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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following limitations are being interpreted under 35 U.S.C. 112(f):
“means to remove chemicals“ in claim 12. The term “means” is modified by purely functional language “to remove chemicals” [0090]. The term “means” specifies a clear function completely unaccompanied by any structural language, material or act within the claim body that would be capable of performing the chemical removal function [0090]. Therefore, “means to remove chemicals” will be interpreted as solid additive.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 8-10 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 8 recites the limitation "one or more bodies" in line 2. Claim 1 already establishes the presence of “one or more bodies that are sized to prevent ….” It is unclear whether the phrase “one or more bodies” in dependent claim 8 refers back to the original “one or more bodies” introduced in Claim 1 (thereby further limiting their shape or structure), or if it is intended to introduce a new, separate, and distinct set of bodies apart from those already recited in Claim 1. For examination purposes, the limitation will be interpreted as ‘the one or more bodies’.
Claim 9 recites the limitation "one or more bodies" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 already establishes the presence of “one or more bodies that are sized to prevent ….” It is unclear whether the phrase “one or more bodies” in dependent claim 9 refers back to the original “one or more bodies” introduced in Claim 1 (thereby further limiting their shape or structure), or if it is intended to introduce a new, separate, and distinct set of bodies apart from those already recited in Claim 1. For examination purposes, the limitation will be interpreted as ‘the one or more bodies’.
Claim 10 recites the limitation "one or more bodies" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 already establishes the presence of “one or more bodies that are sized to prevent ….” It is unclear whether the phrase “one or more bodies” in dependent claim 10 refers back to the original “one or more bodies” introduced in Claim 1 (thereby further limiting their shape or structure), or if it is intended to introduce a new, separate, and distinct set of bodies apart from those already recited in Claim 1. For examination purposes, the limitation will be interpreted as ‘the one or more bodies’.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 7-9, and 12-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ricketts et al. (US 20180297048 A1).
Regarding Claim 1, Ricketts et al. discloses a cartridge (Figure 1, element 100) which contains a liquid aerosol-forming substrate (Figure 1, element 110), wherein the liquid aerosol-forming substrate comprises a solid additive (Figure 1, element 112), characterized in that the solid additive is provided in the form of one or more bodies ([0014]) that are sized to prevent the solid additive blocking the flow of liquid through the consumable ([0126]).
Regarding Claim 7, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches that when the capsules are spherical, the diameter of each capsule may be between about 0.5 mm and about 4 mm ([0038]) thus meeting the limitation of the bodies having a height in the range of 0.5 to 5mm.
Regarding Claim 8, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches a capsule comprising solid composition having elongate, spherical, spheroid, or ellipsoid shape ([0029]).
Regarding Claim 9, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches a capsule with solid composition that can be elongate since an ellipsoid would be elongate ([0029]).
Regarding Claim 12, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches a capsule encapsulating a second liquid aerosol-forming substrate comprising, for example, nicotine ([0121] and [0044]).
Regarding Claim 13, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches that at least one of the liquid aerosol-forming substrates preferably comprises a tobacco-containing material containing volatile tobacco flavor compounds ([0046]).
Regarding Claim 14, Ricketts et al. teaches a cartridge (Figure 1, element 100) which contains a liquid aerosol-forming substrate (Figure 1, element 110), wherein the liquid aerosol-forming substrate comprises a solid additive (Figure 1, element 112), characterized in that the solid additive is provided in the form of one or more bodies ([0014]) that are sized to prevent the solid additive blocking the flow of liquid through the consumable ([0126]).
Regarding Claim 15, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches a use of a capsule having solid composition ([0014]) placed in a canister (Figure 1, element 102, [0121]) of a cartridge (Figure 1, element 100).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ricketts et al. (US 20180297048 A1).
Regarding Claim 2, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches that the capsule has diameter which is 0.5mm to 4mm when configured in a spherical shape ([0038]). The diameter being 0.5-4mm would overlap with the instant claim requirement that the width, length and height are greater than 2mm. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05.
Regarding Claim 6, Ricketts et al. teaches the elements of Claim 1. Ricketts further teaches that when the capsules are spherical, the diameter of each capsule may be between about 0.5mm and about 4 mm ([0038]), which overlaps with the instantly claimed range of the bodies having a width in the range of 2 to 25mm. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05.
Claim(s) 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ricketts et al. (US 20180297048 A1) in view of Murray et al. (WO 2020161336 A1).
