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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 8 has been entered.
Claims 1, 4-12, and 14-19 are pending. Claims 9-12 remain withdrawn.
Claims 1, 4-8, and 14-19 are presently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 15 recites a vaporization element comprising an aluminum oxide layer formed from a stabilizing layer covering a conductive layer covering a porous substrate. In total, the substrate is covered by three layers.
Wands Factor A, the breadth of the claims: the key issue is the relationship between the stabilizing layer and the resistive layer. Aluminum oxide is a distinct layer formed from the stabilizing layer by sintering. The breadth of the stabilizing layer encompasses aluminum materials, from which a distinct aluminum oxide layer can be formed by sintering electrodes, with resistivities higher than a titanium-zirconium alloy.
Wands Factor B, the nature of the invention: the claim is directed to a vaporization element comprising layers. One of ordinary skill would draw from the backdrop of elemental metals, alloyed metals, and the properties thereof when trying to make the vaporization element.
Wands Factor C, the state of the prior art: with respect to the stabilizing layer, the prior art appears to teach zero aluminum materials, from which a distinct aluminum oxide layer can be formed by sintering electrodes, with resistivities higher than a titanium-zirconium alloy.
Electrodes require conductivity to function and therefore cannot be made of aluminum oxide. Sintering electrodes arranged on an aluminum oxide layer would deliver heat to the aluminum oxide layer but not deliver aluminum material to grow the aluminum oxide layer, much less form a distinct aluminum oxide layer, absent evidence to the contrary. To form a distinct aluminum oxide layer by sintering the electrodes, the stabilizing layer cannot be aluminum oxide.
Elemental aluminum has a resistivity of 2.826E-8 Ω-m (Aluminum Resistivities, p. 1). The most resistive aluminum material is aluminum cast 220 with a resistivity of 8.210E-8 Ω-m (p. 8).
Elemental titanium has a resistivity of 5.562E-7 Ω-m (Titanium Resistivities, p. 1). The least resistive titanium material is ASTM with a resistivity of 4.2E-7 Ω-m (p. 1)
Elemental zirconium has a resistivity of about 4.105E-7 Ω-m or 5.071E-7 Ω-m (Zirconium Resistivities, p. 42).
The instant specification discloses that titanium-zirconium alloys synergize to alloyed resistivities three times higher than original resistivities [instant 47], so one of ordinary skill would expect an alloy comprising titanium and zirconium to have a resistivity of about 1.5E-6 Ω-m or higher (elemental titanium and elemental zirconium have resistivities of about 5E-7 Ω-m * 3 alloying factor = 1.5E-6 Ω-m alloyed resistivities). To take one such example, Tanner (US 4148669 A) discloses titanium-zirconium alloys having resistivities of 2E-6 Ω-m (abstract, glassy zirconium-titanium alloys have resistivities of 200 μΩ-cm * (1 Ω / 1,000,000 μΩ) * (1 m / 100 cm) = 2E-6 Ω-m alloyed resistivities). Alloys comprising titanium and zirconium has resistivities taught at 1.5E-6 Ω-m or higher and exemplified at 2E-6 Ω-m.
A non-oxide aluminum material having a resistivity higher than a titanium-zirconium alloy appears to be impossible. Elemental titanium and elemental zirconium are more than ten times as resistive as elemental aluminum and almost ten times as resistive as the most resistive aluminum material disclosed in the lists. One of ordinary skill would expect an alloy comprising titanium and zirconium to yield even higher resistivity.
At a minimum, one of ordinary skill would require undue experimentation in testing every material comprising aluminum and every alloy comprising titanium and zirconium to try to make the claimed invention, if the claimed invention is even physically possible. The instant specification lists only one example of a non-oxide aluminum material – aluminum [applicant 44]. The instant specification otherwise gives no direction towards non-oxide aluminum materials with resistivities higher than a titanium-zirconium alloy.
