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 .
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.
Status of the Claims
Claims 1-20 are pending. Claims 14-20 are withdrawn. Claims 1, 5, have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 8/25/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see page 12 of Remarks filed 8/25/2026, with respect Hepworth not disclosing the newly added limitation of an adapter battery cell situated within the adapter housing and configured to power the adapter heating element have been fully considered and are persuasive. However, this new limitation is obvious over newly found prior art John in combination with previously presented prior art Hepworth.
Applicant's remaining arguments filed 8/25/2026 have been fully considered but they are not persuasive.
Applicant argues that the tube of Hepworth “is not a clean conduit but rather a material-filled passage” and that “this is fundamentally different from the claimed tube, which is a dedicated clean conduit bypassing any material and carrying cartridge vapor directly to the mouthpiece” (Remarks, Page 12). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “a dedicated clean conduit bypassing any material and carrying cartridge vapor directly to the mouthpiece”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that Hepworth does not disclose the claimed tube limitation as “amended claims 1 and 11 require that vapors are provided together to the user at the mouthpiece from two separate streams” (Page 12 of the Remarks) and that “[t]he providing together of two distinct vapor streams at the mouthpiece is a limitation that Hepworth does not disclose and cannot meet” (Remarks, Page 13). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “two separate streams” and “two distinct vapor streams”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al. (US 2024/0206550 A1) in view of John et al. (US 2016/0295922 A1).
Regarding claim 1, Hepworth discloses a vaporizer device (“modular aerosol provision device 100”, Fig. 1, ¶ 0021) comprising:
a cigarette adapter (combination of “module of the second module type 400” and “mouthpiece 500”, Figs. 1, 3, and 5, ¶ 0024, 0035, 0049) configured to heat a cigarette (“The module of the second module type 400 further comprises a heating arrangement 414 for heating the material 408”, ¶ 0038, “material 408 . . . held within its own container, for example an open-ended tube”, ¶ 0037, “material 408 typically comprises tobacco”, ¶ 0039) to produce a nicotine-containing vapor (¶ 0004, 0058) and including a mouthpiece (“mouthpiece 500”, Figs. 1 and 5, ¶ 0049) having a top portion (“body 502”, Fig. 5, ¶ 0049) and an outlet (“mouthpiece outlet 508”, Fig. 5, ¶ 0049) extending from the top portion and configured for receiving a proximal end of the cigarette (“mouthpiece outlet 508” is capable of receiving a proximal end of a cigarette, Fig. 5);
wherein the cigarette adapter has:
an adapter housing (combination of “second connection interface 420” and “first connection interface 418”, Fig. 3, ¶ 0041) having a bottom piece (“first connection interface 418”, Fig. 3, ¶ 0041) and a housing side wall (side wall of “second connection interface 420”, Fig. 3, ¶ 0041);
a cup (combination of “housing 402” with “channel 403” and “inlet screen 410”, Fig. 3, ¶ 0035-0036) situated in the adapter housing (Fig. 3) and configured to receive a distal end of the cigarette (“channel 403 is for receiving a material 408”, ¶ 0036, so the cup formed from “housing 402” and “inlet screen 410” is capable of receiving a distal end of a cigarette, Fig. 3); and
an adapter heating element (“heating arrangement 414”, Fig. 3, ¶ 0038) situated adjacent the cup (Fig. 3) and configured to provide heat to the cigarette without burning or combusting the cigarette (¶ 0038, 0058); and
at least one cartridge (“module of the first module type 300”, Figs. 1 and 2, ¶ 0026) comprising a vaporizable material (“e-cig liquid 308”, Fig. 2, ¶ 0026) including a flavor (“flavours”, ¶ 0072), wherein the at least one cartridge is removably coupled (“releasably connecting”, ¶ 0033, 0042) to the cigarette adapter (Figs. 1 and 6C, ¶ 0061) such that the cigarette adapter is operable to receive a vapor formed from the vaporizable material and provide the vapor together with the nicotine-containing vapor to the mouthpiece (¶ 0063-0066, 0068);
wherein the cigarette adapter further comprises a tube (“channel 403”, Fig. 3, ¶ 0035) configured as a conduit for vapor from the at least one cartridge to flow to the mouthpiece, such that the nicotine-containing vapor from the cigarette and the vapor from the at least one cartridge are provided together to a user at the mouthpiece (¶ 0065-0066, 0068).
