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 § 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 19 and 21-26 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.
Regarding claim 19, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation of "circular surface," and the claim also recites "preferably a ring-shaped surface" which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 21-24 recite the liquid storage portion as having a tapered shape (claim 21, 24) or a capillary that extends along a tilted direction (claims 22-23). This appears to correspond to Fig. 10 embodiment. Examiner notes that claim 16 requires "a surface of the cross-section of the capillary remains constant along at least a part of the longitudinal length of the capillary" in lines 8-9. The storage portion having a tapered shape (capillary defined by walls of said storage portion) or a tilted capillary would result in a cross-section that varies along the longitudinal axis (ring shaped cross-section in Fig. 10 varies in diameter along axis). It is unclear how the surface of the cross-section of the capillary remains constant while also satisfying the tapered and tilted structure required of claims 21-24. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. MPEP 2173.03.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21-26 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 21-26 recite the liquid storage portion as having a tapered shape (claim 21, 24; claims 25, 26 depend from claim 21) or a capillary that extends along a tilted direction (claims 22-23). Examiner notes that claim 16 requires "a surface of the cross-section of the capillary remains constant along at least a part of the longitudinal length of the capillary" in lines 8-9. The storage portion having a tapered shape (capillary defined by walls of said storage portion) or a tilted capillary would result in a cross-section that varies along the longitudinal axis (e.g., ring shaped cross-section in Fig. 10 varies in diameter along axis). It appears claims 21-26 fail to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 16-20, 27, 32, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Newton (US 20130228191) in view of Silvesstrini (US 20180242642).
Regarding claim 16, Newton discloses a replaceable cartridge configured for being detachably connectable to an aerosol-generating device (see second elongated portion 12 / cartridge, [0032]), the replaceable cartridge comprising:
a liquid storage portion configured to store a liquid agent, the liquid storage portion comprising a liquid outlet configured to direct the liquid agent out of the liquid storage portion (see fluid reservoir 43 with liquid outlet having wick 37 therein, see Fig. 7, [0039]); and
a capillary being in fluid communication with the liquid storage portion and the liquid outlet, the capillary having a cross-section and a longitudinal length (see cavity 39, [0040]),
wherein a surface of the cross-section of the capillary remains constant along at least a part of the longitudinal length of the capillary (see Fig. 7, the shape of the cavity remains constant along the longitudinal axis),
wherein the liquid storage portion further comprises a first wall with a first inner surface and a second wall with a second inner surface, wherein the capillary is formed between an opposing first inner surface and second inner surface (see walls of atomizing chamber 38 and cartridge housing 12 facing and defining the cavity 39, [0039-0040], Fig. 7),
wherein the liquid storage portion further comprises an outer shell as the first wall and an inner shell as the second wall, the inner shell being housed in the outer shell of the liquid storage portion (outer shell defined by outer cartridge housing 12 and inner shell defined by atomizing chamber 38 and chimney 36, which is housed within the outer housing 12, see Fig. 7),
wherein the capillary is located between the inner shell and the outer shell (cavity 39 is located between the outer cartridge housing 12 and atomizing chamber 38).
As to the recitation of "capillary," a capillary is defined as "a tube (as of glass) having a very small bore" (Merriam-Webster Dictionary). In Newton, cavity 39 is a thin annular cavity (see [0039-0040], Fig. 7) and is structurally similar to that of the instant invention (ring shaped surface defined between two walls). Newton also discloses "the liquid in the wick 37 is depleted by the atomizer 32, capillary action draws additional liquid from the liquid reservoir 43, through the cavity 39 and to the atomizer 32" ([0040]).
Newton discloses the atomizer generates an aerosol from the fluid ([0006]) but does not disclose the aerosol-former; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the fluid with an aerosol-former as claimed since Silvesstrini, similarly directed towards an atomizer, teaches including aerosol formers such as polyhydric alcohols, esters of polyhydric alcohols, and aliphatic esters of polycarboxylic acids ([0076]). One would have been motivated to employ an aerosol former that facilitates the formation of a dense and stable aerosol and that is substantially resistant to thermal degradation at the temperature of the operation of the atomizer ([0076]).
