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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-10, 13 and 20) in the reply filed on 06/13/2025 is acknowledged.
Claims 11-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/13/2025.
Examiner’s remark
With respect to “a high thermal mass” in claim 4 is considered as definite because para.0084 of instant publication application states “[0084] High thermal mass may be taken to mean, herein, that the heater 230 is capable of storing around 50 J or more of energy”. MPEP 2111.01, IV and V.
Claim Objections
Claims 1-10, 13 and 20 are objected to because of the following informalities:
Claim 1 recites “the discharge current of the energy store” should be changed to “a discharge current of the energy store”.
Claim 20 recites “the discharge current of the energy store means” should be changed to “the discharge current of the energy store”. As best understood, “the discharge current of the energy store means” (claim 20) refers to “the discharge current of the energy store” in claim 1. Based on the specification, the discharge current of the energy store refers to “a battery” (para.0076 of instant publication application). For examining purpose, examiner has interpreted the above claim limitation to “the discharge current of the energy store”.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an aerosol generating mechanism for providing aerosol from an aerosol generating medium” in claim 2.
“the energy store provides energy to the heater to reach an operational temperature for a first smoking session” in claim 7.
“An aerosol provision means” in claim 13.
“the energy store means” in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
(1) “an aerosol generating mechanism” (claim 2) is interpreted as “In an example the aerosol generating mechanism 230 may be a heater 230. The heater 230 may be for providing heat to an aerosol generating medium. The heater 230 may be a resistive heater 230” (para.0079 of instant publication application).
“the energy store” (claim 7) is interpreted as “a battery” (para.0076 of instant publication application).
“An aerosol provision means” (claim 13) is interpreted as “an aerosol provision system 100” (0072 of instant publication application and fig.1, 100).
“the energy store means” (claim 13) is interpreted as “battery”. (Para.0076 of instant publication application. The energy store 120 may, in an example, be a battery).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 5 and 8-10 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.
Claim 5 recites “the heater has a mass of around 5 grams”. However, the term “around 5 grams” in claim 5 is a relative term which renders the claim indefinite. The term “around 5 grams" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the specification does not define or supply some standard for the term “around 5 grams”, therefore the applicant has not disclosed a range of acceptable deviation or how one of ordinary skill in the art would understand what amount of deviation is acceptable.
Claim 8 recites “the operational temperature is from around 220° C. to around 260° C”. However, the term “around 220° C. to around 260° C” in claim 8 is a relative term which renders the claim indefinite. The term “around 220° C. to around 260° C" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the specification does not define or supply some standard for the term “around 220° C. to around 260° C”, therefore the applicant has not disclosed a range of acceptable deviation or how one of ordinary skill in the art would understand what amount of deviation is acceptable.
Claim 9 recites “the rate of heat transfer of the heater is from around 15 J/s to around 30 J/s”. However, the term “around 15 J/s to around 30 J/s” in claim 9 is a relative term which renders the claim indefinite. The term “around 15 J/s to around 30 J/s " is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the specification does not define or supply some standard for the term “around 15 J/s to around 30 J/s”, therefore the applicant has not disclosed a range of acceptable deviation or how one of ordinary skill in the art would understand what amount of deviation is acceptable.
Claim 10 recites “the second smoking session is around 5 seconds to 20 seconds subsequent to the first smoking session”. However, the term “around 5 seconds to 20 seconds” in claim 10 is a relative term which renders the claim indefinite. The term “around 5 seconds to 20 seconds" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the specification does not define or supply some standard for the term “around 5 seconds to 20 seconds”, therefore the applicant has not disclosed a range of acceptable deviation or how one of ordinary skill in the art would understand what amount of deviation is acceptable.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 13 and 20 is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Holzherr (US 2017/0033568).
Regarding claim 1, Holzherr discloses “an aerosol provision system” (abstract, i.e., an electrically heated aerosol-generating system is provided, the system including a charging device including a first rechargeable power supply and Fig.1b shows an electrically heated aerosol-generating device 102) comprising:
“an energy store” ([0037] Preferably, the charging device power supply is a lithium-ion battery. Fig.1b, 126), wherein “the discharge current of the energy store is less than 2C or less than 0.5 C” ([0012], i.e., determining a discharging current for the rechargeable power supply of the charging device … the discharging current is between about 0.1 C and about 0.3 C [0033], i.e., the charging device controller is further configured to control the supply of power from the charging device power supply to the electrically heated aerosol-generating device power supply to recharge the power supply. Such that: when the ambient temperature adjacent the charging device is within a third pre-determined temperature range, the controller is configured to provide a discharging current between about 0.1 C and about 0.3 C to the power supply of the electrically heated aerosol-generating device.).