However, Hepworth does not disclose an adapter battery cell situated within the adapter housing and configured to power the adapter heating element.
John, in the same field of endeavor, discloses using separate batteries for different heating components (¶ 0162). John also discloses a benefit to using separate batteries in that it allows for the different heating components to be used independently (¶ 0162). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include an additional battery as taught by John as an adapter battery cell configured to power the adapter heating element, in order to obtain this benefit. With regards to the placement of the adapter battery cell in the device of the combination, situating the adapter battery cell within the adapter housing amounts to a rearrangement of the parts of the device of the combination and, as such, would have been obvious to one having ordinary skill in the art before the Application’s effective filing date (MPEP § 2144.04(VI)(C)).
Regarding claim 2, Hepworth in view of John discloses the vaporizer device of claim 1, as stated above. Hepworth also discloses the device further including a battery module (“control module 200”, Figs. 1 and 4, ¶ 0047) including:
a housing (housing of “control module 200””, which corresponds to “control module 200”, ¶ 0115, see Fig. 9D below, annotated by examiner) defining a pocket (pocket for receiving “Module 1””, which may be a “module of the first module type 300”, ¶ 0115-0116, see Fig. 9D below, annotated by examiner) therein; and
a first plurality of electrodes (“When a module is connected to the control module 200”, the first connector and the second connector each makes a separate electrical connection with the control circuitry 204” to enable power to be applied separately to the first electrical contact (P1”) and the second electrical contact (P2”) of that module”, ¶ 0120) configured to transmit energy to the at least one cartridge (“Module 1 is connected to the control module 200” and receives power via the connections P1” and P2”.”, ¶ 0121).
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Figure 9D, Annotated by Examiner
Regarding claim 3, Hepworth in view of John discloses the vaporizer device of claim 2, as stated above. Hepworth further discloses wherein the at least one cartridge includes:
a first portion (see Fig. 9B below, annotated by examiner) configured to be received into the pocket (Fig. 9D);
a remainder portion (see Fig. 9B below, annotated by examiner) separate from the first portion; and
a step (see Fig. 9B below, annotated by examiner) between the first portion and the remainder portion such that the first portion has a smaller diameter than the remainder portion.
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Figure 9B, Annotated by Examiner
Regarding claim 4, Hepworth in view of John discloses the vaporizer device of claim 3, as stated above. Hepworth further discloses wherein the at least one cartridge includes a cartridge housing (see Fig. 9B above, annotated by examiner) defining a second pocket (see Fig. 9B above, annotated by examiner) therein.
Regarding claim 5, Hepworth in view of John discloses the vaporizer device of claim 4, as stated above. Hepworth further discloses wherein the vaporizer device has a longitudinal axis (Fig. 9A, where each of “Module 1”” and “Module 2”” may be either a “module of the first module type 300” or a “module of the second module type 400”, ¶ 0115);
wherein the at least one cartridge further includes a first set of electrodes (“When a module is connected to the control module 200”, the first connector and the second connector each makes a separate electrical connection with the control circuitry 204” to enable power to be applied separately to the first electrical contact (P1”) and the second electrical contact (P2”) of that module”, ¶ 0120) configured to interact with the first plurality of electrodes of the battery module to transmit heat energy from the battery module to the vaporizable material (“Module 1 is connected to the control module 200” and receives power via the connections P1” and P2”.”, ¶ 0121);
wherein the at least one cartridge is a first cartridge (“first module of the first module type 300a”, Fig. 6D, ¶ 0071) and the flavor is a first flavor (¶ 0072); and
wherein the vaporizer device further comprises a second cartridge (“second module of the first module type 300b”, Fig. 6D, ¶ 0071, where the device may include “at least two modules selected from modules of the first and second module types connected together in a stacked arrangement”, ¶ 0007) removably coupled (“releasably connecting”, ¶ 0031, 0033) to the first cartridge such that the tube is operable to receive a second vapor from the second cartridge (¶ 0065, 0076);
wherein the first cartridge receives the second cartridge within the second pocket so that the first cartridge and the second cartridge are disposed in series along the longitudinal axis (Fig. 9A); and
wherein the first cartridge further comprises a second set of electrodes configured to transmit heat energy received in the first cartridge at the first set of electrodes to the second cartridge (Figs. 9B-9C, ¶ 0120-0121) so that the first cartridge and the second cartridge are connected in series to the battery module (Fig. 9A).
