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 .
This office action is in response to applicant’s request for continued examination filed August 20, 2025. Claims 15-25 are withdrawn. Claims 2-6 and 12-14 are cancelled. Claims 29-30 are new. Claims 1, 7-11, and 27-30 are pending and stand rejected.
Election/Restrictions
Claims 15-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected unit and system, there being no allowable generic or linking claim.
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.
Claims 1, 7-11, 14, 28 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200375254 A1 (hereinafter MIRONOV) in view of US 20160338410 A1 (hereinafter BATISTA).
Regarding claim 1, MIRONOV discloses an aerosol generating system including a fluid-permeable electric heater and a heater element spanning an aperture and comprising a plurality of electrically conductive filaments (abstract). MIRONOV disclose a heating sheet (1) (Fig. 3, heater element 36, ¶80, ¶78) , comprising a heating portion (11) (Fig. 3, the mesh is the heating portion, ¶11, ¶14-¶15) and a connecting portion (12) (as shown in annotated side-by-side figures below). As with the instant application wherein the heating sheet (1) comprises both the center heating portion (11) and two connecting portions (12), MIRONOV discloses a singular sheet for heating with a heating portion in the center and the parts that connect , touch, the substrate are considered to be the connecting portions. MIRONOV further discloses that the connection portion is connected to the heating portion (11) and configured for electrical connection with an external circuit (¶31-¶32). MIRONOV discloses that there is system electric circuitry that is connected to both the heater element and an electrical power source configured to monitor the electrical resistance of the heater and control the supply of power to the heater element (¶31). MIRONOV discloses that the electrically conductive filaments form a mesh (¶14-¶18). MIRONOV discloses that the heat generated by passing current through the heater element is localized to the mesh (¶19). MIRONOV disclose that the first and second electrically conductive contacts are fixed directly to the electrically conductive filaments to provide the current from the circuit (¶20, ¶31-¶32). MIRONOV further discloses two connecting portions (12) are respectively provided on two sides of the heating portion 11 (11), each configured to be connected with the external circuit as an electrode (¶20).
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Regarding the limitation the heating portion (11) and the connecting portions (12) are formed from a plane metal sheet by hollowing out. MIRONOV disclose that the electrically conductive filaments comprise any suitable electrically conductive material such as metals (¶18). MIRONOV further discloses that the heater element may be formed by etching a conductive sheet to provide a plurality of filament (¶21). This is a description of hollowing out a metal sheet. Further, since claim 1 is directed to the heating assembly and not the method of making, how the heating portion is made does not give structural distinction to the heating assembly. Courts have held that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). [Emphasis added by examiner] 26. “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
MIRONOV further discloses wherein a reinforcing frame (2) (Fig. 6, substrate 34, ¶78) comprises an outer frame portion (21) and an inner frame portion (22), arranged in a frame of the outer frame portion (21), and the outer frame portion (21). See annotated Fig. 3 below.
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MIRONOV further teaches wherein the heating sheet (1) and the reinforcing frame (2) are arranged side by side to improve the strength of the heating sheet (1). MIRONOV discloses that the rigid housing provides mechanical support to the heater assembly (¶9). The substrate 34 provides mechanical support to the heater element. Further the claim recitation “to improve the strength of the heating sheet” is considered to be an intended use recitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here the substrate is capable of and in fact does improve the strength of the heating sheet.
In an alternate embodiment MIRONOV teaches wherein the heating sheet (1) is embedded on a surface of the reinforcing frame (2) or entirely embedded in the reinforcing frame (2).
In the embodiment of Fig 8, ¶90 MIRONOV teaches that the heater assembly may have the filaments bonded directly to the substrate and then the contacts bonded directly to the filaments (¶90). MIRONOV teaches that this arrangement can also be used for the mesh heater type of Fig. 6 (¶90). MIRONOV further teaches that having the heater assembly arranged this way can be beneficial for providing reliable electrical contact with a power supply (¶90).
