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
This office action is in response to Applicant’s amendment filed on 11/10/25.
Claims 1-4, 7, 8, 11, 13, and 14 are pending
Claims 9, 10 and 12 are cancelled
Claims 1 is amended
Response to Arguments
Applicant's arguments (see pages 5-9, filed 11/10/25) have been fully considered but they are not persuasive. The Applicant argues: (1) Rogan differs from the present disclosure because the susceptor of Rogan is disposed inside the aerosol-generating article rather than in the device, (2) the temperature sensor of Rogan is configured to measure the temperature of the aerosol-generating article, not that of the heating element (susceptor) of the device, as recited in claim 1, (3) it would be unreasonable to interpret that the susceptor of Fallon is directly exposed to the cavity of the support, and (4) a conduit made of a thermally conductive material such as aluminum is disposed within the internal cavity of the support in Fallon and thus, the portion that the Examiner associated with the cavity of claim 1 of the present application should reasonably be regarded as the cavity of the thermally conductive conduit (103 a), rather than that of the thermally insulating support (131). The Examiner respectfully disagrees, in part.
Regarding argument (1): The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. Moreover, when reading the preamble in the context of the entire claim, the recitation “A heater assembly for accommodating and heating an aerosol generating article including a tobacco rod and a filter rod” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); MPEP § 2111.02. Here, the use of the phrase “a heater assembly” does not preclude a system, which includes both a heating device and a heated article, from reading on the claimed invention. Thus, “a heater assembly” is interpreted broadly to mean both a heating device and/or a system which includes both a heating device and a heated article.
Rogan discloses an aerosol generating system comprising: a susceptor, a heat insulating portion coupled to the susceptor wherein a cavity is formed inside the heat insulating portion such that the susceptor is exposed in the cavity, and wherein the heater assembly further comprises a temperature sensor arranged to be at a lower portion of the susceptor in the second cavity so as to measure a temperature of the lower portion of the susceptor, as discussed in further detail in the updated rejection to amended Claim 1. In contrast to the susceptor attached to the device of Courbat, the susceptor, insulating portion, and hollow cavity of Rogan are attached to the article. However, under the broadest reasonable interpretation of “heating assembly” the susceptor, insulating portion, and hollow cavity of Rogan may also be interpreted to comprise elements of a heating assembly. Moreover, and without prejudice to the above argument, to the extent that “heater assembly” may be interpreted to be limited to the device alone, it would have been obvious to one of ordinary skill in the art that the susceptor of Courbat could be substituted/replaced with the susceptor, insulating portion, and hollow cavity of Rogan as discussed in further detail in the updated rejection to amended Claim 1.
Regarding argument (2): The temperature sensor of Rogan is configured to measure the temperature of the heating element (susceptor) of the device. Specifically, Rogan states: “The aperture allows a temperature sensor of an aerosol generating device to be positioned in, and possibly to extend through, the air-permeable member and to be positioned in close proximity to the inductively heatable susceptor. This in turn ensures that the temperature of the inductively heatable susceptor can be accurately detected by the temperature sensor and that the control of the aerosol generating device can be optimized” ([0038]). Based on Rogan ([0038]), it would be obvious to one having ordinary skill in the art that the temperature sensor is positioned such that the temperature of the susceptor can be detected. Thus, Rogan discloses a temperature sensor, similarly as claimed.
In regard to arguments (3) and (4) applicant’s arguments have been fully considered and are persuasive in view of the amendments made to Claim 1, and the resulting limitations imparted on the dependent claims thereof. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Courbat in view of Rogan alone.
The following prior art rejections are modified based on Applicant’s amendments.
Claim Rejections - 35 USC § 112(b)
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.
Claim 8 is 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.
Claim 8 is indefinite for reciting “a temperature sensor” because the claim is dependent on Claim 1 which was amended to also recite “a temperature sensor.” It is unclear whether the limitation refers to the same temperature sensor of Claim 1 or a second temperature sensor.
Wherein “a temperature sensor” is interpreted as the same temperature sensor of Claim 1, the claim would be rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are the relationship between the first and second cavities such that the temperature sensor is arranged in both the first and second cavities.
Wherein “a temperature sensor” is interpreted as a second temperature sensor, the amendment filed would be 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 would be a “second temperature sensor.” Applicant would be required to cancel the new matter in the reply to this Office Action, thus “a temperature sensor” will be interpreted as “[[a]] the temperature sensor” and the claim is further rejected under 35 U.S.C. 112(b) as being incomplete for omitting essential structural cooperative relationships of elements.
For purposes of examination, the limitation is interpreted as being directed to the same temperature sensor in view of the specification and how the claims were previously presented and because a second temperature sensor being distinct from the sensor of claim 1 would appear to be new matter.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Wherein “a temperature sensor” is interpreted as “[[a]] the temperature sensor” (for avoidance of the new matter cancellation requirement discussed above), the resulting interpretation of Claim 8 does not clearly limit the arrangement/location of the sensor and thus does not further limit the claimed invention. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 7, 11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Courbat (US 20200375255 A1) in view of Rogan (US 20210084981 A1).
Regarding Claim 1, Courbat teaches a heater assembly for accommodating and heating an aerosol generating article including a tobacco rod and a filter rod (Aerosol-generating device. Abstract), the heater assembly comprising:
an accommodation space into which the aerosol generating article is inserted (Chamber 120; [0157], Fig. 1. A further configuration of the chamber is depicted as chamber 220 but is not identified by number in the specification. Fig. 5);
a coil surrounding at least part of the accommodation space and configured to generate an induced magnetic field (Inductor coil 130; [0157], Fig. 1. A further configuration of the inductor coil is depicted as coil 230 but is not identified by number in the specification. Fig. 5);
and a susceptor disposed in the accommodation space and configured to generate heat according to the induced magnetic field (Elongate susceptor elements 280; [0161], Fig. 5)
wherein, in a state in which the aerosol generating article is fully inserted into the accommodation space, a distal end portion of the susceptor is placed upstream of a boundary between the tobacco rod and the filter rod inside the aerosol generating article ("inserting the aerosol-generating article into the heating chamber of the aerosol-generating device such that at least a portion of an aerosol-forming substrate is located within the heating zone" [0017]. Wherein the susceptor is placed into the substrate but not the filter of the article, the distal end of the susceptor is thus placed upstream of the boundary between the substrate and the filter. See Fig. 5).
