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 .
Status of the Claims
Claims 1-4, 6-10, 12, 13, 15-17 and 19-24 are pending.
Claims 22 and 23 remain withdrawn.
Claims 1 and 24 have been amended.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 24, the amendment to the claim states, “wherein the controller is arranged within an outer surface of the apparatus and is not arranged to be accessed by a user in use.” The Applicant states that this is supported by PCT claim 1 and locations throughout the specification.
The Examiner is unable to locate support for this amendment in the specification. Furthermore, the specification explicitly states, “a controller 124, and a user interface 125 for user-operation of the controller 124,” (page 13, lines 22-25) and “The controller 124 is operated in this embodiment by user-operation of the user interface 125. The user interface 125 is located at the exterior of the apparatus 100. The user interface 125 may comprise a push-button, a toggle switch, a dial, a touchscreen, or the like,” (page 15, lines 25-30). Thus, the controller in the instant specification is arranged to be accessed by a user in use, specifically via the user interface 125. This claim amendment does not have support in the specification, and the specification appears to directly contradict the claim amendment.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive.
Applicant Argument A:
Applicant finds the cited Li reference distinguishable from the limitations of claim 1. Li discloses a device for inductively heating tobacco material. This device comprises a tubular metal "bin wall" 1021, which defines an internal cavity 1022 containing tobacco material 104. An induction coil 103 surrounds the wall 1021, which can generate an alternating magnetic field is that causes the wall 1021 to become heated, thereby vaporizing tobacco material 104 in the cavity 1022.
As noted by the Examiner in the Office Action, this coil 103 of Li does not have a variable pitch, and instead is presented as having a fixed pitch which causes the wall 1021 produce heating which is "uniform" with a result that "the atomization and baking effect is better", as per paragraph [0022].
In this regard, the Examiner has turned to secondary document, Song, which discusses approaches for the induction heating of a metallic rod-shaped workpiece by an equal-pitch coil ("EPC"), a variable-pitch coil ("VPC"), or a variable-radius coil ("VRC"). However, Song is focused on ensuring that the heating of the workpiece is uniform.
As discussed in the "Introduction" section of Song, this document recognizes that "when the temperature of the workpiece is uniform, the uneven hardness of the nitride layer and uneven nitriding layer depth are reduced', and that it is "very important to control the temperature distribution". To achieve this uniform heating Song teaches in page 9, column 1, that the variable- pitch coil (VPC) in particular can be used to cause induction heating of the workpiece to provide heating which "at each point on the workpiece surface is more uniform".
As such, if a person of ordinary skill in the art were to look to modify the device of Li in view of Song, they would at best be motivated to implement an approach using a variable-pitch coil (VPC) which causes uniform heating of the wall 1021.
This, however, is in direct contradiction with claim 1, which specifies that different portions of the elongate heater element are heated differently, i.e. in a non-uniform manner, which is not only not taught in Song but is explicitly described as being undesirable and ineffective in this document.
Accordingly, a person of ordinary skill in the art is merely taught by Song to implement an approach which causes uniform heating, and any other modification would not only be unmotivated, but also entirely counter to any teaching in the prior art, with Li and Song both focusing on arrangements which use a coil to cause uniform heating, and indicating this to be desired.
Examiner Response A:
The Examiner respectfully disagrees. The Applicant appears to be arguing that because Song results in a temperature field at each point on the workpiece surface that is more uniform, the VPC coil cannot produce a different strength of varying magnetic field by different portions of the coil. This is incorrect.
SONG teaches that when a VPC coil is used, the magnetic field inside the coil is distributed in a gradient. Thus, a different strength of varying magnetic field is produced by different portions of the coil so as to cause different portions of the elongate heater element to be heated differently. The result is a temperature field at each point on the workpiece surface that is more uniform.
Furthermore, the specification states “The provision of a varying pitch may enable the strength of a varying magnetic field produced by the coil 122 to be different at different portions of the coil 122, which may help provide progressive heating of the heating element 110 and heating zone 113.” Thus, the claim limitations are a property of the claimed coil with a varying pitch. The courts have held that that a material and its properties are inseparable and the recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims.
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, 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 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 1-4, 6, 7, 9, 10, 12, 13 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN203762288 (LI hereinafter) in view of “Experimental and numerical study of the effect of coil structure on induction nitriding temperature field” (SONG hereinafter).
