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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/11/2026 has been entered.
Status of the Claims
Claims 1-5 and 8-12 are pending. Claims 1, 2, and 11 have been amended.
Response to Arguments
Applicant's arguments, see pages 7-8 of Remarks filed 3/11/2026, with respect to the optimization of the thickness of the first and second electrodes have been fully considered but they are not persuasive. Applicant argues that “the original specification clearly discloses that the ‘thickness of about 0.5 μm to about 5 μm’ is critical to sealing the ultrasonic vibrator.” This argument is not persuasive as the original specification did not clearly disclose this allegation. Applicant’s cited portion of the specification, ¶ 0121, clearly states that “The electrodes 310 and 320 having the thickness of about 0.5 μm to about 5 μm may be sufficient to seal the ultrasonic vibrator.” As such, ¶ 0121 only supports the disclosed thickness range having a possibility of sealing the ultrasonic vibrator. It does not state that the disclosed thickness range guarantees that the ultrasonic vibrator is sealed or that it is “critical” to the sealing.
Applicant’s further arguments with respect to the newly added limitations of microhardness and friction coefficient have been fully considered but they are moot in view of the newly cited reference Utsumi.
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, 3-4, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2019/0142063 A1) in view of Utsumi et al. (US 4,756,808), as evidenced by Nakano et al. (US 2009/0121050 A1) and Holtkamp et al. (US 2006/0094309 A1).
Regarding claim 1, Liu discloses an aerosol generating device (“electronic cigarette”, ¶ 0001) comprising:
a main body (main body of the “electronic cigarette”, ¶ 0001);
a cartridge (“atomizer”, Fig. 4, ¶ 0035) detachably coupled to the main body (screw threads at bottom of atomizer in Fig. 4 detachably couple to the main body of the electronic cigarette) and configured to contain an aerosol generating material (liquid in “liquid storage cavity 2”, Fig. 4, ¶ 0047); and
an ultrasonic vibrator (“ultrasonic atomization piece 1”, Fig. 3, ¶ 0043) arranged in the cartridge (Fig. 4) and having a first surface (“the other surface”, ¶ 0043), a second surface (“one surface”, ¶ 0043) opposite to the first surface (Fig. 3, ¶ 0043), and a side surface (“side edge”, ¶ 0043), the ultrasonic vibrator comprising a first electrode (“negative electrode conducting layer 12”, Fig. 3, ¶ 0043) arranged on the first surface (Fig. 3, ¶ 0043) and a second electrode (“positive electrode conducting layer 11”, Fig. 3, ¶ 0043) arranged on the second surface (Fig. 3, ¶ 0043), the ultrasonic vibrator configured to vibrate the aerosol generating material (“oscillating force”, ¶ 0042).
Liu does not explicitly disclose wherein the first electrode and the second electrode have a microhardness of 200 Hv to 9000 Hv and a friction coefficient of 0.01 to 0.8. However, it is known in the art that electrodes of ultrasonic vibrators can be made with plated nickel (“According to an embodiment of the present invention, the electrode layer may be formed by the burning, vapour depositing, sputtering or plating method. The electrode layer may be preferably made of a metal or an alloy containing at least one selected from the group consisting of Al, Ni, Ti, Cr, Cu, Ag and Au”, Col. 3, Lines 49-54 of Utsumi). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use plated nickel for the electrodes of the ultrasonic vibrator of Liu, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07). Plated nickel has a microhardness that falls within the claimed range of 200 Hv to 9000 Hv as evidenced by Nakano (“The Ni plating layer has hardness about Hv 500 harder than hardness about Hv 80 of the Au plating layer”, ¶ 0045, MPEP § 2131.03), and plated nickel has a friction coefficient that falls within the claimed range of 0.01 to 0.8 as evidenced by Holtkamp (“friction coefficient of various composite plated systems” where “Control (nickel)” is “0.6”, ¶ 0067, Table 2, MPEP § 2131.03).
Although Utsumi is in the field of piezoelectric transducers, it is reasonably pertinent to the particular problem with which Liu (and the current application) was concerned (i.e., providing a device that uses a piezoelectric transducer). As such, one of ordinary skill in the art would have looked to prior art concerning piezoelectric transducers (see MPEP § 2141.01(a)(I)).
Liu does not explicitly disclose the thicknesses of the electrodes to determine whether the thicknesses fall within the claimed range of 0.5 µm to 5 µm. However, Liu teaches electrically connecting other electrical contacts within the device to the electrodes (Fig. 1, ¶ 0051). The efficacy of the electrodes for this result depends on of the thicknesses of the electrodes. If the thicknesses are too small, then the electrodes may not be able to make strong electrical connections to the other components. If the thicknesses are too large, then there will not be enough room in the device to fit the electrodes and make the necessary electrical connections to the other components. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the thicknesses of the electrodes such that they fall within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 3, Liu in view of Utsumi teaches the aerosol generating device of claim 1, as stated above. Liu further discloses wherein the first electrode and the second electrode are electrically insulated from each other (see Liu Fig. 3).
