DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed 10 Nov 2025 has been entered. Claims 1-30 are pending in the application. Claims 1 and 16 are currently amended. Applicant’s amendment to the Claims have overcome each and every objection previously set forth in the Non-Final Office Action mailed 08 May 2025.
The prior 35 U.S.C. 102(a)(2) rejection is withdrawn as requested (Pg. 6-7) based on the amendment to the claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner concurs with applicant’s assertion that amended claim 1 patentably distinguishes over Chen et al. (U.S. Pub. 2017/0203055) (Pg. 6-7). The prior 35 U.S.C. 102(a)(2) rejection is thus withdrawn.
However, the claims are still rejected under an alternate reference cited in the Conclusion section of the preceding Office action. In the interests of compact prosecution it is also reiterated from the preceding Office action that Dunfield et al. (U.S. Pub. 2005/0150489) is closely readable on claim 1.
Terminal Disclaimer
The terminal disclaimer filed on 10 Nov 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patents 9,962,507; 9,956,360; 10,449,314; 10,525,220; 10,898,666; 11,738,158 & 11,771,852 and U.S. Applications No. 17/281,676 & 19/052,182 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim(s) 1-30 is/are objected to because of the following informalities:
Claim 1, Ln. 8 recites “the reservoir” which should read “the fluid reservoir” for consistency
Appropriate correction is required.
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 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.
(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.
Claim(s) 1, 4-5, 8, 25, 27-28, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukumoto et al. (U.S. Pub. 2010/0083956).
Regarding claim 1, Fukumoto discloses an electronically actuated droplet delivery device (Fig. 4; ¶0057) comprising: a housing (Fig. 4 outer shell) including a mouthpiece (Fig. 4 #21; ¶0059) located at an airflow exit side of the housing; a fluid reservoir (Fig. 4 holding #8; ¶0057) disposed within or in fluid communication with the housing; an electronically actuated aperture plate (Figs. 1-4 #6; ¶0063) comprised of high modulus polymeric material (¶0050 – polyimide) and having a plurality of openings (Fig. 1 see eject stream through #6) formed through its thickness configured to generate an ejected stream of droplets (Fig. 1 #9), wherein the aperture plate is structurally distinct from the fluid reservoir (Fig. 1 space between #3 and #6); an intervening region (e.g. Fig. 1 space between #3 and #6) defined between the fluid reservoir and the aperture plate providing fluid communication between the fluid reservoir and the plurality of openings (Fig. 1); and an electronic actuator (¶0063 – piezoelectric body) operably coupled to oscillate the aperture plate at a frequency that generates the ejected stream of droplets. The language “high modulus polymeric material” is interpreted in light of the list of exemplary materials discussed in ¶00134 of the instant specification, which also directly corresponds to the list of polymers in instant claims 5-8.
Regarding claim 4, Fukomoto discloses the aperture plate is pre-processed to reduce residual stresses that may accumulate in its morphology and thickness (e.g. ¶¶0039, 0085). The instant claim is recited using product-by-process language and is treated accordingly (MPEP 2113). The claimed pre-processing does not require any particular technique during manufacturing nor any imply any particular structural variation to distinguish from a similar structure which would not be pre-processed. The formation of the second orifice plate 6 with the materials discussed in ¶0050 will obviously be intended to be optimal for its use in the inhaler of Fukomoto.
Regarding claim 5, Fukomoto discloses the high modulus polymeric material includes a polymer selected from the group consisting of poly ether ether ketone (PEEK), polyimide, polyetherimide, polyvinylidine fluoride (PVDF), and ultra-high molecular weight polyethylene (UHMWPE) (¶0050 – polyimide).
Regarding claim 8, Fukomoto discloses the high modulus polymeric material includes a polymer selected from the group consisting of poly ether ether ketone (PEEK), polyimide, polyetherimide, polyvinylidine fluoride (PVDF), and ultra-high molecular weight polyethylene (UHMWPE) (¶0050 – polyimide).