Wands factor D, the level of one of ordinary skill: one of ordinary skill is bound by the properties of elements and alloys that occur in nature or can be synthesized. Finding a non-oxide aluminum material with a resistivity higher than a titanium-zirconium alloy would require testing every material comprising aluminum and every alloy comprising titanium and zirconium, if such a material is even physically possible.
Wands factor E, the level of predictability in the art: elemental metals, alloyed metals, and properties thereof are a predictable art. Elemental metals and alloyed metals are easily and reliably tested by eddy current testing to yield well-known and predictable resistivities.
Wands factor F, the amount of direction provided by the inventor: the instant specification lists only one example of a non-oxide aluminum material – aluminum [applicant 44]. The instant specification otherwise gives no direction towards non-oxide aluminum materials with resistivities higher than a titanium-zirconium alloy. As discussed in Wands factor C, titanium alloys and elemental zirconium are more than ten times as resistive as elemental aluminum and almost ten times as resistive as the most resistive aluminum material disclosed in the lists. One of ordinary skill would require undue experimentation in testing every material comprising aluminum and every alloy comprising titanium and zirconium to try to make the claimed invention, if the claimed invention is even physically possible
Wands factor G, the existence of working examples: no working example of the invention exists on the record.
Wands factor H, the quantity of experimentation needed to make or use the invention based on the content of the disclosure: as discussed in Wands factor C, one of ordinary skill would require undue experimentation in testing every material comprising aluminum and every alloy comprising titanium and zirconium to try to make the claimed invention, if the claimed invention is even physically possible. As discussed in Wands factor F, the instant specification lists only one example of a non-oxide aluminum material – aluminum [applicant 44]. The instant specification otherwise gives no direction towards non-oxide aluminum materials with resistivities higher than a titanium-zirconium alloy. The claims encompassing a wide range of compounds and combinations therefore necessitate a high amount of experimentation that, combined with the lack of guidance in the instant specification, renders an undue quantity of experimentation.
Claims 16-19 are rejected by dependence on claim 15.
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 1, 4, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tan (CN 110183225 A with reference made to machine translation) in view of Marks (US 20180221605 A1), Zinovik (US 20180168223 A1), and “Titanium Alloys” (hereinafter AZO).
Claims 1 and 14: Tan teaches a vaporization element (fig. 1 and [35], heating sheet) of an electronic vaporization device (electronic cigarette), the vaporization element comprising:
a silicon carbide substrate (3);
and a heating layer (5 and 6),
wherein the substrate (3) comprises a vaporization surface (topmost surface of 3) and the heating layer (5 and 6) covers the vaporization surface (topmost surface of 3), wherein the heating layer (5 and 6) comprises a conductive layer (5) and a stabilizing layer (6), the conductive layer (5) covers the vaporization surface (topmost surface of 3), and the stabilizing layer (6) covers a surface (topmost surface of 5) of the conductive layer (5) far from the substrate (3),
wherein a resistivity ([39], layer #6 is aluminum oxide which is highly resistive) of the stabilizing layer (6) is higher than a resistivity (layer #5 is tungsten or platinum both of which are lowly resistive) of the conductive layer (5),
wherein the material of the stabilizing layer comprises aluminum ([39], layer #6 comprises aluminum oxide which comprises aluminum),
wherein the material of the conductive layer can comprise tungsten or platinum ([39], layer #5 is tungsten or platinum),
wherein the vaporization element ([35], heating sheet) is configured to convert an e-liquid into vapor (the heating sheet can vaporize an e-liquid like in an electronic cigarette).
Tan does not explicitly teach that the substrate is porous, that the material of the conductive layer comprises a titanium-zirconium alloy,
or that powering on the vaporization element is configured to deliver the e-liquid to the porous substrate and vaporize the e-liquid into vapor at the vaporization surface.
