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
Applicant's arguments filed 8/3/2026 have been fully considered but they are not persuasive.
Applicant argues that rationale for modifying Mironov by the teachings of Nielsen is merely a generic and conclusory statement. There is no reasonings in the rejections as to why a person having ordinary skill would make such a modification.
Examiner respectfully disagrees. MIRONOV et al. explicitly discloses that the inductor heating embodiments have a heater that leads to a more robust design (Paragraphs [0008], [0033]). Thus, the design of the heater itself is being attributed with the stated improvement.
The courts have generally held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). As is seen in the aforementioned paragraphs of MIRONOV et al., an express benefit is recognized by the heater design.
Applicant argues that even Mironov does not disclose a heater arranged in the cited capsule. Figure 5 of Mironov shows the recited wick, and is of one embodiment. The ferrite mesh is of a differently cited embedment with an internal passageway, 216, through the hollow cylindrical shape and not in the cited capsule.
Examiner respectfully disagrees. Mironov is disclosing multiple embodiments, as represented by figures 1 and 5. Both embodiments have a cylindrical cartridge and a central passageway (Paragraphs [0051] and [0060]). The embodiment represented by figure 5 provides the nexus between the invention described in Nielsen, and the proposed modification by Mironov, thereby making the inventions analogous, and providing a reasonable expectation of success of such a modification.
In the embodiment shown in figure 1 of Mironov, the susceptor (e.g., heater) is described as on an interior surface of the cartridge (Paragraphs [0030]) and can be seen in figure 1 as being on an interior of the cartridge. Thus, there appears to be ample teaching of placing the heater on the inside of the cartridge, as claimed.
Applicant’s arguments, see REMARKS, filed 8/3/2026, with respect to claim 13 have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant argues that the rejection made is an obviousness type rejection, but has been rejected in an anticipatory manner.
Examiner is reopening prosecution to address this inconsistency.
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.
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Claim(s) 13-15 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over NIELSEN (WO 2016/050246) in view of MIRONOV et al. (US 2017/0105452)
With respect to claim 13, NIELSEN discloses a container for the liquid (Abstract) (e.g., capsule) that comprises a shell having a first end, a second end, and a shell half cylindrical shell between the two ends and formed by a semi-cylindrical surface and at least one flat surface (Figures 5A and 5B; Page 24, lines 5-31). Within the capsule is an aerosol generating substance contained within the shell (Page 1, lines 20-30; Page 2, lines 25-31; Page 3, lines 15-30; Page 13, lines 5-10). The capsule further comprising an air passage (AP) surrounded by the shell (and therefore implicitly in the shell) (Page 25, lines 5-10) such that vaporized aerosol generated is configured to be drawn out through the outlet of the AP (Page 11, lines 20-30; Page 17, lines 1-30). The heater is arranged in the AP, and thus implicitly in the shell as it is at least partially surrounded by the shell (Page 25, lines 1-20) and vaporizes the aerosol substance.
[AltContent: textbox (Outlet in which heater is arranged and out of which the vaporized aerosol passes)][AltContent: arrow][AltContent: textbox (Semi-cylindrical wall)][AltContent: arrow][AltContent: textbox (Flat surfaces )][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second end)][AltContent: arrow][AltContent: textbox (First end)][AltContent: arrow]
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NIELSEN does not explicitly disclose that the heater is arranged within the capsule. MIRONOV et al. discloses an aerosol generating system wherein the cartridge may comprise a wick across the annular central passageway (e.g., equivalent to the heater wick of NIELSEN) (Paragraphs [0060]-[0061]), or a fluid permeable susceptor of ferrite mesh on the inside of the cartridge housing and has a simple and robust design (Paragraphs [0053]-[0057]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the heater of NIELSEN on the inside of the cartridge, as taught by MIRONOV et al., so as to provide a simple and robust design.
MIRONOV et al. explicitly discloses that the inductor heating embodiments have a heater that leads to a more robust design (Paragraphs [0008], [0033]). Thus, the design of the heater itself is being attributed with the stated improvement.
The courts have generally held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). As is seen in the aforementioned paragraphs of MIRONOV et al., an express benefit is recognized by the heater design.
With respect to claim 14, as seen in figure 5B of NIELSEN, the first end includes a surface having an edge defined by an edge of the semi-cylindrical surface and an edge of the flat surface.
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With respect to claim 15, as seen in figure 5B of NIELSEN , the semi-cylindrical surface extends to the flat side surface.
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With respect to claim 22, NIELSEN discloses an aerosol generating device using the capsule identified in the rejection of claim 13 (Page 1, lines 20-31; Page 16, lines 1-30; Page 17, lines 1-30; Figures 2A ; Page 19, lines 25-31 and Page 20 , lines 1-25).
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Claim(s) 16-21 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over NIELSEN (WO 2016/050246) in view of MIRONOV et al. (US 2017/0105452) as applied to claims 13-15 and 22 above, and further in view of LI et al. (US 2015/0305406).