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 have applied the teachings of MIRONOV to result in wherein the heating sheet (1) is embedded on a surface of the reinforcing frame (2) or entirely embedded in the reinforcing frame (2). A person of ordinary skill in the art would obviously embed the heating sheet on the reinforcing frame. Doing so would provide for a more reliable electrical contact with a power supply (¶90). Further, courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C.
MIRONOV does not disclose the outer frame portion (21) is in direct contact with and supports the edge of the heating portion (11) and the connection portions (12), and the inner frame portion (22) is in direct contact with and supports a middle portion of the heating portion (11) for reinforcing the heating portion (11).
BATISTA teaches a fluid permeable heater assembly for an aerosol-generating system (abstract). BATISTA teaches that the substrate and heater have a planar contact surface to provide a flus arrangement of the heater assembly (¶25). BATISTA teaches that the heater element and filament are arranged in the form of a mesh 2 (Fig. 1, ¶73). The mesh is in contact with the outer frame of the substrate 1 (as shown in Figs. 1-2) There are two slits 4 that form an inner frame of a square shaped opening 100 (¶73). These slits help to stabilize the mesh in the plane of the substrate (¶75).
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 have modified MIRONOV to provide the outer frame portion (21) is in direct contact with and supports the edge of the heating portion (11) and the connection portions (12), and the inner frame portion (22) is in direct contact with and supports a middle portion of the heating portion (11) for reinforcing the heating portion (11) as taught in BATISTA. A person of ordinary skill in the art would obviously provide the middle portion of the heating portion supported by an inner frame. Doing so would stabilize the mesh in the plane of the substrate (BATISTA ¶75).
Regarding claim 7, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV discloses the heating assembly comprises two contact electrodes (31) (Figs. 3, 6-7, pair of electrical contacts 32, ¶78, ¶87, ¶92) electrically connected to the heating sheet (1) by contacting the connecting portion (12) of the heating sheet (1). MIRONOV discloses that the heating assembly comprises a pair of electrical contacts fixed to the substrate (¶78). This reads on the instant application where the heating assembly (1) is in contact with the electrodes (3) as best seen in instant application Fig. 34. The electrodes are not part of the heating assembly in the instant application, but rather contact the assembly when assembled. MIRONOV is the same configuration.
Regarding claim 8, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV further teaches wherein the heating assembly comprises two electrode leads (32), which are connected to the respective connecting portion (12) of the heating sheet (1) and led out from a surface of the respective connecting portion (12).
MIRONOV teaches an alternate embodiment of the system in Fig. 10, ¶92. MIRONOV teaches that the heater assembly comprises a stainless steel mesh fixed to coper foil contacts that are fixed to a polyimide substrate (¶92). The electrical connectors 59 are adapted to pierce the substrate and the sharpened ends are urged into contact (¶92). Further springs are added to ensure good electrical contact between the contacts and the connectors is maintained whatever the orientation of the system is with respect to gravity (¶92).
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 have applied the teachings of MIRONOV to provide wherein the heating assembly comprises two electrode leads (32), which are connected to the respective connecting portion (12) of the heating sheet (1) and led out from a surface of the respective connecting portion (12). A person of ordinary skill in the art would obviously modify the electrical contacts to led out from a surface of the connecting portion. Doing so would ensure good electrical contact between the contacts and the connectors is maintained whatever the orientation of the system is with respect to gravity (¶92).
Regarding claim 9, modified MIRONOV discloses the heating assembly of claim 8 as discussed above. MIRONOV further teaches wherein the electrode lead (32) extends through the connecting portion (12) of the heating sheet (1) to be connected to the connecting portion (12).
MIRONOV teaches an alternate embodiment of the system in Fig. 10, ¶92. MIRONOV teaches that the heater assembly comprises a stainless steel mesh fixed to coper foil contacts that are fixed to a polyimide substrate (¶92). The electrical connectors 59 are adapted to pierce the substrate and the sharpened ends are urged into contact (¶92). MIRONOV teaches that the connectors pierce the substrate (this is considered to be extending through. Further springs are added to ensure good electrical contact between the contacts and the connectors is maintained whatever the orientation of the system is with respect to gravity (¶92).
