 rejected under 35 USC 112(a) as failing to comply with the enablement requirement.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 introduces “at least one air flow path”. The claim further recites in the following recitations in lines 13, 15, 21 “…the air flow path”. From this singular recitation, it isn’t clear whether the claims are limiting the apparatus to a singular air flow path, or in the case where there still may be multiple air flow paths, whether the cited limitation would apply to only one air flow path or to ALL of the at least one air flow paths. Applicant is asked to amend and clarify without the addition of new matter. Claims 3, 5-11 are rejected for relying upon the same claim. The claim will be examined such that lines 13, 15, and 21 each read “…the at least one air flow path”.
Claim 11 line 4 recites “…the air flow path”. However, this is introduced in claim 1 of which this claim depends as “at least one air flow path”. From this singular recitation, it isn’t clear whether the claims are limiting the apparatus to a singular air flow path, or in the case where there still may be multiple air flow paths, whether the cited limitation would apply to only one air flow path or to ALL of the at least one air flow paths. Applicant is asked to amend and clarify without the addition of new matter. The claim will be examined such that line 4 reads “…the at least one air flow path”.
Claim 11 line 6 states “…wherein the aerosol particle size characteristics are substantially the same at the first position as at the second position”. The term “substantially” is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no way of knowing what would be considered substantially the same and what would be considered not substantially the same.
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) in view of Han (KR20210012309A).
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].
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) in view of Han (KR20210012309A), as applied to claim 1 above, and further in view of Janardhan (US2021/0127740A1).
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. And as the particle size would be dependent upon the heater, temperature, type of precursor substance, air flow, etc., the particle size would reasonably be considered to be substantially the same at the two positions dependent upon the exact specifics of the other factors utilized, as Leadley modified by Han/Janardhan suggests a smoking apparatus which is substantially the same as that of the instant application.
Claims 1, 3, 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Murray (EP3692830A1) in view of Han (KR20210012309A).
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].
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) in view of Han (KR20210012309A), as applied to claim 1 above, and further in view of Janardhan (US2021/0127740A1).
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. And as the particle size would be dependent upon the heater, temperature, type of precursor substance, air flow, etc., the particle size would reasonably be considered to be substantially the same at the two positions dependent upon the exact specifics of the other factors utilized, as Murray modified by Han/Janardhan suggests a smoking apparatus which is substantially the same as that of the instant application.
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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