DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-2, are pending. Claims 1-2, 4-5, 11-12, 14, and 21 have been amended. Claims 26-31 are new, but new claim 27 is canceled.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 6/22/2026 containing amendments and Applicant's response filed on 12/2/2025 containing remarks to the claims.
Response to Arguments
Applicant’s arguments filed 12/2/2025 have been considered but are not persuasive.
Applicant argues that the portions of aerosol generating material are not “discrete” as required by the claims as presently amended (Remarks, Page 8). This argument is not persuasive as the portions being discrete is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article in which the portions are discrete (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure below, annotated by the examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
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Figure, Annotated by Examiner
Applicant further argues that “the published application clearly describes ‘discrete portions of aerosol generating material’ that are ‘separate from one another’ and can be ‘energized individually/selectively.’ The specification further describes these portions as having specific masses (no greater than 20 mg, 10 mg, or 5 mg) and being spatially distinct” (Remarks, Page 8). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the discrete portions being “separate from one another”, “energized individually/selectively”, and “having specific masses (no greater than 20 mg, 10 mg, or 5 mg )”) 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).
Applicant further argues that “the Examiner improperly conflates [the] heating elements with portions of aerosol generating material” (Remarks, Page 9). This argument is not persuasive as the rejection did not conflate the heating elements and the portions of aerosol generating material, as the rejection mapped the heating elements to susceptors and mapped the portions of aerosol generating material to aerosol generating material heated by the susceptors.
Applicant further argues that “Courbat [fails] to disclose the claimed control circuitry configured to perform an aerosolization process on a first portion of the aerosol generating material on at least two separate occasions. While Courbat mentions ‘sequential heating,’ this refers to heating different susceptor elements in sequence, not repeatedly heating the same portion of aerosol generating material” (Remarks, Page 9). This argument is not persuasive as heating the susceptors is what causes aerosolization of the portions of aerosol generating material. As such, heating different susceptors corresponding to the first portion on two separate occasions will result in performing an aerosolization process on the first portion on two separate occasions.
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 14-18 and 31 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 14 recites the limitation "the discrete portions of aerosol generating material" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this Office action, “the discrete portions of aerosol generating material” is interpreted as “the portions of aerosol generating material, wherein the portions of aerosol generating material are discrete”.
Claims 15-18 and 31 are indefinite due to their dependence from claim 14.
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)(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, 2, 4-7, 10-12, 14-17, 21, 26, and 28-31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Courbat et al. (US 2020/0375255 A1).
Regarding claim 1, Courbat discloses an aerosol provision device (“aerosol-generating device 100”, Fig. 1, ¶ 0158) for use with an aerosol generating article (“aerosol-forming article 10”, Fig. 1, ¶ 0153) comprising aerosol generating material (“aerosol-forming segment 20”, Fig. 1, ¶ 0153), the aerosol provision device comprising:
one or more aerosol generating components (see “susceptor elements 180”, Figs. 2-4, ¶ 0158; although Fig. 4 only shows two susceptors, Courbat discloses that there can be four susceptors (“three or more susceptors”, ¶ 0018) arranged in a square pattern (“square pattern”, ¶ 0058), such as seen in the rendering in the Figure below, annotated by the examiner, the susceptors labeled as “1” and “3” may be considered the “one or more aerosol generating components”, and susceptors labeled as “2” and “4” may be considered as additional components) arranged to aerosolize different portions of the aerosol generating material (“Thus, sequential heating of three or more zones in the aerosol-forming substrate may be achieved”, ¶ 0018); and
control circuitry (combination of “power supply 140” and “controller 150”, ¶ 0155) for supplying power to the one or more aerosol generating components (“inductor coil 130 . . . receive[s] power from the power supply 140”, ¶ 0155, and “a high-frequency alternating current is passed through the inductor coil 130 to generate an alternating magnetic field . . . . The fluctuating field generates eddy currents within the susceptor elements 180”, ¶ 0158), wherein the control circuitry is configured to perform an aerosolization process on a first portion of the aerosol generating material on at least two separate occasions (as seen in the rendering in the Figure below, annotated by the examiner, the aerosol generating material located in the bottom half and heated by aerosol generating component 1 and susceptor 2 may be considered a “first portion”, and the aerosol generating material located in the top half and heated by aerosol generating component 3 and susceptor 4 may be considered a “second portion”; because the susceptors are heated sequentially (“sequential heating”, ¶ 0018, e.g, 1, then 2, then 3, then 4), the first portion of the aerosol generating material is heated to perform an aerosolization process on at least two separate occasions (once when aerosol generating component 1 is heated and again when susceptor 2 is heated)).