Marks teaches a vaporization element (fig. 1 and [23]) comprising a silicon carbide substrate (30) covered by a heating layer (20), wherein the silicon carbide is porous [26], and wherein powering on the vaporization element is configured to deliver an e-liquid (oil) to the porous substrate (30) and vaporize the e-liquid (oil) into vapor at a vaporization surface (surface of 20 which contacts the oil), such that the substrate can store and supply oil to the heating layer in a clean, uniform, and complete manner [23].
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 use, as Tan’s generic silicon carbide substrate, Marks’s specific porous silicon carbide substrate, because doing so would ensure that the substrate can store and supply oil to the heating layer in a clean, uniform, and complete manner.
Zinovik teaches a vaporization element comprising a ceramic substrate (fig. 1 and [87], #15) covered by a conductive layer (14) which can comprise equivalent alternatives of platinum and an aluminum-titanium-zirconium alloy [18].
AZO teaches that aluminum-titanium-zirconium alloys are particularly strong at ambient and elevated temperatures (p. 1, [final paragraph], aluminum very effectively strengthens titanium at ambient and elevated temperatures; p. 2, [1], zirconium strengthens titanium at ambient and elevated temperatures).
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 substitute Zinovik’s aluminum-titanium-zirconium alloy for Tan’s platinum, as motivated by AZO’s strengthening teachings, because doing so would be a simple substitution of conductive layers between vaporization elements, wherein the conductive layers are stacked on ceramic substrates, that makes the conductive layer strong at ambient and elevated temperatures. See MPEP 2143(B, F, and G).
Claim 4: modified Tan teaches the vaporization element of claim 1.
Modified Tan does not explicitly teach that a thickness of the heating layer ranges from 1.5 μm to 5 μm, that a thickness of the stabilizing layer ranges from 0.5 μm to 2 μm, or that a thickness of the conductive layer ranges from 2 μm to 3 μm.
The instant specification gives no particular meaning to the claimed thicknesses [applicant 17, 25, 56, 66]. In the absence of contrary evidence, specifying that Tan’s vaporization element has the thicknesses of claim 4 would maintain the vaporization element’s performance. See MPEP 2144.04(IV)(A): 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 courts have held that, where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device.
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 dimension Tan’s layers such that a thickness of the heating layer ranges from 1.5 μm to 5 μm, a thickness of the stabilizing layer ranges from 0.5 μm to 2 μm, and a thickness of the conductive layer ranges from 2 μm to 3 μm, because doing so would be a patentably indistinct change in size.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tan (CN 110183225 A) in view of Marks (US 20180221605 A1), Zinovik (US 20180168223 A1), and “Titanium Alloys” (hereinafter AZO) as applied to claim 1 in further view of Yamada (US 20200128884 A1).
Claim 5: modified Tan teaches the vaporization element of claim 1, further comprising: at least one electrode (fig. 1, #4 as in [35]) located on the stabilizing layer (6) far from (the stabilizing layer is far from the porous substrate) the porous substrate (3) and covering a part of the stabilizing layer (6).
Modified Tan does not explicitly teach that the at least one electrode comprises a first electrode and a second electrode.
Yamada teaches a vaporization element comprising at least two electrodes [52], such that voltage can be measured across the two electrodes [52].
Moreover, duplicating Tan’s electrode would produce the expected result of two electrodes which can form multiple electrical connections. See MPEP 2144.04(VI)(B): In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). The courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
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 provide that the at least one electrode comprises a first electrode and a second electrode, because doing so would enable a voltage to be measured across two electrodes on the vaporization element and would otherwise be a patentably indistinct duplication of parts.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tan (CN 110183225 A) in view of Marks (US 20180221605 A1), Zinovik (US 20180168223 A1), “Titanium Alloys” (hereinafter AZO), and Yamada (US 20200128884 A1) as applied to claim 5 in further view of Batista (US 20170303588 A1).
Claim 6: modified Tan teaches the vaporization element of claim 5, wherein materials of the first electrode and the second electrode can be equivalent alternatives of tungsten or platinum [39].
