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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 20, 2025 has been entered.
Response to Arguments
Applicant’s arguments, see pages 5 and 6, filed July 21, 2025, with respect to the rejection(s) of claim(s) 1-3, 5-13, and 15 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Palmgren et al. US 5837088 A.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith et al. US 20130255702 A1 in view of Monovoukas US 5378879 and Palmgren et al. US 5837088 A.
Regarding claim 1, Griffith discloses a material configured for use with an apparatus configured to heat smokable material (Para. 9, “inhalable materials”) to volatilize at least one component of the smokable material (ABSTRACT “aerosol forming”), the material comprising: smokable material (Para. 9, “inhalable materials”) and heater material (Para. 68).
Griffith does not disclose a mixture of smokable material and heating elements, each of the heating elements having an open-cell structure comprising discontinuities or holes therein, wherein the heating elements are made from a magnetic electrically- conductive material that is heatable by penetration with a varying magnetic field, and wherein the heating elements are aligned magnetically with each other.
However in the same field of endeavor, Monovoukas teaches a mixture of smokable material and heating elements (Col. 4, Lines 59-63 wherein the heating elements are mixed in with the “host” material; Fig. 1), each of the heating elements having an open-cell structure (Col. 4, Lines 66-68 wherein the heating elements are disk-like), wherein the heating elements are made from a magnetic electrically- conductive material (Col. 5, Lines 10-14) that is heatable by penetration with a varying magnetic field (Col. 7, Lines 4-7), and wherein the heating elements are aligned magnetically with each other (Col. 9, Lines 42-45).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
In the same field of endeavor, Palmgren teaches heating elements having an open-cell structure comprising discontinuities or holes therein (Fig. 1, Ref. 11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the open cell structure heating elements of Palmgren with Griffin in view of Monovoukas to improve heating efficiency, lower the weight, lower the cost, and improve handling (Palmgren Col. 2, Lines 7-12).
Regarding claim 2, Griffith discloses wherein the heater material is in the form of a closed circuit of the heater material (Para. 134).
Griffith does not specifically disclose wherein the heater material is magnetically conductive.
However in the same field of endeavor, Monovoukas teaches wherein the heater material is magnetically conductive (Col. 5, Lines 10-14).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
Regarding claim 3, Griffith does not specifically disclose wherein each of the open-cell structures is at least one of loop-shaped, ring-shaped, spherical, or formed from a plurality of discrete strands of the magnetic electrically-conductive heater material.
However in the same field of endeavor, Palmgren teaches wherein each of the open-cell structures is at least one of loop-shaped, ring-shaped (Fig. 1, Ref. 11), spherical, or formed from a plurality of discrete strands of the magnetic electrically-conductive heater material.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the open cell structure heating elements of Palmgren with Monovoukas to improve heating efficiency, lower the weight, lower the cost, and improve handling (Palmgren Lines 7-12).
Regarding claim 5, Griffith discloses wherein the magnetic electrically-conductive material comprises one or more materials selected from the group consisting of: aluminum, gold, iron, nickel (Para. 66), cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze.
Monovoukas also describes wherein the heater material comprises one or more materials selected from the group consisting of: aluminum, gold, iron, nickel (Col. 10, Lines 38-42), cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
Regarding claim 6, Griffith discloses wherein the magnetic electrically-conductive material is in contact with the smokable material (Para. 9 wherein the conductive material is integrally formed with the material to be vaporized), and wherein the smokable material comprises tobacco (Para. 14) and optionally one or more humectants.
Regarding claim 7, Griffith does not specifically disclose wherein the mixture provides an even, or substantially even, disbursement of the open-cell structures throughout the material, and wherein the open-cell structures have a width of less than three millimeters.
However in the same field of endeavor, Monovoukas teaches wherein the mixture provides an even, or substantially even, disbursement of the open-cell structures throughout the material (Col. 2, Lines 6-9), and wherein the open-cell structures have a width of less than three millimeters (Col. 7, Lines 59-61 wherein the size is not critical but a person of ordinary skill in the art would use the appropriate size for the use case).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
Regarding claim 8, Griffith discloses an article compromising the material of claim 1 (see claim 1) configured for use with an apparatus (Para. 22, “kit”) configured to heat the smokable material (Para. 9, “inhalable materials”) and volatilize at least one component of the smokable material (ABSTRACT, “aerosol forming”).