With regards to the different portions of the aerosol generating material being “discrete” such that each of the discrete portions of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article comprising different discrete portions of aerosol generating material wherein each of the discrete portions of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure below, annotated by the examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
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Figure, Annotated by Examiner
Regarding claim 2, Courbat discloses the aerosol provision device of claim 1 as stated above. Courbat further discloses wherein the control circuitry is configured to perform an aerosolization process of one portion of the aerosol generating material at any one time (“sequential heating”, ¶ 0018, the aerosol generating components and other susceptors are heated sequentially and, as such, one portion of the aerosol generating material is aerosolized at any one time).
With regards to each of the portions of the aerosol generating material comprising a single discrete mass of the aerosol generating material, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein each of the portions of the aerosol generating material comprise a single discrete mass of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the rejection of claim 1 above, annotated by the examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 4, Courbat discloses the aerosol provision device of claim 1 as stated above. Courbat further discloses wherein the one or more aerosol generating components are heating elements (“heated susceptor elements 180 heat”, ¶ 0158), wherein each heating element (i.e., susceptors 1 and 3 in the rendering in in the Figure in the rejection of claim 1 above, annotated by the examiner) aligns with a different, and corresponding one of the discrete portions of the aerosol generating material.
Regarding claim 5, Courbat discloses the aerosol provision device of claim 4 as stated above. Courbat further discloses wherein the control circuitry is configured to cause heating of a first portion of the aerosol generating material at least on two separate occasions before causing heating of a second portion of the aerosol generating material (as seen in the rendering in the Figure in the rejection of claim 1 above, annotated by the examiner, the first portion will be heated twice (when aerosol generating component 1 and susceptor 2 are heated) before the second portion is heated (when aerosol generating component 3 is heated)).
Regarding claim 7, Courbat discloses the aerosol provision device of claim 4 as stated above. Courbat further discloses wherein the control circuitry is configured to receive a signal signifying a user's intent to generate aerosol, and in response to receiving the signal, cause heating of a portion of the aerosol generating material (“Such actuation may be manually operated or may occur automatically in response to a user drawing on the aerosol-generating article 10, for example by using a puff sensor”, ¶ 0158).
Regarding claim 10, Courbat discloses the aerosol provision device of claim 4 as stated above. Courbat further discloses wherein each heating element has an areal extent no greater than 130 mm2 (“If a susceptor element has a constant cross-section, for example a circular cross-section, it has a preferable width or diameter of between 1 millimetres and 5 millimetres”, ¶ 0075, which corresponds to an areal extent of 1 to 20 mm2). Since the range 1 to 20 mm2 falls within the claimed range of no greater than 130 mm2, the range is anticipated (MPEP § 2131.03).
Regarding claim 11, Courbat discloses an aerosol provision system (“aerosol-generating device 100”, Fig. 1, ¶ 0158) for generating aerosol (“aerosol”, ¶ 0158) from an aerosol generating material (“aerosol-forming segment 20”, Fig. 1, ¶ 0153), the system comprises:
an aerosol generating article (“aerosol-forming article 10”, Fig. 1, ¶ 0153) comprising a plurality of portions of aerosol generating material (e.g., top half and bottom half);
one or more aerosol generating components (see “susceptor elements 180”, Figs. 2-4, ¶ 0158; although Fig. 4 only shows two susceptors, Courbat discloses that there can be four susceptors (“three or more susceptors”, ¶ 0018) arranged in a square pattern (“square pattern”, ¶ 0058), such as seen in the rendering in the Figure below, annotated by the examiner, the susceptors labeled as “1” and “3” may be considered the “one or more aerosol generating components”, and susceptors labeled as “2” and “4” may be considered as additional components) arranged to aerosolize different portions of the aerosol generating material (“Thus, sequential heating of three or more zones in the aerosol-forming substrate may be achieved”, ¶ 0018); and
control circuitry (combination of “power supply 140” and “controller 150”, ¶ 0155) for supplying power to the one or more aerosol generating components (“inductor coil 130 . . . receive[s] power from the power supply 140”, ¶ 0155, and “a high-frequency alternating current is passed through the inductor coil 130 to generate an alternating magnetic field . . . . The fluctuating field generates eddy currents within the susceptor elements 180”, ¶ 0158), wherein the control circuitry is configured to perform an aerosolization process on a first portion of the aerosol generating material on at least two separate occasions (as seen in the rendering in the Figure below, annotated by the examiner, the aerosol generating material located in the bottom half and heated by aerosol generating component 1 and susceptor 2 may be considered a “first portion”, and the aerosol generating material located in the top half and heated by aerosol generating component 3 and susceptor 4 may be considered a “second portion”; because the aerosol generating components are heated sequentially (“sequential heating”, ¶ 0018, e.g, 1, then 2, then 3, then 4), the first portion of the aerosol generating material is heated to perform an aerosolization process on at least two separate occasions (once when aerosol generating component 1 is heated and again when susceptor 2 is heated)), wherein the first portion of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material (see rendering in the Figure below, annotated by the examiner).