Modified Tan does not explicitly teach that the first electrode and the second electrode comprise silver.
Batista teaches a vaporization element ([56-57], semiconductor heater) comprising a heating layer (heating layer) covered by a stabilizing layer (passivation layer) connected to electrodes (each electrode) which can comprise equivalent alternatives of platinum and silver [56].
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 substitute Batista’s silver electrodes for Tan’s platinum electrodes, because doing so would be a simple substitution of electrode materials between vaporization elements comprising a heating layer covered by a stabilizing layer connected to electrodes.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tan (CN 110183225 A) in view of Marks (US 20180221605 A1), Zinovik (US 20180168223 A1), and “Titanium Alloys” (hereinafter AZO) as applied to claim 1 in further view of Chen (US 20170112193 A1).
Claims 7-8: modified Tan teaches that the vaporization element of claim 1 is designed for an electronic vaporization device ([35], electronic cigarette).
Modified Tan does not explicitly teach the electronic vaporization device comprises: a vaporization assembly comprising a liquid storage cavity configured to store an e-liquid, wherein the e-liquid in the storage cavity is deliverable to the vaporization surface; and a power supply assembly, wherein the power supply assembly is electrically connected to the vaporization assembly to supply power to the vaporization element of the vaporization assembly.
Chen teaches an electronic vaporization device (fig. 1, #1) comprising: a vaporization assembly (#10 as in [26]) comprising a liquid storage cavity (fig. 3, #140) configured to store an e-liquid [26]; and a vaporization element (200), wherein the e-liquid in the storage cavity (140) is deliverable to the vaporization element (200); and a power supply assembly (fig. 1, #20), wherein the power supply assembly (20) is electrically connected [26 and 36] to the vaporization assembly (10) to supply power to the vaporization element (200) of the vaporization assembly (10).
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 use, as Tan’s generic electronic vaporization device, Chen’s specific electronic vaporization device comprising: a vaporization assembly comprising a liquid storage cavity configured to store an e-liquid, wherein the e-liquid in the storage cavity is deliverable to the vaporization surface; and a power supply assembly, wherein the power supply assembly is electrically connected to the vaporization assembly to supply power to the vaporization element of the vaporization assembly, because doing so would be a simple combination of the vaporization element with said vaporization element’s intended use case and would predictably supply liquid and power to the vaporization element.
Response to Arguments
Applicant's arguments of 2025 August 8 have been carefully considered but are not persuasive.
Applicant argues (p. 7, [final paragraph] – p. 8, [2]) that Tan’s vaporization element is applied to bake solid tobacco, rather than e-liquid. However, combined prior art need not be analogous to each other and need only be analogous to the instant invention. See MPEP 2141.01(a).
With respect to Tan, Tan does not disclose baking solid tobacco. The word “solid” appears to be absent from Tan. In the technical field portion, Tan discloses that the invention relates to baked electronic cigarette ceramic heating sheets [2] but does not specify a state of matter. In the detailed description, Tan’s vaporization element (fig. 1 and [35]) heats an electronic cigarette but does not specify a state of matter. Overall, Tan discloses a ceramic heating sheet contained in an electronic cigarette (detailed description), wherein the ceramic heating sheet relates to baked heating sheets (technical field).
With respect to Tan in view of Marks, one of ordinary skill would be motivated to make Tan’s heating sheet capable of heating liquid for Marks’ benefit of clean, uniform, and complete precursor supply and vaporization.
Tan is in the same field of endeavor as (vaporization elements) and reasonably pertinent to (designing vaporization elements) the instant invention.
Marks is in the same field of endeavor as (vaporization elements) and reasonably pertinent to (designing vaporization elements) the instant invention.
Applicant further argues that Tan’s layer #1 can be dense [Tan 41], but the examiner’s proposed modification does not rely on layer #1.
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