Regarding claim 9, Griffith discloses wherein the open-cell structures have a central axis that is substantially aligned with a longitudinal axis of the article (Fig. 5, Ref. 150 shows the conductive substrate aligned centrally within the cartridge).
Regarding claim 10, Griffith discloses a cover disposed around the smokable material and the open-cell structures (Fig. 1, Ref. 15).
Regarding claim 11, Griffith discloses wherein the cover includes a wrapper (Para. 131) or a sheet of paper, and wherein the open-cell structures have a maximum exterior dimension that is less than an interior dimension of the cover (Fig. 7C, Ref. 115 shows the wrap wherein the interior dimension of the wrap is greater than the exterior dimension of Ref. 150).
Regarding claim 12, Griffith discloses a mouthpiece that defines a passageway that is in fluid communication with the smokable material (Fig. 3, Ref. 18).
Regarding claim 13, Griffith discloses a method of manufacturing material (Para. 89) for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material (Para. 23), the method comprising: providing the smokable material (Para. 12)
Griffith does not disclose mixing heating elements, each heating element having open-cell structures comprising discontinuities or holes therein, the heating elements being made from a magnetic electrically-conductive material that is heatable by penetration with a varying magnetic field with the smokable material to produce a material comprising a mixture of smokable material and heating elements with the heating elements being magnetically aligned with each other.
However in the same field of endeavor, Monovoukas teaches mixing heating elements (Col. 4, Lines 59-63 wherein the heating elements are mixed in with the “host” material; Fig. 1), each heating element having open-cell structures (Col. 4, Lines 66-68 wherein the heating elements are disk-like), the heating elements being made from a magnetic electrically-conductive material (Col. 5, Lines 10-14) that is heatable by penetration with a varying magnetic field (Col. 7, Lines 4-7) with the smokable material to produce a material comprising a mixture of smokable material and heating elements with the heating elements being magnetically aligned with each other (Col. 9, Lines 42-45).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
In the same field of endeavor, Palmgren teaches heating elements having an open-cell structure comprising discontinuities or holes therein (Fig. 1, Ref. 11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the open cell structure heating elements of Palmgren with Monovoukas to improve heating efficiency, lower the weight, lower the cost, and improve handling (Palmgren Col. 2, Lines 7-12).
Regarding claim 15, Griffith discloses a system, comprising: an apparatus configured to heat smokable material (Para. 9, “inhalable materials”) to volatilize at least one component of the smokable material (ABSTRACT “aerosol forming”); and an article configured for use with the apparatus (Para. 22, “kit”), the article including a material comprising: a mixture of smokable material (Para. 23).
Griffith does not disclose mixing heating elements, each heating element having open-cell structures comprising discontinuities or holes therein, the heating elements being made from a magnetic electrically-conductive material that is heatable by penetration with a varying magnetic field with the smokable material to produce a material comprising a mixture of smokable material and heating elements with the heating elements being magnetically aligned with each other.
However in the same field of endeavor, Monovoukas teaches a mixture of smokable material and heating elements (Col. 4, Lines 59-63 wherein the heating elements are mixed in with the “host” material; Fig. 1), each of the heating elements having an open-cell structure (Col. 4, Lines 66-68 wherein the heating elements are disk-like), wherein the heating elements are made from a magnetic electrically- conductive material (Col. 5, Lines 10-14) that is heatable by penetration with a varying magnetic field (Col. 7, Lines 4-7), and wherein the heating elements are aligned magnetically with each other (Col. 9, Lines 42-45) wherein the apparatus optionally comprises an interface configured to cooperate with the article, and a magnetic field generator configured to, in use, generate a varying magnetic field that penetrates the heating material of the plurality of elements when the article cooperates with the interface.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus configured to heat smokable material of Griffith with the mixture of smokable material and heating elements of Monovoukas to increase the efficiency and effectiveness of heating the material (Monovoukas Col. 1, Lines 17-19).
In the same field of endeavor, Palmgren teaches heating elements having an open-cell structure comprising discontinuities or holes therein (Fig. 1, Ref. 11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the open cell structure heating elements of Palmgren with Monovoukas to improve heating efficiency, lower the weight, lower the cost, and improve handling (Palmgren Col. 2, Lines 7-12).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dooly et al. US 2015/0201674 A1 - Electronic smoking article with improved storage of aerosol precursor compositions
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/K.B.B./Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761