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
Claims 185-186 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/2/26.
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.
Claims 57-59, 64, and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Tostami et al. (10,368,581).
With regard to claim 57, Fernando teaches, as shown in figures 1-4: “An aerosol delivery device 20 comprising: a member 21… comprising an aerosol generator portion 26, wherein the member 21 is configured to transfer a first aerosol precursor to the aerosol generator portion 26; and an air flow passage 22 configured to direct air past the aerosol generator portion 26 to pick up the first aerosol precursor from the aerosol generator portion 26 to form a first aerosol, wherein the air flow passage 22 and 28 comprises first 22 and second 28 airflow branches, the member located between the first 22 and second 28 airflow branches, wherein the first 22 and second 28 airflow branches are configured to provide inward airflow towards the aerosol generator portion 26”.
Fernando does not teach the member being a passive aerosol generation.
In the same field of endeavor before the effective filing date of the claimed invention, Tostami teaches, as shown in figures 3C and taught in column 29 lines 15-19, a passive member using a passive aerosol generator 300C. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Tostami in order to generate vapor without using electrical power (Tostami, column 29 lines 15-19).
With regard to claim 58, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 57”, as shown above.
Fernando also teaches, as shown in figures 1-2: “and further comprising a storage 30 for storing the first aerosol precursor”.
With regard to claim 59, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 58”, as shown above.
Fernando also teaches, as shown in figures 1-2: “wherein the storage 30 is located between the first 22 and second 28 aerosol branches”.
With regard to claim 64, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 58”, as shown above.
Fernando also teaches, as shown in figures 1-2: “wherein the storage 30 comprises a tank configured to store the first aerosol precursor as a free liquid”.
With regard to claim 67, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 57”, as shown above.
Fernando also teaches, as shown in figures 1-2 and taught in paragraph 34: “wherein the aerosol delivery device 20 is a consumable for a smoking substitute device”.
Claims 60-63 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Tostami et al. (10,368,581) and Kane (2014/0261490).
With regard to claim 60, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 58”, as shown above.
Neither Fernando nor Tostami teach: “wherein the storage comprises a reservoir, the reservoir formed of a first porous material”.
In the same field of endeavor before the effective filing date of the claimed invention, Kane teaches, as shown in figure 1 and taught in paragraph 16: “wherein the storage 180 comprises a reservoir, the reservoir formed of a first porous material (taught in paragraph 16)”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Kane with the invention of Fernando as modified by Tostami in order to hold the fluid in the reservoir (Kane, paragraph 16).
With regard to claim 61, Fernando as modified by Tostami and Kane teaches: “The aerosol delivery device according to claim 60”.
Fernando also teaches, as shown in figures 1-2: “and further comprising a chamber 15, the reservoir 30 located within the chamber 15, wherein the chamber 15 comprises a chamber aperture 40, the chamber aperture 40 configured to permit air to enter the chamber 15 as the reservoir 30 empties of first aerosol precursor”.
With regard to claim 62, Fernando as modified by Tostami and Kane teaches: “The aerosol delivery device according to claim 61”, as shown above.
Fernando also teaches, as shown in figures 1-2: “comprising two said chamber apertures 40 and 24, wherein the chamber apertures are located on opposing sides of the aerosol generator portion 26”.
With regard to claim 63, Fernando as modified by Tostami and Kane teaches: “The aerosol delivery device according to claim 62”, as shown above.
Fernando also teaches, as shown in figures 1-2: “wherein the chamber apertures provide fluid communication between the reservoir 30 and the first 22 and second 28 airflow branches”.
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Tostami et al. (10,368,581) and Marks et al. (2018/0221605).
With regard to claim 65, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 57”, as shown above.
Neither Fernando nor Tostami teach: “wherein the member is formed of a second porous material, the member configured to wick the first aerosol precursor to the aerosol generator portion”.
In the same field of endeavor before the effective filing date of the claimed invention, Marks teaches, as shown in figure 1 and taught in paragraph 28: “wherein the member 30 is formed of a second porous material, the member 30 configured to wick the first aerosol precursor to the aerosol generator portion 20”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Marks with the invention of Fernando as modified by Tostami in order to wick the aerosol precursor to the aerosol generator portion (Marks, paragraph 28).
Claims 66 and 68-69 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Tostami et al. (10,368,581) and Borkovec et al. (2016/0262456).
With regard to claim 66, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 57”, as shown above.
Neither Fernando nor Tostami teach: “wherein the first aerosol is sized to inhibit pulmonary penetration, and the first aerosol is transmissible within at least one of a mammalian oral cavity and a mammalian nasal cavity”.
In the same field of endeavor before the effective filing date of the claimed invention, Borkovec teaches, as taught in paragraph 68: “wherein the first aerosol is sized to inhibit pulmonary penetration, and the first aerosol is transmissible within at least one of a mammalian oral cavity and a mammalian nasal cavity”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Borkovec with the invention of Fernando as modified by Tostami in order to improve the user’s taste and to supply nicotine (Borkovec, paragraph 68).