Regarding claim 6, Hepworth in view of John discloses the vaporizer device of claim 5, as stated above. Hepworth further discloses wherein the second cartridge comprises a second vaporizable material (e-liquid, ¶ 0072) including a second flavor that is different from the first flavor (“the e-liquids may comprise different flavours”, ¶ 0072).
Regarding claim 7, Hepworth in view of John discloses the vaporizer device of claim 6, as stated above. Hepworth further discloses wherein the battery module is removably coupled (“releasably connecting”, ¶ 0031, 0048) to the second cartridge and operable to power the first and second cartridges (¶ 0047).
Regarding claim 8, Hepworth in view of John discloses the vaporizer device of claim 1, as stated above. Hepworth further discloses wherein the at least one cartridge further includes a heating element (“heater 314”, Fig. 2, ¶ 0028) arranged adjacent to and configured for heating the vaporizable material (Fig. 2, ¶ 0028); and
wherein the vaporizable material is dispersed in a liquid (“liquid 308”, ¶ 0029) absorbed into a wick (“wick 316”, ¶ 0029) that defines an opening configured to receive the heating element (Fig. 2).
Regarding claim 9, Hepworth in view of John discloses the vaporizer device of claim 1, as stated above. Hepworth further discloses wherein the at least one cartridge is removably coupled (“releasably connecting”, ¶ 0033, 0042) to the cigarette adapter (Fig. 9A, where “Module 1”” may be a “module of the first module type 300” and “Module 2”” may be a “module of the second module type 400”, ¶ 0115) along a longitudinal axis (Fig. 9A);
wherein the at least one cartridge has a cross-section along a plane that intersects and is perpendicular to the longitudinal axis (Fig. 9A); and
wherein the cross-section has an oblong shape (Fig. 9A, ¶ 0116).
Regarding claim 10, Hepworth in view of John discloses the vaporizer device of claim 9, as stated above. Hepworth further discloses wherein the cross-section has a “generally rectangular” shape. With regard to the cross-section having an “oval shape” instead of “generally rectangular”, absent persuasive evidence that the particular configuration of the claimed cross-section is significant, it is deemed to be an obvious matter of design choice (see MPEP § 2144.04(IV)(B)).
Regarding claim 11, Hepworth discloses a vaporizer device (“modular aerosol provision device 100”, Fig. 1, ¶ 0021) comprising:
a cigarette adapter (combination of “module of the second module type 400” and “mouthpiece 500”, Figs. 1, 3, and 5, ¶ 0024, 0035, 0049) configured to heat a cigarette (“The module of the second module type 400 further comprises a heating arrangement 414 for heating the material 408”, ¶ 0038, “material 408 . . . held within its own container, for example an open-ended tube”, ¶ 0037, “material 408 typically comprises tobacco”, ¶ 0039) to produce a nicotine-containing vapor (¶ 0004, 0058) and including a mouthpiece (“mouthpiece 500”, Figs. 1 and 5, ¶ 0049) having a top portion (“body 502”, Fig. 5, ¶ 0049) and an outlet (“mouthpiece outlet 508”, Fig. 5, ¶ 0049) extending from the top portion and configured for receiving a proximal end of the cigarette (“mouthpiece outlet 508” is capable of receiving a proximal end of a cigarette, Fig. 5);
wherein the cigarette adapter has:
an adapter housing (combination of “second connection interface 420” and “first connection interface 418”, Fig. 3, ¶ 0041) having a bottom piece (“first connection interface 418”, Fig. 3, ¶ 0041) and a housing side wall (side wall of “second connection interface 420”, Fig. 3, ¶ 0041);
a cup (combination of “housing 402” with “channel 403” and “inlet screen 410”, Fig. 3, ¶ 0035-0036) situated in the adapter housing (Fig. 3) and configured to receive a distal end of the cigarette (“channel 403 is for receiving a material 408”, ¶ 0036, so the cup formed from “housing 402” and “inlet screen 410” is capable of receiving a distal end of a cigarette, Fig. 3); and
