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 .
Response to Arguments
The Office acknowledges the Board’s reversal, issued 25 November 2025, of the Office action issued 3 May 2024. However, on review, the Office finds new grounds for objection and of rejection which are provided below.
In particular, in the Examiner’s Answer issued 15 January 2025, the Examiner argued that the proposed “modification of Li by Nicholson is just as obvious as taking the foam body and unevenly distributed susceptor material of Nicholson and modifying it with Li by replacing the foam with ceramic as an alternative, known, effective heater body material (say, one with a durability advantage)” (p. 10). Patent Trial and Appeal Board provided no comment directed to the particular argument, leaving the Office to understand that this type of rejection could be valid, since such an argument about the obviousness of this type of material choice is not affected by the Board’s finding on how Li’s uniform heat distribution and thermal efficiency goal set limits on how obvious it would be to modify Li such that it would have an uneven heat distribution.
On review, the Office observes that Li’s own susceptor material is formed as a foam (as evident from the “foaming agent” used to form the porous ceramic body as per its ¶ 24). Meanwhile, Nicholson is open-ended about the material(s) that would be used to form its foam, hardly saying more than it could be formed of a solid material. Therefore, Nicholson lays clear groundwork for the argument that it would have been obvious to one of ordinary skill in the art to consider the teachings regarding ceramic foam from Li in deciding what actual material to use to form its foam, particularly since Li does not seem to suggest that its ceramic material is bound to work only with its evenly distributed susceptor material.
Therefore, a newly formulated rejection, citing to Nicholson as the primary reference, and using a new rationale for modifying it with Li, is provided below.
The approval to reopen prosecution of this application is hereby granted by the TC Group Director:
/MARIVELISSE SANTIAGO CORDERO/
Director, Technology Center 3700
Specification
The amendment filed 14 December 2020 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the British Application No. 1809786.5 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 11 June 2019. See MPEP 1893.03(b). Therefore, the specification amendment of 14 December 2020 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 15 and 16 are objected to because of the following informalities:
Claim 15 recites “the concentration ratio of susceptor material to ceramic member” (on each of ll. 4–5 and 5–6). Although “susceptor material” is mentioned earlier in the claim, as is “ceramic material,” “ceramic member” is not, and for clarity, it should be properly introduced earlier in the claim.
Claim 16 recites, first, “a ceramic material” (l. 3), followed by “ceramic member” (each of lines 5 and 7). The latter clearly refers to the former, but should be amended to similarly recite “ceramic material” for clarity.
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 1–3, 5–8, and 10–19 are rejected under 35 U.S.C. 103 as being unpatentable over Nicholson (WO 2018/002084 A1) in view of Li et al. (US Pub. 2017/0188636).
Claim 1: Nicholson discloses an inductive heater for an aerosol generating device, comprising:
a heater element (2) for heating aerosol generating material (p. 7, l. 24 to p. 8, l. 2, “aerosol”), wherein the heater element comprises a member (20) and susceptor material (30) integrally formed with the ceramic member (see e.g. fig. 7), the susceptor material arranged in use to be heated by electromagnetic induction (see p. 6, ll. 6–18, “induction heating”), wherein the concentration ratio of susceptor material to ceramic member in a first region of the heater element is different to the concentration ratio of susceptor material to ceramic member in a second region of the heater element (pg. 10, lns. 3–16, “the elements 30 may instead by disbursed through the foam 20 unevenly so that a first region of the article has a greater density or proportion of heating material than a second region”).
Nicholson does not disclose its member being a ceramic member. Nicholson only discloses it as a “foam,” but does not provide any suggestions about the specific type of foam its member would be comprised of.
