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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2025 September 26 has been entered.
Claims 1-16 are pending.
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.
(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 1-6, 8-10, and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 108783605 A cited on an IDS and with reference made to machine translation).
Claim 1: Li teaches an aerosol generating device (fig. 1-8 and [96], #1) comprising:
a case (fig. 8, #14);
a heater (23) arranged in the case (14) and configured to generate heat;
and a support (11) configured to provide a space in which an aerosol-generating article (aerosol-forming substrate) is heated and generates an aerosol, and comprising:
a cavity (volume surrounded by 11) for accommodating the aerosol-generating article, the cavity (volume surrounded by 11) being defined by an inner surface ([129], surface of #40 and #43) of the support (11);
an inlet (topmost, circular hole of 11) for receiving the aerosol-generating article into the cavity (volume surrounded by 11);
an opening (fig. 3-4 and [133], #13) located on a side surface of the support (11) such that the opening (13) exposes the cavity (volume surrounded by 11) out of the support (11);
and a rib (fig. 8 and [122], #30 comprising #31-#35) located on the inner surface (surface of 40 and 43) of the support (11) between the inlet (topmost, circular hole of 11) and the opening (fig. 3-4, #13) of the support (11) and configured to support the aerosol-generating article in a direction opposite to a direction toward the opening ([122], rib #31-35 can impart a radial compression force which is directed away from opening #13) and configured to guide movement of the aerosol-generating article against the direction toward the opening ([122], rib #31-35 can impart a radial compression force which is directed away from opening #13), wherein the rib (31-35) protrudes from the inner surface (surface of 40 and 43) of the support (11) into the cavity (volume surrounded by 11).
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Claim 2: Li teaches the aerosol generating device of claim 1, wherein a surface (fig. 8, surface of #33) of the rib (31-35) is inclined with respect to an extending direction (longitudinal axis of 11) of the cavity (volume surrounded by 11).
Claim 3: Li teaches the aerosol generating device of claim 2, wherein a distance from a center of the cavity (fig. 8, volume surrounded by #11) to the rib (31-35) is greater than or equal to a radius of a horizontal cross-section of the aerosol-generating article (aerosol-forming substrate which is contained by a diameter of 11a) having a cylindrical shape ([72], the aerosol-forming substrate rotates circumferentially).
Claim 4: Li teaches the aerosol generating device of claim 1, wherein the support (fig. 3, #11) includes side surfaces (surfaces of 11 which define 13) that define the opening (13) and include a guide portion (inclined side wall of 13) inclined toward inside of the cavity (volume surrounded by 11) such that a rotational movement of the aerosol-generating article in the cavity (volume surrounded by 11) is guided by the guide portion ([98], the walls of #11 which surround #13 rotate the outer packing of the aerosol-forming substrate).
Claim 5: Li teaches the aerosol generating device of claim 1, wherein support (fig. 3, #11) includes side surfaces (surfaces of 11 which define 13) that define the opening (13) and include an inclined portion (inclined side wall of 13) which is inclined with respect to an extending direction (longitudinal axis of 11) of the cavity (volume surrounded by 11).
Claim 6: Li teaches the aerosol generating device of claim 1, wherein a first opening angle corresponding to a lower end (fig. 3, bottommost end of #13) of the opening (13) is greater than a second opening angle corresponding to an upper end (111) of the opening (13).
Claim 8: Li teaches the aerosol generating device of claim 1, wherein the rib (fig. 3, #33) extends along (in the same direction as) at least a portion of a perimeter of the opening (13).
Claim 9: Li teaches the aerosol generating device of claim 1, wherein the rib (fig. 3, #30 and #33) comprises multiple rib elements (30 and 33).
Claim 10: Li teaches the aerosol generating device of claim 1, wherein the support (fig. 8 and [136], #11) further comprises a through hole (41) in a bottom of the support (11) facing an end of the aerosol-generating article when the aerosol-generating article is inserted into the cavity (volume surrounded by 11), and the heater (23) is arranged to pass through the through hole (41).
Claim 12: Li teaches the aerosol generating device of claim 1, wherein the support (fig. 8, #11) is detachably coupled to [134] the case (14).
Claim 13: Li teaches the aerosol generating device of claim 1, wherein the case (fig. 2, #14) includes an accommodating portion (interior of 14) for accommodating the support (11), and an air passage (channels between 11 and 14) for introducing air into the cavity (volume surrounded by 11) is formed between the accommodating portion (interior of 14 which is not shown but surrounds 11) and the support (11).
