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 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.
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 61-66 and 71-73 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (WO 2019/234582, hereafter referred to as Fernando ‘582) in view of Lord (US 10,111,466).
Regarding claims 61 and 74, Fernando ‘582 discloses a shisha device (page 16, lines 14-19, figure 1, reference numeral 100) having an air inlet (figure 1, reference numeral 137), a receptacle (figure 1, reference numeral 140), which is considered to meet the claim limitation of a cavity, that accommodates a cartridge containing an aerosol forming substrate (figure 1, reference numeral 150) and is connected to the air inlet through an air inlet channel (page 16, lines 20-27, figure 1, reference numeral 170), which is considered to meet the claim limitation of an airflow channel. The resistance to draw of the device without any capsule is from about 20 mm water to 40 mm water (page 7, lines 29-33, page 8, lines 1-7). One of ordinary skill in the art would recognize that the resistance to draw in the air inlet channel could also be as high as 40 mm water since a higher resistance to draw in that section would raise the overall device resistance to draw. Fernando ‘582 does not explicitly disclose (a) the resistance to draw being provided by a narrower portion of the air inlet channel and (b) the resistance to draw of the air inlet channel.
Regarding (a), Lord teaches an electronic cigarette having a tube having an inlet end with an airflow restrictor provided downstream of the inlet and upstream of the heater to accelerate airflow along the tube from the inlet to the heater (abstract). The restrictor is in the form of a plug (figure 5, reference numeral 35) that has a bore through it that is narrower in cross sectional area than the tube that also affects the resistance to draw to provide a better smoking experience (column 4, lines 12-30, figure 5, reference numeral 36).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the air inlet channel of Fernando ‘582 with the plug of Lord. One would have been motivated to do so since Lord teaches a plug that accelerates airflow.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a suitable resistance to draw within the claimed range through routine experimentation. One would have been motivated to do so since Fernando ‘582 teaches a suitable resistance to draw for a smoking device housing and Lord teaches increases the resistance to draw to produce a better smoking experience. The courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP § 2144.05 II.
Regarding claim 62, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach a location of the plug along the air inlet channel.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the plug at the entrance to the air inlet channel of modified Fernando ‘582. One would have been motivated to do so since there is no evidence of record that the specific location of the plug along the channel is critical. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding claims 63 and 64, modified Fernando ‘582 teaches all the claim limitations as set forth above. Lord additionally teaches that the cross sectional area of the bore is between 10-60% of the cross sectional area of the tube (column 4, lines 12-30). Modified Fernando ‘582 does not explicitly teach the claimed range being obvious.
However, one of ordinary skill in the art would recognize that the claimed range is obvious since it is extremely close to the range of Lord. The Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
Regarding claim 65, modified Fernando ‘582 teaches all the claim limitations as set forth above. Lord additionally teaches that the plug and bore are tubular (figure 3). Modified Fernando ‘582 does not explicitly teach (a) a diameter of the bore and (b) the air inlet channel being tubular.
Regarding (a), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the bore of modified Fernando ‘582 have the claimed diameter. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the air inlet channel have a circular cross section, which would make each section of the channel have a tubular form. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 66, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach the relative lengths of the air inlet channel and plug.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the plug and air inlet channel have the claimed relative lengths. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 71, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach the plug and air inlet channel being integral.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the plug and air inlet channel of modified Fernando ‘582 be integral. The use of a one-piece, integrated construction instead of the structure disclosed or taught in the prior art would have been within the ambit of a person of ordinary skill in the art. See MPEP § 2144.04 V B.
Regarding claim 72, the bore of the plug of modified Fernando ‘582 is considered to meet the claim limitation of an airflow pathway. It is evident that the plug of modified Fernando ‘582 could be removed since it is a separate component.
Regarding claim 73, Fernando ‘582 discloses that the device has a heater that is adjacent to the receptacle that receives the aerosol forming substrate (abstract) so that the aerosol forming substrate is heated (page 3, lines 24-33, page 4, lines 1-2).
Claims 67-70 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (WO 2019/234582, hereafter referred to as Fernando ‘582) in view of Lord (US 10,111,466) as applied to claim 61 above, and further in view of Rogan (US 2018/0014574).
Regarding claim 67, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach the bore being tapered.
Rogan teaches an aerosol generating system (abstract) having an aerosol guiding device (figure 1B, reference numeral 1) that has two tapering sections that meet at a narrowest part of the aerosol guiding device ([0059], figure 1B, reference numeral 13). Rogan additionally teaches that this design allows air to be accelerated by the Venturi effect [0084].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the bore of modified Fernando ‘582 with the shape of the aerosol guiding device of Rogan. One would have been motivated to do so since Rogan teaches a shape that increases airflow by the Venturi effect.
Regarding claim 68, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach the inlet of the bore having a larger diameter than the outlet of the bore.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the inlet of the bore have a larger diameter than the outlet of the bore. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 69, Rogan teaches that the outlet of the aerosol guiding device has a larger diameter than the inlet (figure 1B).
Regarding claim 70, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach the claimed ratio range of the inlet and outlet diameters.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the inlet and outlet of the bore have the claimed diameter ratio range. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Claim 75 is rejected under 35 U.S.C. 103 as being unpatentable over Fernando (WO 2019/234582, hereafter referred to as Fernando ‘582) in view of Lord (US 10,111,466) as applied to claim 74 above, and further in view of Fernando (CA 3094599, hereafter referred to as Fernando ‘599).
Regarding claim 75, modified Fernando ‘582 teaches all the claim limitations as set forth above. Modified Fernando ‘582 does not explicitly teach (a) a resistance to draw of the cartridge and (b) the resistance to draw of the cartridge being less than 50 percent of a resistance to draw of the air inlet channel.
Regarding (a), Fernando ‘599 teaches a shisha cartridge defining a cavity that contains an aerosol forming substrate (abstract) having a resistance to draw between about 10 mm water to about 50 mm water, which is a suitable resistance to draw for shisha cartridges (page 16, lines 12-24).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cartridge of modified Fernando ‘582 with the resistance to draw of Fernando ‘599. One would have been motivated to do so since Fernando ‘599 teaches a suitable resistance to draw for a shisha cartridge containing aerosol forming substrate.
Regarding (b), one of ordinary skill in the art would recognize that the air inlet channel and cartridge resistance ranges of modified Fernando ‘582 include a range of ratios that overlaps the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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