Courbat does not explicitly disclose the base portion comprising a cavity. However, Rogan teaches an aerosol generating system further comprising:
a susceptor configured to generate heat according to the induced magnetic field (tubular inductively heatable susceptor 22; [0126], Figs 12 & 13); and
a heat insulating portion including a different material from the susceptor, coupled to the susceptor (air-permeable member 64 made from cellulose acetate fibers and hollow tubular member 72. [0036], [0123], Figs 12 & 13) and
a bottom of the accommodating space cavity formed inside a heat insulating portion such that the susceptor is exposed in the second cavity (hollow tubular member 72 is open to the bottom of the susceptor such that the bottom of the susceptor is exposed to the cavity therein. [0041]-[0042], [0123], Figs 12 & 13)
wherein the heater assembly further comprises a temperature sensor arranged to be at a lower portion of the susceptor in the second cavity so as to measure a temperature of the lower portion of the susceptor (The position of temperature sensor 70 in the hollow cavity upstream of the substrate allows for close proximity of the susceptor. [0038], [0121], Fig. 13).
Where a claimed improvement on a device or apparatus is no more than "the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)). Here, the claim combines known aerosol-generating system elements with no change in the respective functions of those old elements, and the combination of those elements yields predictable results. Specifically, the claim relocates/substitutes the susceptor and insulating cavity portion of the article of Rogan into/with the cavity and susceptor of Courbat without a change to the respective functions. As such, the claim is a predictable use of prior art elements according to their established functions resulting in the simple rearrangement of elements from one component of a system/assembly to another.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the susceptor arrangement and hollow cavity of Courbat with the susceptor arrangement, hollow cavity, and temperature sensor taught by Rogan because Courbat and Rogan are both directed to inductive aerosol generating devices, Rogan teaches the use of a temperature sensor contained within the cavity below the susceptor, the rearrangement of an element that does not result in the modification of the operation of the device (such as the location of a temperature sensor within a cavity) would have been obvious to one having ordinary skill in the art (See MPEP 2144.04(VI)(C)), and this merely involves applying a known component to a similar inductive aerosol generating device to yield predictable results.
Regarding Claim 2, Courbat teaches a heater assembly wherein the distal end portion of the susceptor is apart from the boundary of the substrate material (Wherein the susceptor is placed into the substrate with a length such that the susceptor does not penetrate the filter element, the distal end of the susceptor is thus placed upstream of the boundary between the substrate and the filter. [0109], [0117]-[0121]) but does not explicitly teach the assembly wherein the distance between susceptor and the boundary is about 0.3 mm to about 0.7 mm.
However, given that the distance between the susceptor and the boundary directly effects the heating capabilities of the susceptor and thus the quality and quantity of aerosol production, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the distance between the susceptor and the boundary. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the distance between susceptor and the boundary as disclosed in Courbat, would arrive at the distance between susceptor and the boundary as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 3, Courbat teaches a heater assembly wherein the susceptor includes a cylindrical base portion (Base portion 270; [0161], Fig. 5) and a pointed portion formed at one end of the cylindrical base portion (Each of the plurality of elongate susceptor elements tapers towards a sharp tip at its distal end. [0061], Fig. 5).
Regarding Claim 4, Courbat teaches a heater assembly wherein the susceptor generates heat to between 250oC to about 360oC (Courbat teaches that the susceptor should be heated to a temperature lower than 500°C to generate an aerosol from the aerosol-forming substrate. Courbat further discloses that the susceptor should preferably be heated to between 250-360 °C. [0069]). Furthermore, it would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference (selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05(I)). Therefore, it follows that a person having ordinary skill in the art, through selection of the overlapping portion of the ranges would arrive at a heater assembly wherein the susceptor generates heat which is about 270oC to about 350oC.
Regarding Claim 7, Courbat further teaches an aerosol generating apparatus wherein a first cavity is formed inside the susceptor such that the heat insulating portion is exposed in the first cavity ("The elongate susceptor elements may be solid, hollow, or porous" [0075]). Rogan similarly teaches a hollow/tubular susceptor ([0104]-[0108]).
Regarding Claim 11, Rogan further teaches wherein the heat insulating portion includes an opening that is in fluid communication with the second cavity and at least a portion of the susceptor is inserted into the second cavity through the opening (hollow tubular member 72 is open to the bottom of the susceptor such that the bottom of the susceptor is exposed to the cavity therein. [0041]-[0042], [0123], Figs 12 & 13).
Regarding Claim 13, Courbat teaches an aerosol generating apparatus comprising:
the heater assembly of Claim 1 (See Claim 1);
a power supply configured to supply power to the heater assembly ("The aerosol-generating device comprises a power supply." [0086]);
and a controller configured to control the power supplied to the heater assembly ("The controller is configured to control the supply of power to the inductor from the power supply." [0089]).
Regarding Claim 14, Rogan discloses an aerosol generating apparatus wherein the heat insulating portion is formed by stacking a plurality of members including different materials (air-permeable member 64 and hollow tubular member 72 are stacked to form the heat insulating portion. [0036], [0123], Figs 12 & 13).
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 Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755