Regarding claims 1-3, 13 and 15-17, LI teaches an apparatus (Fig. 1), comprising:
a heater zone (1022) configured to receive tobacco material (104) ([0024]);
a magnetic field generator (103);
and an elongate heater element (102) disposed around the heater zone and including heater material that is heatable by penetration with the varying magnetic field, specifically iron ([0026]), to thereby heat the heater zone. The elongate heater element (102) comprises an elongate tubular heating member extending around the heating zone and consisting entirely of the heating material (page 10 , lines 5-8).
LI teaches that the heater zone (1022) is defined by the heater element (102), wherein the heater zone forms a chamber defined by heater element (102) which just contains the smokable material ([0026]), and therefore is free of any heater material.
Li teaches the magnetic field generator comprises a coil (103) and comprises a device (201) for passing a varying electrical current through the coil ([0042]), such that the magnetic field generator is configured to generate a varying magnetic field.
LI shows the inductor coil is an equal pitch coil (EPC).
SONG teaches the axial and radial temperature distributions of three types of induction coils; an equal pitch coil (EPC), a variable pitch coil (VPC) and a variable radius coil (VRC) with the intent of achieving better temperature distribution along the length of a workpiece subjected to induction heating. SONG teaches that when a VPC coil is used, the magnetic field inside the coil is distributed in a gradient, so that the workpiece obtains a relatively uniform eddy field, resulting in a temperature field at each point on the workpiece surface that is more uniform (page 14).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the equal pitch induction coil within the aerosol-generating device of LI with a variable pitch coil as taught by SONG so that the heater zone obtains a relatively uniform eddy field, resulting in a temperature field at each point on the workpiece surface that is more uniform (SONG, page 14).
Regarding the limitation that, “the coil has a varying pitch such that a different strength of varying magnetic field is produced by different portions of the coil so as to cause different respective portions of the elongate heater element to be heated differently,” the original specification states on page 14, lines 15-19 of WO 2017/036955, “The provision of a varying pitch may enable the strength of a varying magnetic field produced by the coil 122 to be different at different portions of the coil 122, which may help provide progressive heating of the heating element 110 and heating zone 113, and thus any article located in the heating zone 113, in a manner similar to that described above.” Thus, this claim limitation is a property of the claimed coil with a varying pitch. The courts have held that that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claims 4 and 7, LI teaches a mass of thermal insulation between the coil and the heater element ([0027]).
Regarding claim 6, LI teaches that the coil (103) encircles the heater element (102) (Fig. 1).
Regarding claim 9, LI teaches the insulation encircling the coil ([0027]).
Regarding claim 10, LI does not explicitly state the dimensions of the gap between the heater element and the innermost surface of the coil (shown in Fig. 1). However, it would have been obvious for one of ordinary skill in the art to have optimized the size of the gap, so that the gap is not too small such that insulation cannot fit in the gap, but not too large that the device has unnecessary empty space within it contributing to the bulk, with reasonable expectation of success and predictable results.
Regarding claim 12, LI does not explicitly state that impedance of the coil is substantially equal to impedance of the heater element, however, it would have been obvious for one of ordinary skill in the art at the time of the invention to have done this in order to optimize energy transfer.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of SONG as applied to claim 7 above, and further in view of US 2014/0196716 (LIU hereinafter).
Regarding claim 8, the combined teachings of LI and SONG do not expressly teach the material of the insulation.
LIU teaches an e-cigarette with thermal insulation made of high temperature resistant cotton or non-woven fabrics ([0054]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have applied the cotton or non-woven fabric as the thermal insulation in LI with predictable results and reasonable expectation of success.
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of SONG as applied to claim 7 above, and further in view of US 5613505 (CAMPELL hereinafter).
Regarding claim 19, the combined teachings of LI and SONG do not expressly teach a first portion of the heater element that is more susceptible to eddy currents than a second portion.
CAMPELL teaches an inductive heating system for smoking articles comprising a multi-portioned heater element (Fig. 4, 102 and 114), wherein only one portion (102) is susceptible to eddy currents. It would have been obvious for one of ordinary skill in the art at the time of the invention to have included a multicomponent heater element in the invention of LI because it provides for a more customized heating of the smokable material.
Claim 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of SONG as applied to claim 1 above, and further in view of US 5591368 (FLEISCHHAUER hereinafter).