Regarding Claim 3, Ricketts et al. teaches the consumable of Claim 1. Ricketts fails to exclusively disclose that the one or more solid additive bodies comprise a width, a length and a height which are each greater than 2 mm. Murray et al. teaches a consumable (Figure 1A, element 103) featuring a spherical flavor delivery article (Figure 3A, element 340) with a size ranging from 1 mm to 20 mm. The size being 1-20 mm would overlap with the instant claim requirement that the width, length and height are greater than 2mm (overlapping ranges are prima facie evidence of obviousness, See MPEP 2144.05). Therefore, it would have been obvious to one of ordinary skills in the art before the time invention was made to modify the dimensions of the solid additive bodies of Ricketts with the dimensions disclosed by Murray. It is well established that varying the dimensions or sizing parameters of a solid matrix constitute a routine optimization of design variables yielding a predictable result.
Regarding Claim 4, Ricketts et al. teaches the consumable of Claim 1. Ricketts fails to exclusively disclose that the one or more bodies comprise at least one dimension greater than 5 mm. Murray et al. teaches a consumable (Figure 1A, element 103) featuring a spherical flavor delivery article (Figure 3A, element 340) with a size ranging from 1 mm to 20 mm. The size being 1-20 mm would overlap with the instant claim requirement that at least one dimension greater than 5 mm (overlapping ranges are prima facie evidence of obviousness, See MPEP 2144.05). Therefore, it would have been obvious to one of ordinary skills in the art before the time invention was made to modify the dimensions of the solid additive bodies of Ricketts with the dimensions disclosed by Murray. It is well established that varying the dimensions or sizing parameters of a solid matrix constitute a routine optimization of design variables yielding a predictable result.
Regarding Claim 5, Ricketts et al teaches the consumable of Claim 1. Ricketts fails to exclusively disclose that the one or more bodies comprise a length in the range 5 to 40 mm. Murray et al. teaches a consumable (Figure 1A, element 103) featuring a spherical flavor delivery article (Figure 3A, element 340) with a size ranging from 1 mm to 20 mm. The size being 1-20 mm would overlap with the instant claim requirement that one or more bodies comprise a length in the range 5 to 40 mm (overlapping ranges are prima facie evidence of obviousness, See MPEP 2144.05). Therefore, it would have been obvious to one of ordinary skills in the art before the time invention was made to modify the dimensions of the solid additive bodies of Ricketts with the dimensions disclosed by Murray. It is well established that varying the dimensions or sizing parameters of a solid matrix constitute a routine optimization of design variables yielding a predictable result.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ricketts et al. (US 20180297048 A1) in view of Hejazi (US 20210169140 A1).
Regarding Claim 10, Ricketts et al. discloses a consumable comprising a solid additive, teaching substantially all elements of Claim 1, including the solid additive configured in capsule form. Ricketts fails to explicitly disclose that the solid additive comprising one or more cavities through which the liquid aerosol-forming substrate may flow. However, Hejazi discloses aerosol-delivery device (Figure 7, element 400) comprising a flat sheet of flavor substrate (Figure 2A, element 100) that can be embossed and or include a plurality of perforations therethrough, which may be substantially round or may be elongated (Figure 2A, elements 104a &b, [0054]). It would have been obvious to one of ordinary skills in the art at the time invention was made to modify the solid additive of Ricketts to incorporate a perforated structures containing a plurality of cavities as taught by Hejazi. One of ordinary skills in the art would have been motivated to implement this structural modification in order to increase effective contact surface area of the flavor substrate and to facilitate liquid aerosol-forming substrate passage to the wick material, thereby optimizing aerosolization efficacy and flavor delivery.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ricketts et al. (US 20180297048 A1) in view of Karles et al. (US 20060174901 A1).
Regarding Claim 11, Ricketts et al. discloses substantially all elements of Claim 1. Ricketts does not teach that the one or more bodies comprise at least one ribbed surface. Karles et al. teaches a capsule surface with annular indentions (Figure 4B, element 210, [0069]). Therefore, it would have been obvious to one of ordinary skills in the art at the time invention was made to modify the solid additive of Ricketts to include annular indentions as taught by Karles. One of ordinary skills in the art would have been motivated to implement this structural modification because annular indention creates tiny micro channels which maintain continuous liquid flow to the wick preventing it from compressing and blocking effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRADEEP PAUDEL whose telephone number is (571)429-6993. The examiner can normally be reached Mon-Thur 6:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PRADEEP PAUDEL/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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