an adapter heating element (“heating arrangement 414”, Fig. 3, ¶ 0038) situated adjacent the cup (Fig. 3) and configured to provide heat to the cigarette without burning or combusting the cigarette (¶ 0038, 0058);
a first cartridge (“module of the first module type 300”, Figs. 1 and 2, ¶ 0026) including a first vaporizable material (“e-cig liquid 308”, Fig. 2, ¶ 0026);
wherein the cigarette adapter further comprises a tube (“channel 403”, Fig. 3, ¶ 0035) configured as a conduit for vapor from the at least one cartridge to flow to the mouthpiece, such that the nicotine-containing vapor from the cigarette and the vapor from the at least one cartridge are provided together to a user at the mouthpiece (¶ 0065-0066, 0068); and
a battery module (“control module 200”, Figs. 1 and 4, ¶ 0047) removably snappable (“releasably connecting”, ¶ 0031, 0042, 0048) onto at least one of the first cartridge and the cigarette adapter (see Figs. 9A-9D, where “Module 1”” may be either a “module of the first module type 300” or a “module of the second module type 400”, ¶ 0115-0116) and configured to provide heat energy to the first cartridge to vaporize the first vaporizable material to produce a vapor (¶ 0047, 0063).
However, Hepworth does not disclose an adapter battery cell situated within the adapter housing and configured to power the adapter heating element.
John, in the same field of endeavor, discloses using separate batteries for different heating components (¶ 0162). John also discloses a benefit to using separate batteries in that it allows for the different heating components to be used independently (¶ 0162). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include an additional battery as taught by John as an adapter battery cell configured to power the adapter heating element, in order to obtain this benefit. With regard to the placement of the adapter battery cell in the device of the combination, situating the adapter battery cell within the adapter housing amounts to a rearrangement of the parts of the device of the combination and, as such, would have been obvious to one having ordinary skill in the art before the Application’s effective filing date (MPEP § 2144.04(VI)(C)).
Regarding claim 12, Hepworth in view of John discloses the vaporizer device of claim 11, as stated above. Hepworth further discloses wherein the first cartridge has a non-threaded connector (see Figs. 9A-9D, where each of “Module 1”” and “Module 2”” may be either a “module of the first module type 300” or a “module of the second module type 400”, ¶ 0115-0116) that is configured to removably connect (“releasably connecting”, ¶ 0031) to at least one of the battery module and the cigarette adapter.
Regarding claim 13, Hepworth in view of John discloses the vaporizer device of claim 11, as stated above. Hepworth further discloses wherein the vaporizer device has a longitudinal axis (Fig. 9A);
wherein the cigarette adapter, the first cartridge, and the battery module are removably snappable (“releasably connecting”, ¶ 0031, 0033, 0042, 0048) together in series along the longitudinal axis (Figs. 9A-9D, ¶ 0115-0116);
wherein the cigarette adapter is removably connectable (“releasably connecting”, ¶ 0033, 0042) to the first cartridge without twisting the cigarette adapter about the longitudinal axis with respect to the first cartridge (Figs. 9A-9D, ¶ 0115-0116);
wherein the first cartridge is removably connectable (“releasably connecting”, ¶ 0031, 0033, 0042, 0048) to the cigarette adapter and the battery module without twisting the first cartridge about the longitudinal axis with respect to the cigarette adapter and the battery module (Figs. 9A-9D, ¶ 0115-0116); and
wherein the battery module is removably connectable to the first cartridge (“releasably connecting”, ¶ 0031, 0048) without twisting the battery module about the longitudinal axis with respect to the first cartridge (Figs. 9A-9D, ¶ 0115-0116).
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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