Regarding claim 20, the combined teaching of LI and SONG teaches the heater element includes an elongate heater member (102) comprising the heater material iron ([0026]). LI does not explicitly teach a coating on the heater member.
FLEISCHHAUER teaches a heater for use in an electrical smoking system with a coating of a ceramic material to further avoid oxidation and reaction (col. 17, lines 10-14). It would have been obvious for one of ordinary skill in the art at the time of the invention to have coated the inner surface of the heater member of LI with ceramic in order to help halt oxidation and reaction of the heater element from the volatilization of the smokable material in the heater zone.
Claim 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of SONG as applied to claim 1 above, and further in view of US 20060196518 (HON hereinafter).
Regarding claim 21, the combined teaching of LI and SONG teaches a body (Fig. 1) including a magnetic field generator (103); and a mouthpiece (105) that defines a passageway (107) that is in fluid communication with the heater zone (1022) ([0024]); and LI teaches that the mouthpiece is movable relative to the body to permit access to the heater zone ([0031]).
LI does not expressly teach that the mouthpiece includes the elongate heater element.
HON teaches an e-cigarette wherein the heater element is in the mouthpiece ([0020]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have extended the heater element of LI into the mouthpiece with a reasonable expectation success and predictable results.
Claim 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN203762288 (LI hereinafter) in view of CN203952405 (ZHAO hereinafter).
Regarding claim 24, LI teaches an apparatus (Fig. 1), comprising: a heater zone (1022) configured to receive smokable material (104) ([0024]); a magnetic field generator (103); and an elongate heater element (102) disposed around the heater zone and including heater material that is heatable by penetration with the varying magnetic field (1021) to thereby heat the heater zone ([0026]).
LI teaches an electrical power source (202) which is electrically connected to the magnetic field generator (Embodiment 3).
LI does not expressly teach a first coil and a second coil such that the first and second varying magnetic fields penetrate different first and second respective portions of the heater element disposed at least partially around the heater zone, such that the first portion of the elongate heating element is heated independently of the second portion of the elongate heating element, and to generate the first and second respective portions of the heater element are heated at least partially together at the same time.
ZHAO teaches an aerosol generating article comprising an inductor and a susceptor (abstract) wherein the inductor may comprise three coils that independently generate a fluctuating magnetic field (page 4, paragraph (4)), which would result in a first coil configured to generate a first varying magnetic field and a second coil configured to generate a second varying magnetic field, thereby leading to the magnetic field generator arranged to generate a plurality of varying magnetic fields. ZHAO teaches three separate EM induction systems, each with their own controller (third paragraph from the end of ZHAO) and with an overall controller (‘guidance panel’ 29 in ZHAO) which would result in the overall controller connected to the first coil and the second coil, respectively, and controlling a supply of electrical power from the electrical power source to the first coil and the second coil. It also would have resulted in the plurality of varying magnetic fields penetrating different portions of the elongate heater element, such that the first varying magnetic field penetrates a first portion of the elongate heating element (the portion of the heating element adjacent the first coil) and the second varying magnetic field penetrates a second portion of the elongate heater element (the portion of the heating element adjacent the second coil). Zhao teaches that the ‘guidance panel’ 29 is on the casing 21, thus the controller would be within the casing since the ‘guidance panel’ is the outermost part of the overall controller. Furthermore, the controller is not arranged to be accessed by a user in use since only the ‘guidance panel’ 29 can be accessed in ZHAO.
It would have been obvious for one of ordinary skill in the art at the time of filing to have included multiple coils surrounding the cavity, as taught by ZHAO, in the invention taught by LI with a reasonable expectation of success and predictable results, specifically such that the first portion of the elongate heater element heated independently of the second portion of the elongate heater element.
Regarding the limitation, “wherein the controller is configured to adjust a characteristic of electric current passing through the first coil in order to control heating provided by the first coil, and adjust a characteristic of the electrical current passing through the second coil in order to control heating provided by the second coil, such that the controller controls heating provided by the first and second coils independently” since the controller of LI in view of ZHAO teaches three separate EM induction systems, each with their own controller (third paragraph from the end of ZHAO) and with an overall controller (‘guidance panel’ 29 in ZHAO) this would result in the overall controller controlling a supply of electrical power from the electrical power source to the first coil and the second coil independently.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755