Regarding claim 4, Liu in view of Utsumi teaches the aerosol generating device of claim 3, as stated above. Liu further discloses wherein the first electrode is apart from the second electrode on the second surface such that the first electrode is electrically insulated from the second electrode (see Liu Fig. 3).
Regarding claim 8, Liu in view of Utsumi teaches the aerosol generating device of claim 1, as stated above. Liu further discloses wherein the cartridge comprises a fixing member (“mounting base 14”, Figs. 1-2 and 4, ¶ 0041) configured to fix the ultrasonic vibrator in the cartridge (Fig. 4), and the fixing member comprises a hollow extending in a longitudinal direction of the cartridge (Fig. 2), and an insertion portion recessed in a direction crossing the hollow, such that a portion of the ultrasonic vibrator is inserted into the insertion portion (Fig. 1).
Regarding claim 9, Liu in view of Utsumi teaches the aerosol generating device of claim 8, as stated above. Liu further discloses wherein in a side view of the cartridge, a length of the first electrode on the second surface is greater than a length of the insertion portion such that the first electrode on the second surface is exposed to the hollow when the portion of the ultrasonic vibrator is inserted into the insertion portion (“convex point areas 13” of “negative electrode conducting layer 12” extend out of the insertion portion of “mounting base 14” into the hollow in order to make electrical contact with “negative electrode ring 20”, Figs. 3-4, ¶ 0043, 0051). As such, in the device of the combination the length of the first electrode on the second surface will be greater than a length of the insertion portion such that the first electrode on the second surface is exposed to the hollow when the portion of the ultrasonic vibrator is inserted into the insertion portion. Liu further discloses wherein the second electrode is electrically insulated from the first electrode (see Liu Fig. 3).
Regarding claim 10, Liu in view of Utsumi teaches the aerosol generating device of claim 8, as stated above. Liu further discloses wherein a diameter of the hollow is smaller than a diameter of the ultrasonic vibrator (Fig. 1).
Regarding claim 11, Liu discloses an aerosol generating device (“electronic cigarette”, ¶ 0001) comprising:
a main body (main body of the “electronic cigarette”, ¶ 0001);
a cartridge (“atomizer”, Fig. 4, ¶ 0035) detachably coupled to the main body (screw threads at bottom of atomizer in Fig. 4 detachably couple to the main body of the electronic cigarette) and configured to contain an aerosol generating material (liquid in “liquid storage cavity 2”, Fig. 4, ¶ 0047);
an ultrasonic vibrator (“ultrasonic atomization piece 1”, Fig. 3, ¶ 0043) arranged in the cartridge (Fig. 4) and configured to vibrate the aerosol generating material (“oscillating force”, ¶ 0042);
a first electrode (“negative electrode conducting layer 12”, Fig. 3, ¶ 0043) arranged on a first surface (“the other surface”, ¶ 0043) and a second surface (“one surface”, ¶ 0043) of the ultrasonic vibrator, the second surface being opposite to the first surface (“one surface of the piezoelectric ceramic main body 10 is in contact with a positive electrode conducting layer 11; and the other surface of the piezoelectric ceramic main body 10 is in contact with a negative electrode conducting layer 12, the negative electrode conducting layer 12 extends to the surface of the piezoelectric ceramic main body 10 on which the positive electrode conducting layer 11 is located along a side edge of the piezoelectric ceramic main body 10”, Fig. 3, ¶ 0043); and
a second electrode (“positive electrode conducting layer 11”, Fig. 3, ¶ 0043) arranged on the second surface of the ultrasonic vibrator (“one surface of the piezoelectric ceramic main body 10 is in contact with a positive electrode conducting layer 11”, Fig. 3, ¶ 0043).
Liu does not explicitly disclose wherein the first electrode and the second electrode have a microhardness of 200 Hv to 9000 Hv and a friction coefficient of 0.01 to 0.8. Liu does not teach using plated nickel for electrodes of ultrasonic vibrators. However, it is known in the art that electrodes of ultrasonic vibrators can be made with plated nickel (“According to an embodiment of the present invention, the electrode layer may be formed by the burning, vapour depositing, sputtering or plating method. The electrode layer may be preferably made of a metal or an alloy containing at least one selected from the group consisting of Al, Ni, Ti, Cr, Cu, Ag and Au”, Col. 3, Lines 49-54 of Utsumi). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use plated nickel for the electrodes of the ultrasonic vibrator, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07). Plated nickel has a microhardness that falls within the claimed range of 200 Hv to 9000 Hv as evidenced by Nakano (“The Ni plating layer has hardness about Hv 500 harder than hardness about Hv 80 of the Au plating layer”, ¶ 0045, MPEP § 2131.03), and plated nickel has a friction coefficient that falls within the claimed range of 0.01 to 0.8 as evidenced by Holtkamp (“friction coefficient of various composite plated systems” where “Control (nickel)” is “0.6”, ¶ 0067, Table 2, MPEP § 2131.03).
