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 .
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
The applicant argues that 5 U.S.C. 112(d) does not apply to claim 2 because the specification indicates that the shell may be coated or lined with susceptor material as explained on page 4, lines 22-26. The examiner disagrees. The quoted section discloses two distinct embodiments. One is described as “advantageously” having portions of the shell made of susceptor material. The other, “However” has at least portions of the inners dies of the shell may be coated or lined with susceptor material. The use of “however” indicates that the statement that follows contrasts or contradicts the previous statement. Using “however” does not support the interpretation that two embodiments are combined. One of ordinary skill would not interpret the disclosure as providing support for a shell being made of susceptor and a coating made of susceptor.
In response to applicant's arguments against the references individually (shell of Bown is a passive container), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant argues that the shell in Bowen is merely a passive container, not an active heating component. The invention of Adams incorporates heater elements (induction or resistance) as part of the tobacco container. Although this does not have the same shape as that of Bowen, the heater is part of the container and can have a base and side walls. Therefore, incorporating the heating element as part of the container of Bowen would have been obvious in view of Adams. In addition, it is notoriously well known in the art, as well as by the general public, that induction heating typically uses the container to heat rather than a separate heater. For instance, on induction kitchen stoves, the pan containing the food to be heated is both the container and the heater rather than being heated by a separate resistance or combustion heat source located. The argument that the applicant’s invention is a dual role would have been expected in light of Bowen and Adams, or alternatively in view of what is notoriously well known in the art.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 includes the limitation, “and the base and the at least one side wall of the shell being made of susceptor material”. Claim 2 indicates that, “at least portions of an inner side of the shell are coated or lined with the susceptor material.” The susceptor material in claim 1 also defined by claim 1 as, “the susceptor material of the shell” (line 10). Claim 2 broadens the limitations of claim 1 by indicating that the susceptor material that was explicitly defined as being “of the shell” is only a coating or lining on portions of the inner side of the shell. The use of coating or lining of susceptor material in addition to the shell being made of susceptor material is not contemplated by the specification. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 4, 6, 7, 12, 13, 15-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowen et al. (US 20090151717) in view of Adams et al. (US 20070102013)
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Regarding claim 1, 3, 6, 7, 16, 17, and 20 Bowen et al. disclose a smoking device with a cartridge of smoking material in a sealed container (i.e. sealed capsule) that has a side wall, base, lid, and aerosolizable material such as nicotine [0089] and propylene glycol [0093]. The mouthpiece has a puncture (i.e. piercing member) for piercing the sealed cartridge lid [0072] (see figures 3 (left) and 7 (right) below). The air inlet and conduit in the mouthpiece are directed along a diagonal toward the cartridge (i.e. as shown through a passage in the piercing member 714, [0069]) through the cartridge and the vapor and air are drawn out of a different part of the mouthpiece through a conduit.
Bowen et al. disclose a body with a heating system for heating the capsule but do not disclose induction heating. However, induction heating is known in the art. For instance, Adams et al. disclose a similar smoking article and disclose that aerosol generating devices do not need to use combustion systems and instead can use electrical heating such as induction heating [0045]. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use induction heating to heat the bowl or capsule of Bowen et al.
Adams et al. do not expressly disclose that induction heating includes a susceptor material in contact with the aerosol generator, and induction coil, or a power source and load network for power the inductor. However, the formation of induction heating structures is notoriously well known in the art. One of ordinary skill would understand that induction heating inherently requires an induction coil and a susceptor. Adams et al. disclose that part of the structure of the aerosol generating material is capable of generating heat, indicating that this portion is the susceptor. It would have been obvious to one of ordinary skill that the bowl of Bowen et al. would be the susceptor because it is in contact with the aerosol generator. It would have also followed that the induction coil would been connected to a load network because without power, induction heating would not occur as directed by Adams et al. The combination would yield predictable results, i.e. the production of aerosol from the material in the bowl without inhaling combustion products as taught by Bowen et al.
Regarding claim 4, Bowen et al. disclose that insulation is used in the housing to include insulation for keeping the user from contacting the necessarily hot portions of the device [0063].
Regarding claim 7, Bowen et al. disclose tobacco particles [0095].
Regarding claims 12 and 13, Bowen et al. do not disclose ferromagnetic or paramagnetic material in the lid, meeting the limitation of less than 20 percent or no ferromagnetic or paramagnetic material.
Regarding claim 15, Bowen et al. disclose the capsule can be made of stainless steel, resulting in the entire shell is a susceptor.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowen et al. (US 20090151717) and Adams et al. (US 20070102013) as applied to claims 1 and 4 above and in further view of Fornari et al. (DE 102007006731A1).
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Regarding claim 5, although Bowen et al. and Adams et al. disclose thermal insulation they do not disclose insulation between the capsule and the inductor. However, locating insulation between the susceptor (i.e. capsule) and the inductor is known in the induction heating art. For instance, Fornari et al. disclose an induction heating system with a crucible (Figure 1 below, element 1a), a chamber wall (4), insulation (5), and induction coils (3). As illustrated, the insulation is between the crucible (capsule) and the induction coils. Fornari et al. disclose that the thermal insulation layer serves to protect the induction coil from the heating power.
It would have been obvious to one of ordinary skill in the art at the time of invention to use the insulation structure disclosed by Fornari et al. in the invention of Bowen et al. and Adams et al. to protect the induction coil from temperatures created in the capsule. Placing insulation between the heated susceptor and the induction coil is known, and is common, in the induction heating art. Although Fornari et al. is not in the smoking device art, the disclosure is considered to be analogous art because it concerns technical problems faced by the instant invention (i.e. placing insulation between a susceptor and inceptor) in a technology that one of ordinary skill would look to (i.e. inception heating).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747