With regard to claim 68, Fernando as modified by Tostami teaches: “The aerosol delivery device according to claim 57”, as shown above.
Neither Fernando nor Tostami teach: “wherein the aerosol generator portion is a first aerosol generator portion, and further comprising a second aerosol generator portion, the second aerosol generator portion configured to produce a second aerosol from a second aerosol precursor, wherein the second aerosol is sized for pulmonary penetration”.
In the same field of endeavor before the effective filing date of the claimed invention, Borkovec teaches, as shown in figures 2-3 and taught in paragraph 68: “wherein the aerosol generator portion 10 is a first aerosol generator portion 10, and further comprising a second aerosol generator portion 11, the second aerosol generator portion 11 configured to produce a second aerosol from a second aerosol precursor, wherein the second aerosol is sized for pulmonary penetration”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Borkovec with the invention of Fernando as modified by Tostami in order to improve the user’s taste and to supply nicotine (Borkovec, paragraph 68).
With regard to claim 69, Fernando as modified by Tostami and Borkovec teaches: “The aerosol delivery device according to claim 68”, as shown above.
Borkovec also teaches, as shown in figures 2-3 and taught in paragraph 68: “wherein the second aerosol generator portion 11 is configured to heat the second aerosol precursor 37a to form the second aerosol”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Borkovec with the invention of Fernando as modified by Tostami and Borkovec in order to improve the user’s taste and to supply nicotine (Borkovec, paragraph 68).
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Tostami et al. (10,368,581), Borkovec et al. (2016/0262456), and Sears et al. (2017/0065000).
With regard to claim 70, Fernando as modified by Tostami and Borkovec teaches: “The aerosol delivery device according to claim 68”, as shown above.
Neither Fernando nor Tostami nor Borkovec teach: “wherein the second aerosol generator portion is located so as to be upstream of the first aerosol generator portion in use”.
In the same field of endeavor before the effective filing date of the claimed invention, Sears teaches, as shown in figures 1-3 and taught in paragraphs 9 and 91: “wherein the second aerosol generator portion 400 is located so as to be upstream of the first aerosol generator portion 212 in use”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Sears with the invention of Fernando as modified by Tostami and Borkovec in order to insert more aerosol generation elements along the airflow direction before the user inhales at the mouthpiece (as shown in figure 3 of Sears).
Claims 181-184 are rejected under 35 U.S.C. 103 as being unpatentable over Fernando (2017/0360093) in view of Marks et al. (2018/0221605).
With regard to claim 181, Fernando teaches, as shown in figures 1-4: “An aerosol delivery device 20 comprising: a member 21… comprising an aerosol generator portion 26 located at a downstream end (upper end in figure 3) of the member 21 and a support portion 21, the aerosol generator portion 26 configured to receive a first aerosol precursor; and an air flow passage 22 configured to direct air past the aerosol generator portion 26 to pick up the first aerosol precursor from the aerosol generator portion 26 to form a first aerosol, wherein the aerosol delivery device 20 comprises mutually engaging features (hole in 12 where 20 is received and portion of 20 engaged therein in figure 3) which interlock with each other to maintain the member 21 in the aerosol delivery device 20”.
Fernando does not teach the member “formed of a porous material”.
In the same field of endeavor before the effective filing date of the claimed invention, Marks teaches, as shown in figure 1 and taught in paragraph 28, the member 30 “formed of a porous material”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Marks with the invention of Fernando in order to wick the aerosol precursor to the aerosol generator portion (Marks, paragraph 28).
With regard to claim 182, Fernando as modified by Marks teaches: “The aerosol delivery device according to claim 181”, as shown above.
Fernando also teaches, as shown in figures 1-4: “wherein the mutually engaging features comprise a groove (openings in 12 where 20 are received in figure 3) and a protrusion (portions of 23 that engage 20 in figure 3)”.
With regard to claim 183, Fernando as modified by Marks teaches: “The aerosol delivery device according to claim 182”, as shown above.
Fernando also teaches, as shown in figure 1: “wherein the aerosol delivery device 20 comprises a tube 12 for receiving the member 21”.
With regard to claim 184, Fernando as modified by Marks teaches: “The aerosol delivery device according to claim 183”, as shown above.
Neither Fernando nor Marks teaches: “wherein an internal surface of the tube comprises the protrusion and the member comprises the groove”. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to reverse the protrusion and groove of Fernando so the tube comprises the protrusion and the member comprises a groove in order to hold the member in the housing. Also, it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 8/21/25 have been fully considered but they are not persuasive. With regard to claim 57, the Applicant argues that the primary reference Fernando does not teach two airflow branches conducting inward airflow toward the aerosol generator. The Examiner respectfully disagrees, since the two cited airflow branches together allow airflow towards and past the aerosol generator portion. The Applicant further argues that Fernando does not teach a passive aerosol generator. This argument is moot, since a different reference is used to reject this limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN M KRATT whose telephone number is (571)270-0277. The examiner can normally be reached M-F 9am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abdullah A Riyami can be reached at (571)270-3119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN M KRATT/ Primary Examiner, Art Unit 2831