Regarding claim 13, Holzherr discloses “An aerosol provision means” (abstract, i.e., an electrically heated aerosol-generating system is provided, the system including a charging device including a first rechargeable power supply and Fig.1b shows an electrically heated aerosol-generating device 102) comprising: “an energy store means” ([0037] Preferably, the charging device power supply is a lithium-ion battery. Fig.1b, 126), wherein “a discharge current of the energy store means is less than 2C or less than 0.5 C” ([0012], i.e., determining a discharging current for the rechargeable power supply of the charging device … the discharging current is between about 0.1 C and about 0.3 C [0033], i.e., the charging device controller is further configured to control the supply of power from the charging device power supply to the electrically heated aerosol-generating device power supply to recharge the power supply. Such that: when the ambient temperature adjacent the charging device is within a third pre-determined temperature range, the controller is configured to provide a discharging current between about 0.1 C and about 0.3 C to the power supply of the electrically heated aerosol-generating device.).
Regarding claim 20, Eissler et al. discloses “the discharge current of the energy store is less than 0.5 C”. (Please see claim objection above for examiner’s interpretation. [0012], i.e., determining a discharging current for the rechargeable power supply of the charging device … the discharging current is between about 0.1 C and about 0.3 C).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1).
Regarding claim 2, Holzherr discloses “an aerosol generating mechanism for providing aerosol from an aerosol generating medium” ([0080], i.e., A heater 134, in the form of, for example, a blade heater, is provided at the bottom of the cavity 132. In use, the user activates the aerosol-generating device 102, and power is provided from the battery 126 via the control electronics 128 to the heater 134. Examiner noted “aerosol generating mechanism” refers to a heater)
Schiff et al. teaches “an aerosol generating mechanism for providing aerosol from an aerosol generating medium, wherein the energy store is arranged to directly deliver energy to a heater for heating” ([0030] As shown in FIG. 7, the electronic smoking article 60 can include the reservoir as shown in FIG. 5. In addition, the electronic smoking article 60 can include a first wick 28 and a second wick 28'. As shown in FIG. 8, the first wick 28 can be associated with a first heater 19 and the second wick 28' can be associated with a second heater 19'. In this embodiment, the support plate 100 can extend longitudinally within the electronic smoking article 60. Abstract, i.e., a power supply operable to apply voltage across the at least one heater. Examiner noted that the first heater can be an aerosol generating mechanism and a second heater can be a heater). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Schiff et al., by replacing Holzherr’s heater device with Schiff et al.’s heater devices, to heat the liquid aerosol formulation more faster (para.0030) as taught by Schiff et al.
Regarding claim 3, modified Holzherr discloses “the aerosol generating mechanism is the heater” (Schiff et al., a first heater 19).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) as applied in claims 2-3 above, and further in view of Hajaligol (US 5,530,225).
Regarding claim 4, modified Holzherr discloses the heater.
Modified Holzherr is silent regarding a high thermal mass for the heater.
Hajaligol teaches “a high thermal mass” (col.14 at lines 63-67 and co.15 at line 1, i.e., heater blades 120 … preferably consume between about 5 and about 50 Joules of energy. Examiner noted above in examiner’s remark, the specification supplies special definition with respect to the term “high thermal mass” which may be taken to mean, herein, that the heater is capable of storing around 50 J or more of energy. In this case, Hajaligol teaches the heater is capable of absorbing heat of about 50 J which meets the around 50 J). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Hajaligol, to provide cost efficiency heater (col.14 at lines 63-67) as taught by Hajaligol.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) as applied in claims 2-3 above, and further in view of Schuster et al. (US 6,694,975)
Regarding claim 5, modified Holzherr discloses the heater.
Modified Holzherr is silent regarding the heater has a mass of around 5 grams.
Schuster et al. teaches “the heater has a mass of around 5 grams” (Col.16 at lines 40-53, i.e., In general, when the heating element is in the form of a thin nickel chromium ribbon the heating element has a weight of approximately 0.05 to 5 grams). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Schuster et al., by modifying Holzherr’s heater weight according to Schuster et al.’s heater weight, to provide desired weight based on the application (col.16 at lines 40-50) as taught by Schuster et al.
Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) as applied in claims 2-3 above, and further in view of Ademe et al. (US 2015/0313282).
Regarding claim 6, modified Holzherr discloses the energy store and the heater.
Modified Holzherr is silent regarding the aerosol provision system has a power section comprising the energy store and a heater section comprising the heater, wherein the power section and heater section are removably connectable to one another.
Ademe et al. discloses “the aerosol provision system has a power section comprising the energy store and a heater section comprising the heater, wherein the power section and heater section are removably connectable to one another” (the heater section 126 having a heater 134 and the power section 116 having an energy store 110. Fig.1 shows the heater section and power section are removably connectable to one another). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Ademe et al., by modifying Holzherr’s aerosol’s delivery device configuration according to Ademe et al.’s aerosol’s delivery device configuration, to provide replaceable battery for convenient use.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) as applied in claims 2-3 above, and further in view of Kuczaj (US 2015/0208727).