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 have applied the teachings of MIRONOV to provide wherein the electrode lead (32) extends through the connecting portion (12) of the heating sheet (1) to be connected to the connecting portion (12). A person of ordinary skill in the art would obviously modify the electrical contacts to extend through. Doing so would ensure good electrical contact between the contacts and the connectors is maintained whatever the orientation of the system is with respect to gravity (¶92).
Regarding claim 10, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV further discloses wherein the reinforcing frame (2) is made of an insulating material (¶23).
Regarding claim 11, modified MIRONOV discloses the heating assembly of claim 10 as discussed above. MIRONOV further discloses wherein the heat resistance temperature of the reinforcing frame (2) is above 200 °C (¶23).
Regarding claim 28, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV further discloses wherein the reinforcing frame (2) is integrated formed from a high-temperature resistant inorganic non-metallic material or a high-temperature resistant insulating material (¶23). MIRONOV discloses that the substrate is made from a material that is able to tolerate high temperatures such as a polyimide film like Kapton ®.
Regarding claim 30, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV further teaches wherein the heating sheet (1) comprises a plurality of conductive heating trace lines. As shown in Fig. 7, the mesh has an array of parallel electrically conductive filaments. A person of ordinary skill in the art would immediately recognize that parallel filaments reads on heat trace lines.
MIRONOV does not disclose the inner frame portion (22) comprises a transverse frame disposed transversely and/or a longitudinal frame disposed longitudinally, the inner frame portion (22) is in a grid shape, and the inner frame portion (22) is in direct contact with and supports the conductive heating trace lines transversely and/or longitudinally for reinforcing the heating portion (11).
BATISTA teaches a fluid permeable heater assembly for an aerosol-generating system (abstract). BATISTA teaches that the substrate and heater have a planar contact surface to provide a flus arrangement of the heater assembly (¶25). BATISTA teaches that the heater element and filament are arranged in the form of a mesh 2 (Fig. 1, ¶73). The mesh is in contact with the outer frame of the substrate 1 (as shown in Figs. 1-2) There are two slits 4 that form an inner frame of a square shaped opening 100 (¶73). These slits help to stabilize the mesh in the plane of the substrate (¶75). The slits are considered to read on the inner frame in a grid shape.
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 have modified MIRONOV to provide the inner frame portion (22) comprises a transverse frame disposed transversely and/or a longitudinal frame disposed longitudinally, the inner frame portion (22) is in a grid shape, and the inner frame portion (22) is in direct contact with and supports the conductive heating trace lines transversely and/or longitudinally for reinforcing the heating portion (11) as taught in BATISTA. A person of ordinary skill in the art would obviously provide the middle portion of the heating portion supported by an inner frame. Doing so would stabilize the mesh in the plane of the substrate (BATISTA ¶75). Further, the courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court 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.). One of ordinary skill in the art would appreciate that the inner frame being in a grid shape would customize airflow through the system.
Claim 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over MIRONOV and BATISTA as discussed in the rejection of claim 1, 7-11, 14, 28 and 30 above in view of US 20180295881 A1 (hereinafter MIRONOV '881).
Regarding claim 27, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV does not disclose wherein the inner frame portion (22) of the reinforcing frame (2) is provided with a first clearance space (9a), the heating portion (11) of the heating sheet (1) is provided with a second clearance space (9b), and the first clearance space (9a) and the second clearance space (9b) are aligned and communicated, so that an airflow can pass through the heating assembly via the first clearance space (9a) and the second clearance space (9b).