Claim 14: Li teaches the aerosol generating device of claim 13, wherein the support (fig. 8 and [136], #11) further includes a through hole (41) in a bottom surface of the support (11) facing an end of the aerosol-generating article when the aerosol-generating article is inserted into the cavity (volume surrounded by 11), the heater (23) is arranged to pass through the through hole (41),
the opening (fig. 3, #13) provides fluid communication between the accommodating portion (fig. 2, interior of #14) and the cavity (volume surrounded by 11),
and the air passage (channels between 11 and 14) includes a main air passage (fig. 8, passage connected to #41) through which air flows ([136], debris can flow out of the device through #41, so air can flow into the device through #41) into the cavity (volume surrounded by 11) through the through hole (41), and a sub air passage (fig. 3, passage connected to #13) through which air flows into the cavity (volume surrounded by 11) through the opening (13).
Claim 15: Li teaches the aerosol generating device of claim 1, wherein the inlet (fig. 3, topmost, circular hole of #11) is arranged above the opening (13), and the rib (30) is arranged above (partially above) the opening portion (13).
Claim 16: Li teaches the aerosol generating device of claim 1, wherein the cavity (fig. 8, volume surrounded by #11) has a smallest cross-section (the radial cross-section with smallest radius occurs along 32) at a location where the rib (31-35) protrudes from the inner surface (surface of 40 and 43) of the support (11) toward the cavity (volume surrounded by 11).
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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.
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 108783605 A) as applied to claims 6 and 10.
Claim 7: Li teaches the aerosol generating device of claim 6.
Li does not explicitly teach that the first opening angle is 120 degrees to 180 degrees, and the second opening angle is 90 degrees to 120 degrees.
Changing the shape of the opening portion would be an obvious matter of design choice absent persuasive evidence that the particular configuration is significant. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify that Li’s first opening angle is a dimension between 120 degrees and 180 degrees and that Li’s second opening angle is a dimension between 90 degrees and 120 degrees, because doing so would be a patentably indistinct change in shape.
Claim 11: Li teaches the aerosol generating device of claim 10.
Li does not explicitly teach that the through hole includes an inclined portion where the through hole becomes larger along a direction toward the cavity.
Li teaches, in an alternate embodiment, a mounting portion (fig. 14 and [152], #27) comprising a through hole (273) including an inclined portion (271) where the through hole (273) becomes larger along a longitudinal direction, such that contact area between a heater and the mounting portion is reduced in order to improve heat insulation [152].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incline Li’s through hole such that the through hole becomes larger along a direction toward the cavity, because doing so would reduce contact area between the heater and the support in order to improve heat insulation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-8 of copending Application No. 17/795136 in view of Li (CN 108783605 A with reference made to machine translation).
Claim 1: ‘136 recites an aerosol generating device (C1, aerosol generating device) comprising:
a case (case);
a heater (heater) arranged in the case and configured to generate heat;
and a support (support) configured to provide a space in which an aerosol-generating article is heated and generates an aerosol, and comprising:
a cavity (cavity) for accommodating the aerosol-generating article, the cavity being defined by an inner surface (inner surface) of the support;
an opening (an air flow path introduces air into the support’s cavity which requires that the support comprise an opening) located on a side surface of the support such that the opening exposes the cavity out of the support;
and a rib (rib) located on the inner surface of the support and configured to support the aerosol-generating article in a direction opposite to a direction toward (the rib surrounds a circumferential surface of the aerosol-generating article and fixes the aerosol-generating article which requires that the rib exerts a fixing force in a radially inward direction) the opening (side opening) and configured to guide movement of the aerosol-generating article against the direction toward (the rib surrounds a circumferential surface of the aerosol-generating article and fixes the aerosol-generating article which requires that the rib exerts a fixing force in a radially inward direction) the opening (opening), wherein the rib (rib) protrudes from the inner surface (inner surface) of the support into the cavity (cavity).
‘176 does not recite an inlet for receiving the aerosol-generating article into the cavity.
Li teaches an inlet (fig. 1 and [96], topmost circular hole of #11) for receiving an aerosol-generating article into a cavity, such that the aerosol-generating article can be removed for cleaning [72].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Li’s inlet to ‘176’s aerosol-generating device, because doing so would enable a user to remove the aerosol-generating article for cleaning.
Claim 2: modified ‘176 teaches the aerosol generating device of claim 1, wherein a surface of the rib (C6, rib) is inclined with respect to an extending direction of the cavity.
Claim 3: modified ‘176 teaches the aerosol generating device of claim 2, wherein a distance from a center of the cavity to the rib (C1, rib) is equal to a radius of a horizontal cross-section of (the rib surrounds an outer circumferential surface of the aerosol-generating article) the aerosol-generating article (aerosol-generating article) having a cylindrical shape.
Claim 4: modified ‘176 teaches the aerosol generating device of claim 1, wherein the support (C1, support) includes side surfaces (support surfaces that surround the opening) that define the opening (ending of air flow path which introduces air into the device) and include a guide portion (second rib) inclined toward inside of the cavity such that a rotational movement of the aerosol-generating article in the cavity is guided by (the second rib surrounds the aerosol-generating article) the guide portion (second rib).