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Figure, Annotated by Examiner
Regarding claim 12, Courbat discloses the aerosol provision system of claim 11 as stated above. Courbat further discloses wherein the control circuitry is configured to perform an aerosolization process of one portion of the aerosol generating material at any one time (“sequential heating”, ¶ 0018, the aerosol generating components and other susceptors are heated sequentially and, as such, one portion of the aerosol generating material is aerosolized at any one time).
With regards to each of the portions of the aerosol generating material comprising a single discrete mass of the aerosol generating material, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein each of the portions of the aerosol generating material comprise a single discrete mass of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the rejection of claim 11 above, annotated by examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 14, Courbat discloses the aerosol provision system of claim 11 as stated above. Courbat further discloses wherein the one or more aerosol generating components are heating elements (“heated susceptor elements 180 heat”, ¶ 0158), wherein each heating element aligns with a different and corresponding one of the portions of aerosol generating material (see rendering in the Figure in the rejection of claim 11 above, annotated by examiner).
With regards to each of the portions of the aerosol generating material being discrete, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein each of the portions of the aerosol generating material comprise a single discrete mass of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the rejection of claim 11 above, annotated by examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 15, Courbat discloses the aerosol provision system of claim 14 as stated above. Courbat further discloses wherein the control circuitry is configured to cause heating of a first portion of the aerosol generating material at least on two separate occasions before causing heating of a second portion of the aerosol generating material (as seen in the rendering in the Figure in the rejection of claim 11 above, annotated by the examiner, the first portion will be heated twice (when aerosol generating component 1 and susceptor 2 are heated) before the second portion is heated (when aerosol generating component 3 is heated)).
Regarding claim 17, Courbat discloses the aerosol provision system of claim 15 as stated above. Courbat further discloses wherein the control circuitry is configured to receive a signal signifying a user's intent to generate aerosol, and in response to receiving the signal, cause heating of a portion of the aerosol generating material (“Such actuation may be manually operated or may occur automatically in response to a user drawing on the aerosol-generating article 10, for example by using a puff sensor”, ¶ 0158).
Regarding claim 21, Courbat discloses the aerosol provision system of claim 11 as stated above. Courbat further discloses wherein the aerosol generating material is an amorphous solid (“The aerosol-forming substrate may comprise homogenised plant-based material. The aerosol-forming substrate may comprise homogenised tobacco material. Homogenised tobacco material may be formed by agglomerating particulate tobacco”, ¶ 0114).
With regards to the portions of aerosol generating material being defined by a discrete mass of the amorphous solid, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein the portions of aerosol generating material are defined by a discrete mass of the amorphous solid (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the rejection of claim 11 above, annotated by examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 28, Courbat discloses the aerosol provision system of claim 1 as stated above. Courbat further discloses wherein the aerosol generating material is an amorphous solid (“The aerosol-forming substrate may comprise homogenised plant-based material. The aerosol-forming substrate may comprise homogenised tobacco material. Homogenised tobacco material may be formed by agglomerating particulate tobacco”, ¶ 0114).
