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
Claims 1, 3-4 and 9-10 are amended. Claims 6 and 7 are cancelled. Claims 11-15 are withdrawn. Claims 1-5 and 8-10 are presently examined.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 11/25/2025 are overcome.
Specification
The use of the term Drambuie (page 14, line 5), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 8-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee (US 11,992,063).
Regarding claims 1-3, Lee discloses an aerosol generating device (abstract) having a vaporizer that generates aerosol by heating a liquid composition (column 5, lines 50-57, figure 2, reference numeral 180) having a liquid storage unit, which is considered to meet the claim limitation of a first container that contains an aerosolizable material, that is heated by a heating element (column 5, lines 58-63), which is considered to meet the claim limitation of a first heating arrangement. The device also has an inner space (figure 2), which is considered to meet the claim limitation of a second container, into which a cigarette is inserted (column 4, lines 25-29, figure2, reference numeral 2). Aerosol generated by the vaporizer is transferred to a user via the cigarette (column 4, lines 48-53), which is considered to meet the claim limitation of a material through which, in use, the flow of aerosol passes. The inner space is surrounded by a heater in the form of an electrically conductive coil for an induction heating element (column 5, lines 29-35, figure 2, reference numeral 130), which is considered to meet the claim limitation of a second heating arrangement. The cigarette contains a susceptor material that is heated by the induction heating (column 5, lines 29-35), which one of ordinary skill in the art would recognize involves heating through a magnetic field. The heater heats to a preset preheating temperature (column 2, lines 47-51) of 50 °C (column 2, lines 52-54), which applicant’s specification discloses is a temperature that prevents or reduces condensation from the flow of aerosol and is below a temperature required to cause substantial aerosol formation (page 2, lines 17-21, page 3, lines 1-9). The device is controlled by a controller (abstract) that controls the supply of power to both the vaporizer and the heater (column 4, lines 64-67, column 5, lines 1-4).
Regarding claim 8, Lee discloses that the tobacco rod is surrounded by a heat conducting material that functions as a susceptor and is elongate (column 7, lines 46-63, figure 1, reference numeral 21), which is considered to meet the claim limitation of an elongate susceptor material.
Regarding claim 9, Lee discloses that the heating element for the vaporizer is a conductive nichrome heating wire that is heated by a current and transfers heat to the liquid (column 6, lines 19-29), which one of ordinary skill in the art would recognize is a resistive heating element.
Regarding claim 10, Lee discloses that the cigarette is accommodated at a narrow end of the device (figure 1), which is considered to meet the claim limitation of a mouthpiece assembly. The opposite end of the device is considered to meet the claim limitation of a body portion. Aerosol generated by the vaporizer is transferred to a user via the cigarette (column 4, lines 48-53), which is considered to meet the claim limitation of the mouthpiece being downstream. Lee does not explicitly disclose a cartridge. The vaporizer is defined by a box (figure 2), which is considered to meet the claim limitation of a vaporizer.
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 11,992,063) in view of Han (US 10,104,909).
Regarding claims 4 and 5, Lee discloses all the claim limitations as set forth above. Lee does not explicitly disclose a temperature to which the liquid is heated.
Han teaches a cigarette smoking device that has an electric atomization function (abstract) in which an aerosol is formed by heating a liquid to a temperature range of 150 °C to 350 °C using an electric heating wire (column 4, lines 6-12).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat the liquid of Lee to the temperature of Han. One would have been motivated to do so since Han teaches a suitable temperature for forming an aerosol in a cigarette smoking device. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Response to Arguments
Regarding the rejections under 35 USC 102, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Lee does not disclose preheating in the claimed sense and (b) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, while applicant’s specification may disclose various features of the preheating (which the instant amendment refers to as “sense”), these features are not actually recited in the claims. The claim only requires that the preheating occur prior to aerosol generation. Applicant makes no argument that Lee lacks this specific feature.
Regarding (b), all examined claims, including the examined independent claim, are rejected as set forth above.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive since all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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