Regarding claim 25, Fukumoto discloses the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 27, Fukumoto discloses the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 28, Fukumoto discloses the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 30, Fukumoto discloses the electronic actuator is a piezoelectric actuator (¶0063).
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim(s) 2-3, 6-7, 26, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukumoto et al. (U.S. Pub. 2010/0083956).
Regarding claim 2, Fukumoto discloses the ejected stream of droplets have an average ejected droplet diameter of less than about 5 microns (¶0085 – 1.5 micron diameter port will produce droplets less than about 5 microns).
Fukumoto is silent as to whether at least about 50% of the droplets have an average ejected droplet diameter of less than about 5 microns.
However, one of ordinary skill in the art recognizing that Fukomoto provides a specifical example embodiment with a discharge diameter much smaller than the recited 5 micron size, together with the teaching in Fukomoto of providing droplets to as small as 0.1 microns (¶0039), would have considered it prima facie obvious that the device of Fukomoto would be usable to provide at least about 50% of the droplets have an average ejected droplet diameter of less than about 5 microns.
Regarding claim 3, Fukomoto teaches the invention as modified above and further teaches the aperture plate is pre-processed to reduce residual stresses that may accumulate in its morphology and thickness (e.g. ¶¶0039, 0085). The instant claim is recited using product-by-process language and is treated accordingly (MPEP 2113). The claimed pre-processing does not require any particular technique during manufacturing nor any imply any particular structural variation to distinguish from a similar structure which would not be pre-processed. The formation of the second orifice plate 6 with the materials discussed in ¶0050 will obviously be intended to be optimal for its use in the inhaler of Fukomoto.
Regarding claim 6, Fukomoto teaches the invention as modified above and further teaches the high modulus polymeric material includes a polymer selected from the group consisting of poly ether ether ketone (PEEK), polyimide, polyetherimide, polyvinylidine fluoride (PVDF), and ultra-high molecular weight polyethylene (UHMWPE) (¶0050 – polyimide).
Regarding claim 7, Fukomoto teaches the invention as modified above and further teaches the high modulus polymeric material includes a polymer selected from the group consisting of poly ether ether ketone (PEEK), polyimide, polyetherimide, polyvinylidine fluoride (PVDF), and ultra-high molecular weight polyethylene (UHMWPE) (¶0050 – polyimide).
Regarding claim 26, Fukomoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 29, Fukomoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Claim(s) 9-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukumoto et al. (U.S. Pub. 2010/0083956) in view of Voges (U.S. Patent 6196218).
Regarding claim 9, Fukumoto is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 10, Fukumoto teaches the invention as modified above but fails to is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 11, Fukumoto teaches the invention as modified above but fails to is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 12, Fukumoto is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 13, Fukumoto is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 14, Fukumoto teaches the invention as modified above but fails to is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 15, Fukumoto teaches the invention as modified above but fails to is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 16, Fukumoto is silent as to whether the fluid reservoir includes a fluid with nicotine or a chemical that is in marijuana.
Voges teaches a dispenser-head (Fig. 6 #110; Col. 9-11) and teaches a fluid reservoir including a fluid with nicotine (Col. 4, Ln. 5-8). Voges teaches nicotine as a suitable fluid to be used in an inhalation device to mimic the sensations obtained during smoking (Col. 2, Ln. 21 – Col. 3, Ln. 4 & Col. 4, Ln. 5-8).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to have specified in Fukumoto the fluid reservoir includes a fluid with nicotine in order to provide the benefit of selecting nicotine as a particular fluid for vaporization which is suitable to be used in an inhalation device to mimic the sensations obtained during smoking in view of Voges.
Regarding claim 17, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 18, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 19, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 20, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 21, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 22, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 23, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
Regarding claim 24, Fukumoto teaches the invention as modified above and further teaches the electronic actuator is a piezoelectric actuator (¶0063).
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 JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 PM.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785