Claim 5: modified ‘176 teaches the aerosol generating device of claim 1, wherein the support (C1, support) includes side surfaces (support surfaces which define the opening) that define the opening and include an inclined portion (second rib) which is inclined with respect to an extending direction of the cavity.
Claims 6-7: modified ‘176 teaches the aerosol generating device of claim 1.
Modified ‘176 does not explicitly teach that a first opening angle corresponding to a lower end of the opening is greater than a second opening angle corresponding to an upper end of the opening,
wherein the first opening angle is 120 degrees to 180 degrees, and the second opening angle is 90 degrees to 120 degrees.
Specifying angles of the opening would maintain airflow-facilitation by the opening and overall operation of the device. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was an obvious matter of choice absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that the first opening angle is a dimension between 120 degrees to 180 degrees, and that the second opening angle is a dimension between 90 degrees to 120 degrees, because doing so would be a patentably indistinct change in shape.
Claim 8: modified ‘176 teaches the aerosol generating device of claim 1, wherein the rib (C1, rib) extends along (extends in the same direction as) at least a portion of a perimeter of the opening (end of air flow path which introduces air into the cavity).
Claim 9: modified ‘176 teaches the aerosol generating device of claim 1, wherein the rib (C1, rib) comprises a plurality of ribs (first rib and second rib).
Claim 10: modified ‘176 teaches the aerosol generating device of claim 1, wherein the support (C7, support) further comprises a through hole (through hole) in a bottom of the support facing an end of the aerosol-generating article when the aerosol-generating article is inserted into the cavity, and the heater (heater) is arranged to pass through the through hole.
Claim 11: modified ‘176 teaches the aerosol generating device of claim 10.
Modified ‘176 does not explicitly teach that the through hole includes an inclined portion where the through hole becomes larger along a direction toward the cavity.
Li teaches a mounting portion (fig. 14 and [152], #27) comprising a through hole (273) including an inclined portion (271) where the through hole (273) becomes larger along a longitudinal direction, such that contact area between a heater and the mounting portion is reduced in order to improve heat insulation [152].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incline Li’s through hole such that the through hole becomes larger along a direction toward the cavity, because doing so would reduce contact area between the heater and the support in order to improve heat insulation.
Claim 12: modified ‘176 teaches the aerosol generating device of claim 1.
Modified ‘176 does not explicitly teach that the support is detachably coupled to the case.
Making the support and the case separable would be desirable to enable cleaning between the support and the case. See MPEP 2144.04(V)(C): In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961). The courts have held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose."
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to make modified ‘176’s support and case detachably coupled, because doing so would be a patentably indistinct separation of parts.
Claim 13: modified ‘176 teaches the aerosol generating device of claim 1, wherein the case (C1, case) includes an accommodating portion (portion in which the support is disposed) for accommodating the support (support), and an air passage (air flow path) for introducing air into the cavity is formed between the accommodating portion and the support.
Claim 14: modified ‘176 teaches the aerosol generating device of claim 13, wherein the support (C7, support) further includes a through hole (through hole) in a bottom surface of the support facing an end of the aerosol-generating article when the aerosol-generating article is inserted into the cavity, the heater (heater) is arranged to pass through the through hole, the opening (C1, ending of air flow path which introduces air into the cavity) provides fluid communication between the accommodating portion (inside of case) and the cavity (cavity), and the air passage (air flow path) includes a main air passage (C8) through which air flows into the cavity through the through hole.
‘176 does not explicitly teach a sub air passage through which air flows into the cavity through the opening, i.e., both an opening and a through hole.
Li teaches both an opening (fig. 3, #13) and a through hole (41), such that the opening enables easy cleaning [133].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Li’s opening to ‘176’s air passage, because doing so would enable easy cleaning.
Claim 15: modified ‘176 teaches the aerosol generating device of claim 1, wherein the inlet (Li fig. 1, topmost circular hole of #11) is arranged above the opening (C8, through hole), and the rib (C1, rib) is arranged above the opening (C8, through hole).
Claim 16: modified ‘176 teaches the aerosol generating device of claim 1, wherein the cavity (C1, cavity) has a smallest cross-section (a smallest radial cross-section occurs where the rib surrounds an outer circumferential surface of the aerosol-generating article) at a location where the rib protrudes from the inner surface of the support toward the cavity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments of 2025 September 26 have been carefully considered but are not persuasive.
Applicant argues (p. 6) that Li’s #30 does not protrude from an inner surface of a support which defines a cavity. However, Li’s #30 does protrude from an inner surface (fig. 8 and [129-130], surfaces of #40 and #43) which defines (marks an edge of) a cavity (volume surrounded by 11).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747