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
Claims 1, 2 and 4-15 are pending.
Claims 1 and 12 have been amended.
Claims 3 and 16 remain cancelled.
Claims 2, 4, 5, 8, 10, 13 and 15 remain withdrawn.
Response to Arguments
Applicant’s arguments, filed 2/16/2026, with respect to Abramov have been fully considered and are persuasive. Abramov does not cause a plurality of aerosol generating components to generate an amount of aerosol based on the distance of the respective portion of aerosol generating material from an outlet. Rather, Abramov selectively volatizes one portion of the smokable material and heats a second portion to a temperature which is lower than a volatizing temperature. The rejection of claims 1, 6, 7, 9, 11 and 12 under 35 U.S.C. 102(a)(1) as being anticipated by Abramov has been withdrawn.
Applicant's remaining arguments filed 2/16/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
John relates to heating aerosol generating material contained in one or more cavities to generate an inhalable aerosol and/or gas. (John, Abstract) Similar to Abramov, while John discusses that an aerosolization process can be performed on different portions of a material, there is no disclosure or suggestion in John that different amounts of aerosol are generated from those different portions, let alone an amount that depends on the distance of a respective portion from an outlet. Instead, the Office Action cites to page 7, lines 29-32 and page 10, lines 26-27 of John which describes that the heater elements can be powered independently of each other, simultaneously, or sequentially. However, none of these operations require different amounts of aerosol to be generated from any of the respective portion of the aerosol generating material. For example, sequentially turning one heater off and turning on another heater is not an aerosolization process, let alone one that generates different amounts of aerosol at a plurality of respective portions of an aerosol generating material, depending on a respective distance from an outlet. Thus, John does not teach or suggest control circuitry "configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by an amount depending on the distance from the outlet."
Examiner Response A:
The Examiner respectfully disagrees. John states that, “The electrical control circuitry 15 and the power connections 11b to the heater elements 11a are preferably arranged such that at least two, and more preferably all, of the heater elements 11a can be powered independently of each other, for example in turn (over time) or together (simultaneously) as desired,” (page 7, lines 29-32) and “In examples in which the heater elements 11a can be powered independently of each other, the particular heating element 11a or combination of heating elements 11a that are powered on each given draw may vary from draw to draw in accordance with a predetermined power control sequence controlled by the control circuitry 15,” (page 10, lines 20-24) and “Preferably, the heating elements 11a can be powered sequentially, one per draw by a user, such that aerosol and/or gas is generated in a consistent basis on each draw,” (page 10, lines 26-27) and “The electrical power drawn by each heating element 11a can be controlled by pre-programming the electrical control circuitry 15 to suit the individual heating requirements of each of the plurality of recesses 7a containing aerosol generating material 9 formed in the receptacle 7,” (page 11, lines 6-9) thus while John does not expressly state the term “depending on the distance from the outlet” given that the controller independently heats respective portions of aerosol generating material, including sequentially, it is inherent that the controller is heating respective portions of aerosol generating material based on their position, or location, which meets the limitation, “depending on the distance from the outlet.”
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In this instance, the original disclosure states “In some implementations, the aerosol generating component is a heater capable of interacting with the aerosolisable material so as to release one or more volatiles from the aerosolisable material to form an aerosol. In some embodiments, the aerosol generating component is capable of generating an aerosol from the aerosolisable material without heating. For example, the aerosol generating component may be capable of generating an aerosol from the aerosolisable material without applying heat thereto,” which serves to limit the broadest reasonable interpretation of the limitation “at least one aerosol generating component configured to perform an aerosolization process on one or more of the portions of aerosol generating material when the article is received in the receptacle”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1, 6, 7, 9, 11, 12 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2016120344 (John hereinafter).
Regarding claim 1, John discloses an aerosol provision device for generating aerosol from an article comprising portions of aerosol generating material (abstract), the device comprising:
a receptacle (7) for receiving the article comprising portions of aerosol generating material (9);
an outlet (in “mouthpiece,” 3 in Fig. 2) fluidly coupled to the receptacle;
at least one aerosol generating component configured to perform an aerosolization process on one or more of the portions of aerosol generating material when the article is received in the receptacle (“heater,” 11); and
control circuitry (15) for controlling the aerosol generating component, wherein the control circuitry is configured to cause a plurality of respective portions of the aerosol generating material to aerosolize by an amount depending on the distance from the outlet, specifically John states that, “The electrical control circuitry 15 and the power connections 11b to the heater elements 11a are preferably arranged such that at least two, and more preferably all, of the heater elements 11a can be powered independently of each other, for example in turn (over time) or together (simultaneously) as desired,” (page 7, lines 29-32) and “ In examples in which the heater elements 11a can be powered independently of each other, the particular heating element 11a or combination of heating elements 11a that are powered on each given draw may vary from draw to draw in accordance with a predetermined power control sequence controlled by the control circuitry 15,” (page 10, lines 20-24) and “Preferably, the heating elements 11a can be powered sequentially, one per draw by a user, such that aerosol and/or gas is generated in a consistent basis on each draw,” (page 10, lines 26-27) and “The electrical power drawn by each heating element 11a can be controlled by pre-programming the electrical control circuitry 15 to suit the individual heating requirements of each of the plurality of recesses 7a containing aerosol generating material 9 formed in the receptacle 7,” (page 11, lines 6-9) thus while John does not expressly state the term “depending on the distance from the outlet” given that the controller independently heats respective portions of aerosol generating material, including sequentially, it is inherent that the controller is heating respective portions of aerosol generating material based on their position, or location, which meets the limitation, “depending on the distance from the outlet.”
Regarding claims 6 and 7, John teaches that “The electrical control circuitry 15 and the power connections 11b to the heater elements 11a are preferably arranged such that at least two, and more preferably all, of the heater elements 11a can be powered independently of each other, for example in turn (over time) or together (simultaneously) as desired,” (page 7, lines 29-32) and “Preferably, the heating elements 11a can be powered sequentially, one per draw by a user, such that aerosol and/or gas is generated in a consistent basis on each draw,” (page 10, lines 26-27).
Thus the controller of John is configured to set the temperature of the heating elements closer to the outlet to be lower, specifically powered off, than the operational temperature of the heating elements further from the outlet, which are powered on.
Regarding claim 9, John teaches that the portions of aerosol generating material are arranged in an N x M array, wherein N is rows and M is columns, with respect to the outlet when received in the receptacle (page 7, lines 6-12 and Fig. 3).
John teaches that all the portions of the aerosol generating material are independently heated (page 7, lines 29-32). Thus, the controller is configured to heating each portion to a different temperature, which results in each portion generating a different amount of aerosol. Therefore, the number of portions of the aerosol generating material is the same as the maximum number of different amounts of aerosol. The controller is also configured to heat just one portion of the aerosol generating material, or just two portions of the aerosol generating material, or just three portions of the aerosol generating material, etc. up to all of the portions of the aerosol generating material. Since X is less than or equal to the number of portions of the aerosol generating material, this limitation is met.
Regarding claims 11 and 12, John teaches that the system comprising the aerosol provision device according to claim 1 (see rejection of claim 1, above) and further comprising an article (9) comprising portions of aerosol generating material (9), wherein each portion of aerosol generating material is substantially identical (Fig. 7a-7c and Fig. 8a).
Regarding claim 14, John teaches that the aerosol generating material is an amorphous solid, specifically a wet gel or slurry (page 22, lines 16-17).
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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