With regards to the portions of aerosol generating material being defined by a discrete mass of the amorphous solid, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein the portions of aerosol generating material are defined by a discrete mass of the amorphous solid (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the rejection of claim 1 above, annotated by examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 29, Courbat discloses the aerosol provision system of claim 28 as stated above. Courbat further discloses wherein the aerosol generating material comprises a footprint defined by the amorphous solid (footprint of the first portion).
With regards to the amorphous solid having a thickness in the range of 0.05 mm to 2 mm within the entire footprint, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article in which the amorphous solid has a thickness in the range of 0.05 mm to 2 mm within the entire footprint (e.g., the thickness, which is measured along the length direction of the corresponding susceptor, is 1 mm), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
Regarding claim 31, Courbat discloses the aerosol provision device of claim 14 as stated above. Courbat further discloses wherein each heating element has an areal extent no greater than 130 mm2 (“If a susceptor element has a constant cross-section, for example a circular cross-section, it has a preferable width or diameter of between 1 millimetres and 5 millimetres”, ¶ 0075, which corresponds to an areal extent of 1 to 20 mm2). Since the range 1 to 20 mm2 falls within the claimed range of no greater than 130 mm2, the range is anticipated (MPEP § 2131.03).
Alternatively regarding claim 1, Courbat discloses an aerosol provision device (“aerosol-generating device 100”, Fig. 1, ¶ 0158) for use with an aerosol generating article (“aerosol-forming article 10”, Fig. 1, ¶ 0153) comprising aerosol generating material (“aerosol-forming segment 20”, Fig. 1, ¶ 0153), the aerosol provision device comprising:
one or more aerosol generating components (see “susceptor elements 180”, Figs. 2-4, ¶ 0158; although Fig. 4 only shows two susceptors, Courbat discloses that there can be four susceptors (“three or more susceptors”, ¶ 0018) arranged in a square pattern (“square pattern”, ¶ 0058), such as seen in the rendering in the Figure below, annotated by the examiner, the susceptors labeled as “1” and “3” may be considered the “one or more aerosol generating components”, and susceptors labeled as “2” and “4” may be considered as additional components) arranged to aerosolize different portions of the aerosol generating material (“Thus, sequential heating of three or more zones in the aerosol-forming substrate may be achieved”, ¶ 0018); and
control circuitry (combination of “power supply 140” and “controller 150”, ¶ 0155) for supplying power to the one or more aerosol generating components (“inductor coil 130 . . . receive[s] power from the power supply 140”, ¶ 0155, and “a high-frequency alternating current is passed through the inductor coil 130 to generate an alternating magnetic field . . . . The fluctuating field generates eddy currents within the susceptor elements 180”, ¶ 0158), wherein the control circuitry is configured to perform an aerosolization process on a first portion of the aerosol generating material on at least two separate occasions (as seen in the rendering in the Figure below, annotated by the examiner, the aerosol generating material located in the left half and heated by aerosol generating component 1 and susceptor 4 may be considered a “first portion”, and the aerosol generating material located in the right half and heated by susceptor 2 and aerosol generating component 3 may be considered a “second portion”; because the susceptors are heated sequentially (“sequential heating”, ¶ 0018, e.g, 1, then 2, then 3, then 4), the first portion of the aerosol generating material is heated to perform an aerosolization process on at least two separate occasions (once when aerosol generating component 1 is heated and again when susceptor 4 is heated)).
With regards to the different portions of the aerosol generating material being “discrete” such that each of the discrete portions of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article comprising different discrete portions of aerosol generating material wherein each of the discrete portions of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure below, annotated by the examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim.
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Alternatively regarding claim 4, Courbat discloses the aerosol provision device of claim 1 as stated in the alternative rejection of claim 1 above. Courbat further discloses wherein the one or more aerosol generating components are heating elements (“heated susceptor elements 180 heat”, ¶ 0158), wherein each heating element (i.e., susceptors 1 and 3 in the rendering in the Figure in the alternative rejection of claim 1 above) aligns with a different, and corresponding one of the discrete portions of the aerosol generating material.
Regarding claim 6, Courbat discloses the aerosol provision device of claim 4 as stated in the alternative rejection of claim 4 above. Courbat further discloses wherein the control circuitry is configured to cause sequential heating of each portion of aerosol generating material on one occasion, before causing heating of the first portion of aerosol generating material on a second occasion (the first portion will be heated when aerosol generating component 1 is heated and then the second portion will be heated when susceptor 2 is heated before the first portion is heated on a second occasion when susceptor 4 is heated, see rendering in the Figure in the alternative rejection of claim 1 above, annotated by the examiner).