However, Li discloses a similar apparatus wherein it is known for the foam utilized (evident from the “foaming agent” used in the process of making the body in ¶ 24) as the member to be ceramic (¶ 23, “porous ceramic main body”) and susceptor material (¶ 20, “metallic powder,” its susceptor function evident from inductive coil 132) integrally formed with the ceramic member. Li further indicates constructing the main body of ceramic is quite useful (¶ 23).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to construct the member of Nicholson out of the ceramic taught by Li as a material known in the art to be useful and suitable for having susceptor material integrally formed therein in an inductive heater for an aerosol generating device (see MPEP § 2144.07).
Claims 2 and 3: Neither Nicholson nor Li explicitly discloses the heating element having a greater concentration of the ceramic member relative to the susceptor material, nor vice versa.
However, it would have been obvious to one of ordinary skill in the art to determine the appropriate concentrations of the ceramic member and susceptor material given that both Nicholson and Li discloses which materials are suitable for forming the heating element, as well as the general predictability regarding the heating reactivity of the member due to electromagnetic induction. See MPEP § 2143.I., rationale (E), “obvious to try”— choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. One of ordinary skill in the art would have discerned that a greater concentration of ceramic material may be appropriate if the overall element is large enough that too high a concentration of susceptor material would cause overheating, or if the element needs to be able to wick more liquid for aerosolizing, while greater concentrations of susceptor material would be suitable if the heating output of the heater element would otherwise be too low.
Claim 5: Nicholson discloses its heater element being elongate (see figs. 2, 3, and 7).
Furthermore, one of ordinary skill in the art would naturally understand Nicholson’s language from pg. 10, lns. 10–16, to suggest that the concentration ratio of the susceptor material to the ceramic member would vary along a length of the heater element, both because Nicholson separately teaches different regions with different foam densities along the length of the heater element (see figs. 6–8, and p. 15, l. 23 to p. 16, l. 19), and because a difference in susceptor material concentration along the width would not in any way facilitate the “progressive heating” that the passage on page 10 mentions.
Claim 6: Nicholson discloses the susceptor material being in the form of at least one of the following: beads, flakes, particles, shards, rods, or tubes (p. 11, ll. 8–9, “spherical” reads on beads, “particle” reads on particles).
Claim 7: Li discloses the susceptor material being a metal (p. 16, l. 20 to p. 17, l. 6, “metal,” with numerous examples given).
Claim 8: Li discloses the susceptor material being a ferrous metal (p. 16, l. 20 to p. 17, l. 6, “steel”).
Claim 10: Nicholson does not seem to explicitly disclose its embodiment with varying susceptor material concentrations (i.e. particle-like form) having its ceramic member being in the form of a hollow tube for receiving aerosolizable material.
However, Li, which otherwise teaches a rod form that matches that of Nicholson (p. 7, l. 22), also teaches its ceramic member being in the form of a hollow tube for receiving aerosolizable material (¶ 22, “tubular,” “hollow cylinder”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to change Nicholson’s member from having a rod shape to having a hollow tube shape, as taught by Li, to increase the air flowability within the member to make it easier for aerosols to be drawn out (at the cost of reducing the thermal contact between the heated susceptor particles and the aerosolizable material).
Claim 11: Nicholson never explicitly discloses that its member is arranged to provide a wicking function for wicking aerosol generating material to the member.
However, one of ordinary skill in the art would understand that Nicholson’s foam, to some extent, would almost invariably have this feature.
Furthermore, Li’s discloses its own ceramic member being arranged to provide a wicking function for wicking aerosol generating material to the ceramic member (¶ 23, “tobacco liquid permeates . . . heating body 131 . . . via a capillary action”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to adopt the wicking feature of the ceramic material of Li along with the implementation of Li’s ceramic material into Nicholson to facilitate thermal contact between the susceptor material throughout the ceramic material (to ensure that the heat from the susceptor material was being used efficiently).
Claim 12: Modified as per claim 1 above, Li discloses the ceramic member being formed of sintered ceramic material (¶ 24, “sintering the molded mixture”).