Regarding claim 17, the capillary (cavity 39) is located between an outer surface of the inner shell and the inner surface of the outer shell (see walls of atomizing chamber 38 and cartridge housing 12 facing and defining the cavity 39, [0039-0040], Fig. 7).
Regarding claim 18, the outer shell comprises the housing of the cartridge (see housing 12, Fig. 7).
Regarding claims 19 and 20, Newton discloses the inner/outer shells as tubular and the capillary has a circular/ring-shaped surface (see Figs. 4, 7, 12, 13, ; cavity 39 is thin annular cavity, [0039]).
Regarding claim 27, Newton discloses a cartridge having a cylindrical shape, rather than the polygonal shape required. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the shape as polygonal since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination (see MPEP 2144.04; In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 32, the inner shell comprises an air inlet, the air inlet being configured to allow air to enter the inner shell (inner shell comprises chamber 38 and chimney 36 and has air inlets at ends).
Regarding claim 34, Newton discloses an aerosolization element (see wick 37 and atomizer 32).
Regarding claim 35, Newton discloses an aerosol-generating system with cartridge and device (see Figs. 4-5).
Claims 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Newton (US 20130228191) in view of Silvesstrini (US 20180242642) as applied to claim 16 above, and further in view of Turner (US 20180035719).
Regarding claims 21-24, Newton discloses a cartridge having a cylindrical shape, rather than the tapered/tilted/frustoconical shape required of claims 21-24. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the shape as tapered or tilted or frustoconical since (1) it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination (see MPEP 2144.04; In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)); and (2) Turner, similarly directed towards an atomizer, teaches that liquid cartridges can have different shapes such as frustoconical, cylindrical, etc. ([0079])--thus, a frustoconical cartridge is an art recognized alternative shape to a cylindrical cartridge.
Regarding claim 25, Newton discloses an upstream lid (see resilient seal 42).
Claims 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Newton (US 20130228191) in view of Silvesstrini (US 20180242642) as applied to claim 16 above, and further in view of Mass (US 20110232654).
Regarding claim 28-31, Newton does not disclose the capillary comprises protrusions being in contact with the first inner surface and the second inner surface; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the capillary with protrusions as claimed since Mass, similarly directed towards an atomizer, teaches providing protrusions 284 between the inner and outer walls of a tubular structure to support the walls of the structure and maintain a space therebetween ([0019], See Fig. 4). One would have been motivated to provide protrusions so as to maintain and support the thin cavity 39 of Newton when the device is assembled. As to claims 29 and 30, the protrusions are ribs that extend along the longitudinal axis of the device (see Fig. 4). As to claim 31, one having ordinary skill in the art at the time of the invention would have found it obvious to not position ribs adjacent the liquid outlet so as to not interfere with the wick and liquid flow.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Newton (US 20130228191) in view of Silvesstrini (US 20180242642) as applied to claim 16 above, and further in view of Lomas (WO 2019211339).
Regarding claim 33, Newton does not disclose the diameter of the inlet; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the diameter of the air inlet as 0.5 to 6 mm since Lomas, similarly directed towards a cartridge, teaches configuring the diameter of the airway tube as around 3.5 mm to limit the velocity of the air for any given flow rate, such that it is less likely that droplets of unvaporized liquid will be drawn in to the outlet and through to the mouthpiece ([0088]).
Allowable Subject Matter
Claims 26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 26, the prior art of record fails to further teach or suggest the upstream end of the inner shell comprises at least one slot, the at least one slot being configured to be spaced apart from the upstream lid when the upstream lid closes the upstream end of the liquid storage portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Courbat (US 20230165305) discloses a liquid reservoir having capillary fibers and lamella that provide capillary action (Fig. 12).
Andersson (WO 2012062600) discloses an cartridge having a capillary channel (Fig. 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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