Regarding claim 26, Courbat discloses the aerosol provision device of claim 1 as stated in the alternative rejection of claim 1 above. Courbat further discloses wherein the two separate occasions are separated by a time period in which the aerosol is not generated from the first portion of the aerosol generating material (the first portion will be heated when aerosol generating component 1 is heated and then the second portion will be heated when susceptor 2 is heated (i.e., a time period in which the aerosol is no generated form the first portion of the aerosol generating material) before the first portion is heated on a second occasion when susceptor 4 is heated, see rendering in the Figure in the alternative rejection of claim 1 above, annotated by the examiner).
Regarding claim 30, Courbat discloses the aerosol provision device of claim 1 as stated in the alternative rejection of claim 1 above. Courbat further discloses wherein the control circuitry is configured to cause sequential heating of each portion of aerosol generating material on one occasion, before causing heating of the first portion of aerosol generating material on a second occasion (the first portion will be heated when aerosol generating component 1 is heated and then the second portion will be heated when susceptor 2 is heated before the first portion is heated on a second occasion when susceptor 4 is heated, see rendering in the Figure in the alternative rejection of claim 1 above, annotated by the examiner).
Alternatively regarding claim 11, Courbat discloses an aerosol provision system (“aerosol-generating device 100”, Fig. 1, ¶ 0158) for generating aerosol (“aerosol”, ¶ 0158) from an aerosol generating material (“aerosol-forming segment 20”, ¶ 0153), the system comprises:
an aerosol generating article (“aerosol-forming article 10”, Fig. 1, ¶ 0153) comprising a plurality of portions of aerosol generating material (e.g., left half and right half);
one or more aerosol generating components (see “susceptor elements 180”, Figs. 2-4, ¶ 0158; although Fig. 4 only shows two susceptors, Courbat discloses that there can be four susceptors (“three or more susceptors”, ¶ 0018) arranged in a square pattern (“square pattern”, ¶ 0058), such as seen in the rendering in the Figure below, annotated by the examiner, the susceptors labeled as “1” and “3” may be considered the “one or more aerosol generating components”, and susceptors labeled as “2” and “4” may be considered as additional components) arranged to aerosolize different portions of the aerosol generating material (“Thus, sequential heating of three or more zones in the aerosol-forming substrate may be achieved”, ¶ 0018); and
control circuitry (combination of “power supply 140” and “controller 150”, ¶ 0155) for supplying power to the one or more aerosol generating components (“inductor coil 130 . . . receive[s] power from the power supply 140”, ¶ 0155, and “a high-frequency alternating current is passed through the inductor coil 130 to generate an alternating magnetic field . . . . The fluctuating field generates eddy currents within the susceptor elements 180”, ¶ 0158), wherein the control circuitry is configured to perform an aerosolization process on a first portion of the aerosol generating material on at least two separate occasions (as seen in the rendering in the Figure below, annotated by the examiner, the aerosol generating material located in the left half and heated by aerosol generating component 1 and susceptor 4 may be considered a “first portion”, and the aerosol generating material located in the right half and heated by susceptor 2 and aerosol generating component 3 may be considered a “second portion”; because the susceptors are heated sequentially (“sequential heating”, ¶ 0018, e.g, 1, then 2, then 3, then 4), the first portion of the aerosol generating material is heated to perform an aerosolization process on at least two separate occasions (once when aerosol generating component 1 is heated and again when susceptor 4 is heated)), wherein the first portion of the aerosol generating material comprises a footprint defined by a non-zero amount of aerosol generating material (see rendering in the Figure below, annotated by the examiner).
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Figure, Annotated by Examiner
Alternatively regarding claim 14, Courbat discloses the aerosol provision system of claim 11 as stated in the alternative rejection of claim 11 above. Courbat further discloses wherein the one or more aerosol generating components are heating elements (“heated susceptor elements 180 heat”, ¶ 0158), wherein each heating element aligns with a different and corresponding one of the portions of aerosol generating material (see rendering in the Figure in the alternative rejection of claim 11 above, annotated by the examiner).