Although Utsumi is in the field of piezoelectric transducers, it is reasonably pertinent to the particular problem with which Liu (and the current application) was concerned (i.e., providing a device that uses a piezoelectric transducer). As such, one of ordinary skill in the art would have looked to prior art concerning piezoelectric transducers (see MPEP § 2141.01(a)(I)).
Liu does not explicitly disclose the thicknesses of the electrodes to determine whether the thicknesses fall within the claimed range of 0.5 µm to 5 µm. However, Liu teaches electrically connecting other electrical contacts within the device to the electrodes (Fig. 1, ¶ 0051). The efficacy of the electrodes for this result depends on of the thicknesses of the electrodes. If the thicknesses are too small, then the electrodes may not be able to make strong electrical connections to the other components. If the thicknesses are too large, then there will not be enough room in the device to fit the electrodes and make the necessary electrical connections to the other components. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the thicknesses of the electrodes such that they fall within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 12, Liu in view of Utsumi teaches the aerosol generating device of claim 11, as stated above. Liu further discloses wherein the second electrode is apart from the first electrode on the second surface such that the first electrode is electrically insulated from the second electrode (see Liu Fig. 3).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2019/0142063 A1) in view of Utsumi et al. (US 4,756,808) as applied to claim 1 above, and further in view of McGuire (US 5,907,272).
Regarding claim 2, Liu in view of Utsumi teaches the aerosol generating device of claim 1, as stated above. However, Liu does not explicitly disclose wherein the ultrasonic vibrator comprises an insulator extending from the side surface to the second surface and covering a portion of the second electrode arranged on the second surface, and wherein the first electrode extends from the first surface to the second surface, covering the insulator on the side surface of the ultrasonic vibrator and a portion of the insulator on the second surface.
McGuire, in the field of wraparound electrode structures, teaches that wraparound electrode structures may be formed to have a first surface (top surface in Fig. 9), a second surface (bottom surface in Fig. 9) opposite to the first surface, and a side surface (right side surface in Fig. 9), and comprising a first electrode (“first conductive layer 310”, Fig. 9, Col. 9, Line 54) arranged on the first surface and a second electrode (“second electrode 270”, Fig. 9, Col. 9, Lines 61-62) arranged on the second surface; and
an insulator (“insulating layer 280”, Fig. 9, Col. 9, Line 49) extending from the side surface to the second surface and covering a portion of the second electrode arranged on the second surface (see Fig. 9), and
wherein the first electrode extends from the first surface to the second surface (see Fig. 9), covering the insulator on the side surface and a portion of the insulator on the second surface (see Fig. 9).
One of ordinary skill in the art would have understood that there was a benefit to such a configuration in that it allows the second electrode to span the entirety of the second surface, which increases the useable area within the component. 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 used the wraparound electrode configuration taught by McGuire in the ultrasonic vibrator taught by Liu in order to obtain this benefit.
Although McGuire is in the field of wraparound electrode structures, it is reasonably pertinent to the particular problem with which Liu (and the current application) was concerned (i.e., providing a structure with two electrodes insulated from one another on the same surface). One of ordinary skill in the art would have looked to prior art concerning wraparound electrodes because Liu teaches using wraparound electrodes (see MPEP § 2141.01(a)(I)).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 2019/0142063 A1) in view of Utsumi et al. (US 4,756,808) as applied to claim 4 above, and further in view of Liu et al. (US 2020/0221776 A1).
Regarding claim 5, Liu (US’063) in view of Utsumi teaches the aerosol generating device of claim 4, as stated above. Liu (US’063) further discloses wherein electrical contacts are electrically connected to the first electrode and the second electrode which are deposited on the second surface of the ultrasonic vibrator (Fig. 1, ¶ 0051). However, Liu (US’063) does not explicitly state that these electrical contacts are for electrical connection to a battery.
Liu (US’776), in the same field of endeavor, teaches an aerosol generating device (“electronic cigarette”, Fig. 1, ¶ 0008) in which a battery (“battery 21”, Fig. 1, ¶ 0057) is electrically connected to a first electrode (“one electrode layer of the ultrasonic atomization sheet 1705 is electrically connected to the first electrode 25”, Fig. 1, ¶ 0058) and a second electrode (“the other electrode layer of the ultrasonic atomization sheet 1705 is electrically connected to the second electrode 26”, Fig. 1, ¶ 0058) which are deposited on a surface of an ultrasonic vibrator (“ultrasonic atomization sheet 1705”, Fig. 8, ¶ 0058). One of ordinary skill in the art would have understood that there was a benefit to electrically connecting the first and second electrodes of the ultrasonic vibrator to the battery in that the battery would provide power to the ultrasonic vibrator. 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 electrically connected the first and second electrodes of the ultrasonic vibrator taught by Liu (US’063) to a battery, as taught by Liu (US’776), in order to achieve this benefit.
Conclusion
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/C.G.C./Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755