Regarding claim 7, modified Holzherr discloses the energy store and the heater.
Modified Holzherr is silent regarding the energy store provides energy to the heater to reach an operational temperature for a first smoking session, wherein the operational temperature is a temperature sufficient to generate an aerosol from the aerosol generating medium, the heater having a rate of heat transfer so that, in use, at least some energy provided to the heater for the first smoking session is retained to generate the aerosol from the aerosol generating medium in a second smoking session, and wherein the second smoking session is subsequent to the first smoking session.
Kuczaj teaches “the energy store provides energy to the heater to reach an operational temperature for a first smoking session, wherein the operational temperature is a temperature sufficient to generate an aerosol from the aerosol generating medium, the heater having a rate of heat transfer so that, in use, at least some energy provided to the heater for the first smoking session is retained to generate the aerosol from the aerosol generating medium in a second smoking session, and wherein the second smoking session is subsequent to the first smoking session” ([0049] In both the first and second aspects of the invention, the aerosol-generating device may further comprise a power supply for supplying power to the heating element. The power supply may be any suitable power supply, for example a DC voltage source. In one embodiment, the power supply is a Lithium-ion battery. Alternatively, the power supply may be a Nickel-metal hydride battery, a Nickel cadmium battery, or a Lithium based battery, for example a Lithium-Cobalt, a Lithium-Iron-Phosphate, Lithium Titanate or a Lithium-Polymer battery. [0020] There are a number of possibilities for determining when to transition from the first phase to the second phase and equally from the second phase to the third phase. In one embodiment, the first phase, second phase and third phase may each have a predetermined duration. [0017] The allowable temperature range is dependent on the aerosol-forming substrate. The aerosol-forming substrate releases a range of volatile compounds at different temperatures. Some of the volatile compounds released from the aerosol-forming substrate are only formed through the heating process. [0018] The allowable temperature range may have a lower bound of between 240 and 340 degrees centigrade and an upper bound of between 340 and 400 degrees centigrade and may preferably be between 340 and 380 degrees centigrade. The first temperature may be between 340 and 400 degrees centigrade. The second temperature may be between 240 and 340 degrees centigrade, and preferably between 270 and 340 degrees centigrade. Examiner noted that the first smoking session could be first phase and the second smoking session could be the second phase. Fig.8 shows an example of a rate of heat transfer so that, in use, at least some energy provided to the heater for the first smoking session (0-t1) is retained to generate the aerosol from the aerosol generating medium in a second smoking session (t1-t2)). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Kuczaj, by modifying Holzherr’s the heating pattern according to Kuczaj’s heating pattern, reduces or prevents the reduction in aerosol delivery over time (abstract) as taught by Kuczaj.
Regarding claim 8, modified Holzherr discloses “the operational temperature is from around 220°C to around 260°C” (Kuczaj, i.e., [0018], i.e., The first temperature may be between 340 and 400 degrees centigrade).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) and Kuczaj (US 2015/0208727) as applied in claims 7-8 above, and further in view of Fleischhauer et al. (US 6,040,560).
Regarding claim 9, modified Holzherr discloses “the rate of heat transfer of the heater” (it is inherently and necessarily that the heater has a rate of heat transfer).
Modified Holzherr is silent regarding the rate of heat transfer of the heater is from around 15 J/s to around 30 J/s.
Fleischhauer et al. teaches “the rate of heat transfer of the heater is from around 15 J/s to around 30 J/s” (Col.13 at lines 65-66, i.e., a first phase duration in the range of approximately 0.5 to 1.0 seconds and a first phase energy of approximately 12 to 18 Joules. Examiner noted that the joules per second in the range of 12 to 36 joules per second which has overlapping range with 15-30 J/s. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”,a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Holzherr with Fleischhauer et al., by modifying Holzherr’s the rate of heat transfer of heater according to Fleischhauer et al.’s rate of heat transfer, to provide a preferred energy input over time (col.13 at lines 65-66) as taught by Fleischhauer et al.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holzherr (US 2017/0033568) in view of Schiff et al. (US 2015/0083147 A1) and Kuczaj (US 2015/0208727) as applied in claims 7-8 above, and further in view of Counts et al. (US 5,144,962).
Regarding claim 10, modified Holzherr discloses “the second smoking sessionKuczaj, i.e., the second phase is the second smoking session subsequent to the first phase which is the first smoking session).
Holzherr is silent regarding the second smoking session is a duration comprising around 5 seconds to 20 seconds.
Counts et al. teaches “around 5 seconds to 20 seconds for the second smoking session” (claim 79, i.e., said second predetermined time interval is between about seconds to about 30 seconds. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to further modify Holzherr with Counts et al., by modifying Holzherr’s second duration according to Counts et al.’s second duration, to provide desired time interval for heating process (claim 79) as taught by Counts et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Eissler et al. (US 20170301914).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-Friday.
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/JIMMY CHOU/Primary Examiner, Art Unit 3761