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 .
Election/Restrictions
Applicant's election with traverse of Group I, Species B in the reply filed on 09/15/2026 is acknowledged.
Applicant argues that Bayat does not teach the common technical feature identified by the Examiner because elastically deformable element 54 does not define a wall of an aerosol generation region, cavity 62 being separated from aerosol chamber 92 by mesh element 10. Even assuming, arguendo, that Applicant’s interpretation of Bayat is correct, the argument does not overcome the lack-of-unity requirement because the common technical feature does not constitute a special technical feature in view of Dumen (US 2021/0219612 A1).
As set forth in the restriction requirement, Groups I and II share the technical feature of adjusting the position and/or shape of at least one wall of an aerosol generation region to vary a volume of the aerosol generation region based on an interaction of a user with the aerosol provision system. Dumen teaches an aerosol-generating device having a cavity configured to receive aerosol-forming substrate, a movable cavity bottom whose position defines the length of the cavity, and a control configured to move the cavity bottom to a selected position, wherein the control may be activated by a user through a control switch or control button (¶ [0004]). Dumen further teaches a drive mechanism configured to move cavity bottom 101 in response to a user-operated button (¶ [0071]). Thus, Dumen teaches the technical feature common to Groups I and II.
Accordingly, Applicant’s argument concerning Bayat does not establish that the common technical feature constitutes a special technical feature representing a contribution over the prior art. In view of Dumen, the common technical feature remains known in the art
The requirement is still deemed proper and is therefore made FINAL.
Claims 3 and 7–10 are withdrawn from further consideration as being directed to non-elected species within Group I.
Claims 11–12 are withdrawn from further consideration as being directed to non-elected Group II.
There being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/15/2026.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
The limitations reciting an “adjustment mechanism configured to adjust the position and/or shape of at least one wall of the aerosol generation region to vary a volume of the aerosol generation region” in claims 1, 2, 4–6, 15, and 16 are interpreted under 35 U.S.C. § 112(f). “Adjustment mechanism” is a generic placeholder modified by functional language and is not modified in the claims by sufficient structure for performing the recited function.
The corresponding structures described in the specification include the clip or other locking mechanism and biasing spring associated with adjustment mechanism 70a; the rotating-dial arrangement configured to convert rotational motion into translational motion of wall 72a; bar 75 connecting wall 72b to slider 74b and moving within slots 76 and 77; and the electrically controlled motor, including a rotational motor or piezoelectric motor, controlled by controller 22, and equivalents thereof.
Claim 5 additionally recites a “manual actuation mechanism configured to alter the position and/or shape of the at least one wall via a mechanical adjustment of the adjustment mechanism.” This limitation is also interpreted under 35 U.S.C. § 112(f). Corresponding structures include pressable button 74a operating the clip/locking and biasing arrangement; rotating dial 74a and its translational adjustment arrangement; and slider 74b connected by bar 75 to wall 72b, and equivalents thereof. Claim 6 further limits the manual actuation mechanism to a slider, pressable button, or rotating dial.
No rejection under 35 U.S.C. § 112(b) is made on the basis of these § 112(f) limitations because the specification identifies sufficient corresponding structure for performing the recited functions.
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 § 102
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 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.
Claims 1, 2, 4–6, 15, and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Dumen (US 2021/0219612 A1).
Regarding claim 1, Dumen teaches an aerosol provision system (aerosol-generating system comprising an aerosol-generating device and an aerosol-generating article; ¶ [0034]) for generating an aerosol from an aerosol-generating material in an aerosol-generating region, comprising the aerosol generation region (cavity receiving aerosol-forming substrate for heating by a heating element extending into the cavity; ¶ [0004]); and an adjustment mechanism configured to adjust the position and/or shape of at least one wall of the aerosol generation region to vary a volume of the aerosol generation region (drive mechanism connected to posts 53 and configured to move movable cavity bottom 101, the position of which defines the length of the cavity; ¶¶ [0004], [0071]); wherein the adjustment mechanism is configured to adjust the position and/or shape of the at least one wall based on an interaction of a user with the aerosol provision system (control activated by a user to move the cavity bottom to a selected position; ¶ [0004]).