MIRONOV ‘881 teaches a cartridge for an aerosol-generating system with a heater element that defines a plurality of apertures having different sizes (abstract). MIRONOV ‘881 teaches an outer frame portion and an inner frame portion that combine to form a hollow structure (Figs. 3 and 6). As best shown in Fig. 3, there are transverse sections of the frame that traverse the hollow 35 in the embodiment shown in Fig. 3. MIRONOV ‘881 teaches that the arrangement reduces heat transfer to the substrate and can allow for effective volatilization of the aerosol-generating substrate (¶12-¶13). MIRONOV ‘881 teaches that in preferred embodiments the size of the apertures in a first region of the opening is larger than the size of the apertures in a second region of the opening. MIRONOV ‘881 teaches that this is advantageous to allow fluid flow through the heater element and influence the characteristics of the aerosol-generating system. (¶11). MIRONOV ‘881 further teaches that the size of the apertures changes in two dimensions towards a center opening, that is, in the direction of both the height (thickness) and width of the opening (¶13). See annotated Fig. 6 below.
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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 have modified MIRONOV to provide wherein the inner frame portion (22) of the reinforcing frame (2) is provided with a first clearance space (9a), the heating portion (11) of the heating sheet (1) is provided with a second clearance space (9b), and the first clearance space (9a) and the second clearance space (9b) are aligned and communicated, so that an airflow can pass through the heating assembly via the first clearance space (9a) and the second clearance space (9b) as taught in MIRONOV ‘881. A person of ordinary skill in the art would obviously provide openings of various sizes because doing so would be advantageous to fluid flow and customize the characteristics of the aerosol-generating system (MIRONOV ‘881, ¶11). Further, the courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court 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.). One of ordinary skill in the art would appreciate that changing the openings to form a grid shape would customize airflow through the system. Additionally, applicant does not place any special significance on the thickness, just and discloses that it may be the same or may be thicker.
Regarding claim 29, modified MIRONOV discloses the heating assembly of claim 1 as discussed above. MIRONOV does not disclose wherein the outer frame portion (21) and the inner frame portion (22) are integrated to form a hollow structure (2a), and the outer frame portion (21) is thicker than the inner frame portion (22).
MIRONOV ‘881 teaches a cartridge for an aerosol-generating system with a heater element that defines a plurality of apertures having different sizes (abstract). MIRONOV ‘881 teaches an outer frame portion and an inner frame portion that combine to form a hollow structure (Figs. 3 and 6). As best shown in Fig. 3, there are transverse sections of the frame that traverse the hollow 35 in the embodiment shown in Fig. 3. MIRONOV ‘881 teaches that the arrangement reduces heat transfer to the substrate and can allow for effective volatilization of the aerosol-generating substrate (¶123). MIRONOV ‘881 teaches that in preferred embodiments the size of the apertures in a first region of the opening is larger than the size of the apertures in a second region of the opening. MIRONOV ‘881 teaches that this is advantageous to allow fluid flow through the heater element and influence the characteristics of the aerosol-generating system. (¶11).
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 have modified MIRONOV to provide wherein the outer frame portion (21) and the inner frame portion (22) are integrated to form a hollow structure (2a), and the outer frame portion (21) is thicker than the inner frame portion (22) as taught in MIRONOV ‘881. A person of ordinary skill in the art would obviously provide sections of the inner frame to be disposed across the hollow. Doing so would reduce heat transfer to the frame substrate and can allow for effective volatilization of the aerosol-generating substrate (MIRONOV ‘881 ¶123). A person of ordinary skill in the art would obviously provide openings of various sizes because doing so would be advantageous to fluid flow and customize the characteristics of the aerosol-generating system (MIRONOV ‘881, ¶11). Further, the courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court 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.). One of ordinary skill in the art would appreciate that changing the openings to form a grid shape would customize airflow through the system. Additionally, applicant does not place any special significance on the grid shape.
Response to Arguments
Applicant’s arguments, filed August 20, 2025, with respect to the rejection(s) of claim(s) 1, 7-11, and 27-28 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of BATISTA.
Conclusion
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747