DETAILED ACTION
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)(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.
Claims 16-18, 20-26, 28, 31, and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Preusser (US 20230189874).
Regarding claim 16, Preusser teaches a mouthpiece for inhaling an aerosol, the mouthpiece comprising: a housing including an airflow channel [0020, 0021, 0027]; and a flavor element configured to flavor the aerosol, the flavor element being in fluid communication with the airflow channel, wherein the flavor element is mounted on an outer surface of the housing [0024-0027], wherein the housing comprises intake openings (porous section including air inlets) configured to allow ambient air to be drawn into the airflow channel [0020, 0021, 0027], wherein the flavor element covers the porous section [0027], and wherein the flavor element is further configured to be slidable over the porous section to regulate an airflow through the porous section [0022].
Regarding claim 17, Preusser teaches the flavor element is further configured to be replaceable [0021].
Regarding claim 18, Preusser teaches the flavor element is mounted on an outer side surface of the housing [0026].
Regarding claim 20, Preusser teaches the flavor element comprises a flavoring portion 8 including at least one flavoring agent 5, and a handling portion 9 configured for being handled by a user [Fig. 1 and 3; 0042].
Regarding claim 21, Preusser teaches the flavor element is in fluid contact with the airflow channel though the porous section [0027].
Regarding claim 22, Preusser teaches the flavor element is located adjacent to the porous section [0027].
Regarding claim 23, Preusser teaches the flavor element is further configured to be incrementally slidable from a first position to a second position, wherein the flavor element completely covers the porous section in the first position, and wherein the flavor element is completely retracted from the porous section in the second position [0022].
Regarding claim 24, Preusser teaches the flavor element comprises an outer surface layer 9 and an inner surface layer 16, wherein the inner surface layer 16 is in fluid communication with the porous section, and wherein the inner surface layer comprises the at least one flavoring agent [Fig. 3-4; 0050].
Regarding claim 25, Preusser teaches the inner layer is adjacent to the porous section [0027].
Regarding claim 26, Preusser teaches the flavor element comprises a flavoring portion 16 including at least one flavoring agent, and a handling portion 9 configured for being handled by a user, and wherein the inner surface layer is the flavoring portion [0042, 0050; Fig. 3-4].
Regarding claim 28, Preusser teaches the flavor element comprises a flavoring portion 16 including at least one flavoring agent, and a handling portion 9 configured for being handled by a user, and wherein the outer surface layer is the handling portion [0042, 0050; Fig. 3-4].
Regarding claims 31 and 33, Preusser teaches the flavor element comprises at least one liquid or gel flavoring agent [0013].
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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Preusser as applied to claim 16 above, and further in view of Strausser (US 3,554,201).
Preusser does not teach the housing further comprises a recess configured to accommodate the flavor element. Strausser teaches a smoking pipe comprising a recess 34 configured to accommodate pad 38 [Fig. 1-5]. One of ordinary skill in the art would have found it obvious to apply such a recess, configured to accommodate the flavor element, to the housing of Preusser to yield predictable results, e.g. better securing the flavor element.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Preusser as applied to claim 16 above, and further in view of Barenboym (US 2020/0281263).
Preusser teaches the outer surface layer is configured to handle the flavor element by a user and comprises a natural material [0012] but does not teach an elastomeric polymer. Barenboym teaches a smoking implement comprising natural rubber (elastomeric polymer) [0040]. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). One of ordinary skill in the art would have found it obvious to use a natural rubber for the outer surface layer of Preusser to achieve predictable results, e.g. providing a suitable natural material as desired by Preusser.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Preusser as applied to claim 16 above, and further in view of Marsot (US 2018/0360110).
Preusser does not teach a Venturi element located in the airflow channel. Marsot teaches an aerosol device wherein a Venturi element is used to promote mixing [0068]. It would have been obvious to one of ordinary skill in the art to include a Venturi element in the airflow channel of Preusser, downstream of the flavor element, to promote mixing of the aerosol with flavor.
Claims 32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Preusser as applied to claim 16 above, and further in view of Potter (US 2014/0261486).
Preusser does not teach the flavoring agent is volatile and is silent to the type of flavoring agent used. Potter teaches a smoking article wherein volatile liquid menthol is used as a flavoring agent [0088]. It would have been obvious to one of ordinary skill in the art to use volatile liquid menthol as the flavoring agent in Preusser to achieve the same, predictable result of flavoring the aerosol.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Preusser.
Preusser as applied above with respect to claim 16 teaches the mouthpiece according to claim 16. The cigarette reads on the claimed aerosol-generating article and with the filter forming part of the mouthpiece [0021-0022]. Preusser does not explicitly teach the mouthpiece is detachably connectable to the aerosol-generating article. However, one of ordinary skill in the art would have found it obvious to provide a detachably connectable mouthpiece to achieve predictable results, e.g. allowing for replacement. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”).
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755
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