Claim 13: While Nicholson is not explicit, Nicholson clearly suggests that its inductive heater is saturated with aerosolizable material in liquid form (p. 5, l. 11 explains that the smokable material can be “liquid,” while at least p. 7, ll. 18–19 explains that the foam comprises the smokable material).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have the inductive heater of Nicholson saturated with liquid aerosolizable material so that all of its susceptor particles could properly work to heat an aerosolize the aerosolizable material.
Comment: Li clearly suggests that its own inductive heater is saturated with aerosolizable material in liquid form, with ¶ 23 describing how “the tobacco liquid permeates from ends of the liquid conducting and heating body 131 to a middle portion via a capillary action.” However, Li’s inductive heater is oriented differently from Nicholson’s.
Claim 14: Nicholson modified by Li discloses an induction heating system for an aerosol heating device (Nicholson: 1000) comprising the inductive heater of claim 1 (see the rejection above) and an electromagnetic field generator (112) to heat the inductive heater (p. 24, ll. 13–15 explains that the electromagnetic field generator heats a separate heater 115 as well as the heating material of articles 2, 3, 5, or 6, where articles 2 (see fig. 3) and 5 (see fig. 7) comprise particles able to have uneven distributions as claimed in claim 1).
Claim 15: Nicholson discloses an inductive heater for an aerosol generating device, comprising:
a heater element (2) including an embedded susceptor material (30) configured to heat when penetrated by a varying magnetic field (see p. 6, ll. 6–18, “varying magnetic field”), the heater element further arranged to wick aerosolizable material in a liquid form, wherein the concentration ratio of susceptor material to a member (20) in a first region of the heater element is different to the concentration ratio of susceptor material to ceramic member in a second region of the heater element (pg. 10, lns. 3–16, “the elements 30 may instead by disbursed through the foam 20 unevenly so that a first region of the article has a greater density or proportion of heating material than a second region”); and
aerosolizable material in a liquid form (p. 5, l. 6, “aerosol,” and l. 11, “liquid”).
Nicholson does not disclose that its member is a ceramic member. Nicholson only discloses it as a “foam,” does not provide any suggestions about the specific type of solid material its member would be comprised of.
However, Li discloses a similar apparatus with a ceramic member (¶ 23, “porous ceramic main body”) and susceptor material (¶ 20, “metallic powder,” its susceptor function evident from inductive coil 132) integrally formed with the ceramic member. Like Nicholson, Li’s ceramic member is a foam (evident from the “foaming agent” used in the process of making the body in ¶ 24).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to construct the member of Nicholson out of the ceramic taught by Li as a material known in the art to be suitable for having susceptor material integrally formed therein (see MPEP § 2144.07).
While Nicholson is not explicit, Nicholson clearly suggests that its inductive heater is saturated with aerosolizable material in liquid the form (at least p. 7, ll. 18–19 explains that the foam comprises the smokable material, which can be liquid as per the passages on page 5 cited above).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have the inductive heater of Nicholson saturated with liquid aerosolizable material so that all of its susceptor particles could properly work to heat an aerosolize the aerosolizable material.
Comment: Li clearly suggests that its own inductive heater is saturated with aerosolizable material in liquid form, with ¶ 23 describing how “the tobacco liquid permeates from ends of the liquid conducting and heating body 131 to a middle portion via a capillary action.” However, Li’s inductive heater is oriented differently from Nicholson’s.
Claim 16: Nicholson discloses an inductive heater for an induction heating system of an aerosol generating device comprising a susceptor material (30) at a pre-determined concentration (p. 10, ll. 3–16, “uneven distribution,” requiring some pre-determined concentration), wherein the concentration ratio of susceptor material to body material (20) in a first region of the heater element is different to a concentration ratio of susceptor material to body material in a second region of the heater element (pg. 10, lns. 3–16, “the elements 30 may instead by disbursed through the foam 20 unevenly so that a first region of the article has a greater density or proportion of heating material than a second region”).