Dumen’s drive mechanism, posts 53, and movable cavity bottom 101 provide structure corresponding to, or equivalent to, the disclosed adjustment structures for mechanically translating a wall of the aerosol generation region. Changing the longitudinal position of cavity bottom 101 changes the cavity length and necessarily varies the cavity volume.
Regarding claim 2, Dumen further teaches the aerosol provision system of claim 1 (aerosol-generating system having the movable cavity bottom and control; ¶ [0004]), wherein the adjustment mechanism is configured to adjust the position and/or shape of the at least one wall between at least two states (movable cavity bottom selectively movable between at least one extended position and a retracted position; ¶ [0007]) based on the interaction of the user with the aerosol provision system (control activated by a user; ¶ [0004]), each state corresponding to a position and/or shape of the at least one wall (extended and retracted positions of the movable cavity bottom; ¶ [0007]).
Regarding claim 4, Dumen further teaches the aerosol provision system of claim 1 (aerosol-generating system having the movable cavity bottom and control; ¶ [0004]), wherein the aerosol provision system comprises a user input mechanism (control switch or control button; ¶ [0004]), wherein the interaction of the user with the aerosol provision system comprises an interaction of the user with the user input mechanism (user operation of the control switch or control button; ¶ [0004]).
Regarding claim 5, Dumen further teaches the aerosol provision system of claim 4 (aerosol-generating system having the user-operated control as set forth above; ¶ [0004]), wherein the user input mechanism comprises a manual actuation mechanism configured to alter the position and/or shape of the at least one wall via a mechanical adjustment of the adjustment mechanism (manual switch 50 directly operated by a user to move cavity bottom 101 to its selected position; ¶ [0073]).
Dumen’s manual switch 50 and associated guide arrangement provide structure equivalent to the disclosed manually operated adjustment structures because the user mechanically translates the cavity bottom directly rather than through electronic control.
Regarding claim 6, Dumen further teaches the aerosol provision system of claim 5 (mechanically moved cavity bottom 101 having manual switch 50; ¶ [0073]), wherein the manual actuation mechanism is selected from the group comprising a slider, a pressable button, and a rotating dial (manual switch 50 directly operated by a user, wherein one guide is switch 50 and the guides are guided in longitudinal guiding tracks 51; ¶ [0073]).
The longitudinally guided manual switch 50 meets the claimed slider alternative; the remaining listed alternatives need not also be present.
Regarding claim 15, Dumen teaches an aerosol provision device (aerosol-generating device; ¶ [0034]) for use with an aerosol generating article comprising aerosol generating material, which together form an aerosol provision system (aerosol-generating system comprising the aerosol-generating device and an aerosol-forming-substrate-containing aerosol-generating article; ¶ [0034]), wherein the aerosol provision system comprises an aerosol generation region where aerosol is generated from aerosol generating material (cavity receiving aerosol-forming substrate for heating by a heating element extending into the cavity; ¶ [0004]), an adjustment mechanism configured to adjust the position and/or shape of at least one wall of the aerosol generation region to vary a volume of the aerosol generation region (drive mechanism connected to posts 53 and configured to move movable cavity bottom 101, the position of which defines the length of the cavity; ¶¶ [0004], [0071]), wherein the adjustment mechanism is configured to adjust the position and/or shape of the at least one wall based on an interaction of a user with the aerosol provision system (button which, when pressed, triggers a signal in the electronics of the device that controls the drive mechanism for moving cavity bottom 101 to the position selected by the button; ¶ [0071]), wherein the aerosol provision device comprises circuitry configured to control the adjustment mechanism to adjust the position and/or shape of the at least one wall (electronics of the device controlling the drive mechanism for moving cavity bottom 101; ¶ [0071]).
The phrase “for use with an aerosol generating article comprising aerosol generating material” is intended-use language and does not impose an additional structural limitation on the claimed aerosol provision device. Dumen nevertheless teaches the recited device together with an aerosol-forming-substrate-containing article.
Regarding claim 16, Dumen further teaches the aerosol provision device of claim 15 (aerosol-generating device having electronics controlling movement of cavity bottom 101; ¶ [0071]), wherein the aerosol provision device comprises the adjustment mechanism (drive mechanism in the device connected to posts 53 for moving cavity bottom 101; ¶ [0071]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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