With respect to claim 16, NIELSEN does not disclose that the shell includes a transparent portion.
LI et al. discloses an atomizer assembly (Abstract) that houses a liquid tank, 111. The liquid tank is made of a transparent material so that the quantity of tobacco left in the tank can be seen (Paragraph [0039]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention to form the capsule walls of NIELSEN of a transparent material as taught by LI et al., so that the level of the liquid material can be determined.
With respect to claim 17, NIELSEN discloses a container for the liquid (Abstract) (e.g., capsule) that comprises a shell having a first end, a second end, and a shell half cylindrical shell between the two ends and formed by a semi-cylindrical surface and at least one flat surface (Figures 5A and 5B; Page 24, lines 5-31). Within the capsule is an aerosol generating substance contained within the shell (Page 1, lines 20-30; Page 2, lines 25-31; Page 3, lines 15-30; Page 13, lines 5-10). The capsule further comprising an air passage (AP) surrounded by the shell (and therefore implicitly in the shell) (Page 25, lines 5-10) such that vaporized aerosol generated is configured to be drawn out through the outlet of the AP (Page 11, lines 20-30; Page 17, lines 1-30). The heater is arranged in the AP, and thus implicitly in the shell as it is at least partially surrounded by the shell (Page 25, lines 1-20) and vaporizes the aerosol substance. NIELSEN further discloses electrical connections in the shell to connect the heater to a power source (Page 34, lines 20-31; Page 17, lines 20-30; Figure 1)
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NIELSEN does not disclose that the shell includes a transparent portion, such as the first end.
LI et al. discloses an atomizer assembly (Abstract) that houses a liquid tank, 111. The liquid tank is made of a transparent material so that the quantity of tobacco left in the tank can be seen (Paragraph [0039]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention to form the capsule walls of transparent material as taught by LI et al. so that the level of the liquid material can be determined.
Additionally, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have the first end surface made of the transparent material so that the user can check the level of the container simply by removing the mouthpiece and not having to remove the cartridge.
Given that the claim defines the “transparent portion” as the first end, the second end and electrical connection are outside of this “transparent portion”. Specifically, the second end is opposite the first end, and the electrical connections are in the flat surface and semi-cylindrical surfaces. Moreover, given that the outlet in NIELSEN is defined as being in the shell by being partially surrounded by it, it is not in the transparent portion (as defined above), but outside of it.
NIELSEN does not explicitly disclose that the heater is arranged within the capsule. MIRONOV et al. discloses an aerosol generating system wherein the cartridge may comprise a wick across the annular central passageway (e.g., equivalent to the heater wick of NIELSEN) (Paragraphs [0060]-[0061]), or a fluid permeable susceptor of ferrite mesh on the inside of the cartridge housing and has a simple and robust design (Paragraphs [0053]-[0057]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the heater of NIELSEN on the inside of the cartridge, as taught by MIRONOV et al., so as to provide a simple and robust design.
MIRONOV et al. explicitly discloses that the inductor heating embodiments have a heater that leads to a more robust design (Paragraphs [0008], [0033]). Thus, the design of the heater itself is being attributed with the stated improvement.
The courts have generally held that the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). As is seen in the aforementioned paragraphs of MIRONOV et al., an express benefit is recognized by the heater design.
With respect to claim 18, as seen in figure 5B of NIELSEN, the shell has a flat side surface between the first and second ends.
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With respect to claim 19, as seen in figure 5B, the shell has a semi-cylindrical shaped formed by a semi-cylindrical surface and a flat side surface.
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With respect to claim 20, by defining CT (See figure 5A of NIELSEN) as the “electrical connections”, then the flat side surfaces and the first end are considered the “transparent portion”.
With respect to claim 21, as seen in figure 5B of NIELSEN, there exists and end of the transparent portion between the first and second ends.
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With respect to claim 32, NIELSEN discloses an aerosol generating device using the capsule identified in the rejection of claim 13 (Page 1, lines 20-31; Page 16, lines 1-30; Page 17, lines 1-30; Figures 2A ; Page 19, lines 25-31 and Page 20 , lines 1-25).
Allowable Subject Matter
Claims 23-31 and 33-41 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Neither NIELSEN or LI et al. disclose the claimed first portion having a maximum cross-sectional area which is larger than a second portion, along with the claimed space defined in the outside of these portions as well as along a length of the elongated body from the first to the second portion, in which the capsule can be placed, per se.
SHEIKH et al. (US 2010/0031968) discloses an electronic smoking device (Abstract). The device includes a cartridge portion, 30 and a power portion, 40 (Paragraph [0040]-[0043]; Figure 1). The first portion appears to have a maximum cross section and the second portion appears to have a smaller one. However, it appears (as also in NIELSEN and LI et al.) that the “space” is only defined in the first portion housing the capsule. There does not appear to be any space in the second portion in which the capsule can be accommodated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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