Nicholson does not disclose its member being a ceramic member. Nicholson only discloses it as a “foam,” but does not provide any suggestions about the specific type of foam its member would be comprised of.
However, Li discloses a similar apparatus wherein it is known for the foam utilized (evident from the “foaming agent” used in the process of making the body in ¶ 24) as the member to be ceramic (¶ 23, “porous ceramic main body”) and susceptor material (¶ 20, “metallic powder,” its susceptor function evident from inductive coil 132) integrally formed with the ceramic member. Li further indicates constructing the main body of ceramic is quite useful (¶ 23).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to construct the member of Nicholson out of the ceramic taught by Li as a material known in the art to be useful and suitable for having susceptor material integrally formed therein in an inductive heater for an aerosol generating device (see MPEP § 2144.07).
Nicholson does not disclose a method of manufacturing its inductive heater comprising providing the ceramic material, dosing the ceramic material with the susceptor material, and forming the dosed ceramic material into a desired shape of the inductive heater.
However, Li discloses a highly similar inductive heater (131), including a method of manufacturing it by providing a ceramic material (¶ 24, “aluminum oxide, zirconium oxide, kaolin, diatomite, and montmorillonite”);
dosing the ceramic material with a susceptor material at a pre-determined concentration (¶ 24, “mixing a metallic powder,” which necessitates a resultant predetermined concentration); and
forming the dosed ceramic material into a desired shape of the inductive heater (¶ 24, “the mixture is molded to a predetermined shape”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the manufacturing method taught by Li as a guide to form the inductive heater of Nicholson as a known and effective means of doing so.
Comment: The “heater element” clearly refers to the “inductive heater.”
Claim 17: Modified as per claim 16 above, Li discloses the ceramic material being provided in a slurry form (the mixture formed from metallic powder, foaming agent, and ceramic mentioned in ¶ 24 would form a slurry) and the dosed ceramic material being molded into the desired shape of the inductive heater (¶ 24, “the mixture is molded to a predetermined shape”).
Claim 18: Modified as per claim 16 above, Li discloses the ceramic material being provided in a powder form (¶ 24, “metallic powder”) and the dosed ceramic material is formed into the desired shape of the inductive heater (¶ 24, “the mixture is molded to a predetermined shape”) and then sintered to fix the desired shape of the inductive heater (¶ 24, “sintering the molded mixture”).
Claim 19: Nicholson does not seem to explicitly disclose its embodiment with varying susceptor material concentrations (i.e. particle-like form) having its ceramic member being in the form of a hollow tube for receiving aerosolizable material.
However, Li, which otherwise teaches a rod form that matches that of Nicholson (p. 7, l. 22), also teaches its dosed ceramic material being in the form of a hollow tube for receiving aerosolizable material (¶ 22, “tubular,” “hollow cylinder”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to change Nicholson’s member from having a rod shape to having a hollow tube shape, as taught by Li, to increase the air flowability within the member to make it easier for aerosols to be drawn out (at the cost of reducing the thermal contact between the heated susceptor particles and the aerosolizable material).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nicholson in view of Li as applied to claim 1 above, and further in view of Stark (WO 03/063548 A2).
Nicholson and Li do not disclose, in total, the susceptor material comprising at least two types of susceptor material, wherein concentration ratios of the types of the susceptor material to the ceramic member vary across the heater element.
However, Stark discloses a heater element with a ceramic member (see claim 44) and susceptor material (see claim 32), the susceptor material comprising at least two types of susceptor material (ibid.).
It would have been obvious to one of ordinary skill in the art to employ two types of susceptor material, as taught by Stark, to facilitate fast heating (see pg. 2, lns. 20–24 of Stark), and it further would have been obvious to vary the concentration ratios of these types of susceptor materials to the ceramic member across the heating element as part of implementing the different concentration ratios for the first and second regions shown in Nicholson.
Conclusion
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/JOHN J NORTON/Primary Examiner, Art Unit 3761