With regards to each of the portions of the aerosol generating material being discrete, this limitation is directed to the composition of the aerosol generating article which is not positively recited by the claim (as the claim is directed to “an aerosol provision device for use with an aerosol generating article”), and “[a] claim is only limited by positively recited elements” (MPEP 2115). Because the aerosol provision device of Courbat could be used with an aerosol generating article wherein each of the portions of the aerosol generating material comprise a single discrete mass of aerosol generating material (e.g., an article in which the first and second portions, as mapped in the rendering in the Figure in the alternative rejection of claim 11 above, annotated by the examiner, correspond to a different formulation of aerosol generating material such that the two portions are discrete), the aerosol provision device of Courbat discloses the entirety of the required structure of the claim..
Regarding claim 16, Courbat discloses the aerosol provision system of claim 14 as stated in the alternative rejection of claim 14 above. Courbat further discloses wherein the control circuitry is configured to cause sequential heating of each portion of aerosol generating material on one occasion, before causing heating of the first portion of aerosol generating material on a second occasion (the first portion will be heated when aerosol generating component 1 is heated and then the second portion will be heated when susceptor 2 is heated before the first portion is heated on a second occasion when susceptor 4 is heated, see rendering in the Figure in the alternative rejection of claim 11 above, annotated by the examiner).
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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat et al. (US 2020/0375255 A1) as applied to claim 4 above.
Regarding claim 8, Courbat discloses the aerosol provision device of claim 4 as stated above. Courbat further discloses wherein the control circuitry is configured to heat the one or more heating elements to a temperature of greater than 250°C (“Preferred elongate susceptor elements may be heated to a temperature in excess of 250 degrees Celsius.”, ¶ 0063). Since the range greater than 250°C overlaps the claimed range of no greater than 350°C, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat et al. (US 2020/0375255 A1) as applied to claim 4 above, and further in view of Butin et al. (US 2021/0145071 A1).
Regarding claim 9, Courbat discloses the aerosol provision device of claim 4 as stated above. Courbat does not disclose the specific time it takes the control circuitry to heat the one or more heating elements to an operational temperature at which aerosol is generated to determine if it falls within the claimed range.
Butin, in the same field of endeavor, discloses forming a heating element such that the time it takes the heating element to reach an operational temperature at which aerosol is generated is no longer than 10 consecutive seconds (“the inductive heating device of the present invention may heat the susceptor to a temperature in the range of 300-400 degrees Celsius in a time period of around five seconds, or even less than five seconds in some embodiments”, ¶ 0111). One of ordinary skill in the art would have understood that there was a benefit to minimizing the time it takes to heat the heating element to the operational temperature in that it reduces the amount of time the user needs to wait for the aerosol to be formed. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the control circuitry of Courbat to heat the one or more heating elements to an operational temperature at which aerosol is generated to be around five seconds or less as taught by Butin (which is no longer than 10 consecutive seconds) in order to achieve this benefit.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat et al. (US 2020/0375255 A1) as applied to claim 14 above, and further in view of Butin et al. (US 2021/0145071 A1).
Regarding claim 18, Courbat discloses the aerosol provision system of claim 14 as stated above. Courbat further discloses wherein the control circuitry is configured to heat the one or more heating elements to a temperature of greater than 250°C (“Preferred elongate susceptor elements may be heated to a temperature in excess of 250 degrees Celsius.”, ¶ 0063). Since the range greater than 250°C overlaps the claimed range of no greater than 350°C, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Courbat does not disclose the specific time it takes the control circuitry to heat the one or more heating elements to an operational temperature at which aerosol is generated to determine if it falls within the claimed range.
Butin, in the same field of endeavor, discloses forming a heating element such that the time it takes the heating element to reach an operational temperature at which aerosol is generated is no longer than 10 consecutive seconds (“the inductive heating device of the present invention may heat the susceptor to a temperature in the range of 300-400 degrees Celsius in a time period of around five seconds, or even less than five seconds in some embodiments”, ¶ 0111). One of ordinary skill in the art would have understood that there was a benefit to minimizing the time it takes to heat the heating element to the operational temperature in that it reduces the amount of time the user needs to wait for the aerosol to be formed. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the control circuitry of Courbat to heat the one or more heating elements to an operational temperature at which aerosol is generated to be around five seconds or less as taught by Butin (which is no longer than 10 consecutive seconds) in order to achieve this benefit.
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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