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 Amendment
Claim 1 is amended. Claims 5-16, 18-25 and 42-44 are cancelled. Claims 1-4, 17 and 26-41 are presently examined.
Applicant’s arguments regarding the objections to the drawings have been fully considered and are persuasive. The objections of 11/13/2025 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of 11/13/2025 are overcome.
Claim Interpretation
Regarding claims 1, 3-4, 17, 26-27 and 29-41, the claims require an aerosol generating article that has certain properties. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See MPEP § 2112.01, I. Furthermore, the Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. In this case, the cited references teach all of the structural limitations of the article and device, and one of ordinary skill in the art would recognize that the composition of the generated aerosol is dependent on the physical structure and composition of the article and its associated material. Furthermore, the claims do not explicitly require the device to be programmed to operate the heater for the claimed time periods, but only that a certain aerosol be generated if the heater were to be operated for the claimed time periods. Therefore, for the purposes of this Office action, any aerosol generating article comprising an aerosol generating material with the claimed physical characteristics is considered to be configured to generate an aerosol having the claimed composition under the claimed conditions.
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.
Claims 1-4, 17 and 26-41 are 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 1, the specification does not provide support for the newly added limitation “wherein the controller is programmed to use the at least one heat profile to disparately heat the mouth end inductor coil and the distal end inductor coil to maintain a consistent aerosol production profile.” Although applicant’s specification discusses operating the device according to pre-programmed heating profiles (page 25, lines 14-18), there is no disclosure that this results in disparate heating that maintains a consistent aerosol production profile. While applicant’s amendment suggests that applicant views this as an inherent result of operating the mouth end coil first and the distal coil second, this outcome is not described in applicant’s specification. Furthermore it is not at all clear that such an outcome is in fact inherent, since the amount of aerosol generated is dependent on many factors, not all of which relate to the order in which the two coils are activated. The limitation therefore introduces new matter. Claims 2-4, 17 and 26-41 introduce new matter by dependence.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 17 and 26-41 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites the limitation “wherein the controller is programmed to use the at least one heat profile to disparately heat the mouth end inductor coil and the distal inductor coil to maintain a consistent aerosol production profile.” The scope of this limitation is unclear on multiple levels. Firstly, the limitation states the controller is programmed to use the heat profile to maintain consistent aerosol production, however, it is unclear whether this is merely a result of heating the mouth end inductor coil first and the distal inductor coil second (as previously set forth in the claim) or requires additional controller functions which are not claimed. Furthermore, what is “consistent aerosol production?” Does that mean a perfectly constant rate of aerosol production within a puff, a similar amount of aerosol generation during each puff, production that fluctuates within some limit, or some other criterion? Applicant’s specification offers no guidance in either aspect since, while the term “heat profile” is mentioned, there is disclosure of the connection between a heat profile and the amount of aerosol produced.
Both of these ambiguities in the claim language render the claim indefinite. For the purposes of this Office action, the limitation will not be considered to limit the claim. Claims 2-4, 17 and 26-41 are indefinite by dependence.
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.
Claims 1-4, 17, 26-27, 29-41 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zinovik (US 12,219,997) in view of Mironov (US 11,477,861).
Regarding claim 1, Zinovik discloses an inductively heating aerosol generating device (abstract) having a susceptor cup (figure 9, reference numeral 860) defined by a susceptor sleeve forming a circumferential side wall of the assembly (figure 9, reference numeral 861) and at least a portion of the inner side wall of the cylindrical receiving cavity (column 17, lines 41-53, figure 9, reference numeral 820). The article fills the entire receiving cavity (figure 9). An aerosol generating device is inserted into the cavity (column 17, lines 41-53, figure 9, reference numeral 100). An induction source heats the susceptor (abstract), which is therefore considered to meet the claim limitation of an induction heater. The aerosol generating article has an aerosol forming substrate (abstract) having flavorant (column 11, lines 51-67, column 12, lines 1-7). One of ordinary skill in the art would recognize that Zinovik is capable of being operated to produce the claimed heat profile and generating an aerosol having the claimed composition if provided with a suitable aerosol generating article since Zinovik discloses that the article may be operated at temperatures of at least 300 °C (column 3, lines 11-23). The induction coil comprises a plurality of coils (column 8, lines 10-18) and that the all of the turns of the coils surround the susceptor (figure 8). Zinovik does not explicitly disclose (a) two coils surrounding different portions of the susceptor and (b) the downstream coil being heated before the upstream coil.
Regarding (a), Mironov teaches an aerosol generating device (abstract) having two inductor coils that facilitate selective heating (column 6, lines 26-31) that are arranged at different axial positions to reduce interference effects between the coils (column 21, lines 49-58). It is evident that one of the coils must be closer to the mouth end, which is considered to meet the claim limitation of a mouth end coil, and that the other must be closer to the distal end, which is considered to meet the claim limitation of a distal coil. The coils are heated at different times (column 21, lines 6-17), indicating that one must be heated before the other.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the two coils of Zinovik at different positions along the susceptor. One would have been motivated to do so since Mironov teaches that providing two inductor coils at different axial positions reduces interference between the coils.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to operate the downstream coil before the upstream coil since there are only two sequences to choose to operate the two coils in. The Courts have held that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See MPEP § 2143, E.
Regarding claim 2, Zinovik discloses that the aerosol forming substrate is solid and is made from a tobacco material (column 11, lines 51-67, column 12, lines 1-7).
Regarding claims 3-4, 17, 26-27, 31-37 and 40-41, one of ordinary skill in the art would recognize that Zinovik is capable of generating an aerosol having the claimed composition if provided with a suitable aerosol generating article since the susceptor releases heat to any composition surrounding it.
Regarding claims 29 and 38, Zinovik discloses that the aerosol generating substrate comprises nicotine (column 11, lines 51-67, column 12, lines 1-7). One of ordinary skill in the art would recognize that Zinovik is capable of generating an aerosol having the claimed composition if provided with a suitable aerosol generating article since the susceptor releases heat to any composition surrounding it.
Regarding claims 30 and 39, Zinovik discloses that the aerosol forming substrate comprises glycerine (column 2, lines 56-67, column 3, lines 1-8), which is considered to meet the claim limitation of an aerosol generating agent.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Zinovik (US 12,219,997) in view of Mironov (US 11,477,861) as applied to claim 1 above, and further in view of St. Charles (US 5,996,589).
Regarding claim 28, modified Zinovik teaches all the claim limitations as set forth above. Modified Zinovik does not explicitly teach the flavorant being menthol.
St. Charles teaches a smoking device where heated air forms an aerosol that is conveyed to user without combustion (abstract) where menthol is added to a support material to simulate sensations produced by conventional menthol cigarettes (column 3, lines 49-64).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the flavorant of modified Zinovik be menthol. One would have been motivated to do so since St. Charles teaches that menthol simulates sensations produced by conventional menthol cigarettes.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection are entered as set forth above.
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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755