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 .
Status of the Claims
Claims 1-14, 16, 17, 19 and 20 are pending.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive.
Applicant Argument A:
The Examiner contends that Li discloses a body of thermal insulation in the embodiment of the device in which two portions of insulation are disposed in the device, one between the device casing and the induction coil and one disposed between the coil and the cartridge. The Examiner also asserts in the Office Action that "a body of thermal insulation" does not limit the claim to a single piece of thermal insulation.
Contrary to Applicant's arguments, the Office Action asserts that Li discloses an embodiment ("Embodiment Mono", paragraph 2) in which there is a thermal insulation layer between the cartridge body 102 and the coil 103, and a separate thermal insulation layer between the housing 101 and the coil 103. This is inconsistent with the specific passage in Li referred to by the Examiner, however, in which it is clearly stated that the single thermal insulation layer, as shown in Figure 1, can disposed in one position and also, that is alternatively, in a different position, as shown in Figure 2.
The Examiner additionally contends that if their translation, and by implication their interpretation of the translation, is incorrect then it would be obvious to include both a first mass and a second mass of thermal insulation. Notably, the Examiner indicates that there are provided different masses of insulation for providing different purposes. Clearly each thermal insulation layer 113 of Li is disclosed to would be a separate component, with each layer being provided either side of the coil 103 and not linked or connected in any way either by the configuration, or indeed by their function.
The provision of two components, which is not taught by Li, that are disposed in different locations such that they are not structurally linked or connected in any way and also provided, as asserted by the Examiner, for different functions, cannot be considered to form two portions of the same body of insulation. Applicant takes issue with the notion that two spatially distinct layers of thermal insulation of Li that are disposed either side of the coil such that they are spatially distinct, could be considered to be part of the same body of insulation.
Examiner Response A:
The Examiner respectfully disagrees. The claims do not recite that the thermal insulation components which comprise the body of thermal insulation are “structurally linked or connected in any way”. The Applicant appears to be defining “a body of thermal insulation” to mean that the insulation components that comprise the body of thermal insulation are connected or linked, but that is an overly narrow characterization of the instant claim limitations.
Applicant Argument B:
Even if a person of ordinary skill in the art was to consider modifying Li in view of Monsees such that aerogel was placed between the cartridge body and the coil, they would still only arrive at the modified device having a single layer of insulation (now aerogel). Li is silent on the materials of the insulators and therefore does not teach the body of thermal insulation being made of more than one material. Li only discloses "a heat insulating material", and so a person of ordinary skill in the art would be provided with no motivation to modify the insulation to comprise more than one material. The person of ordinary skill in the art may consider replacing one insulator with another, for example aerogel, but they would not be taught to combine the insulating materials to arrive at a body of thermal insulation comprising aerogel and a further non-aerogel material.
In order to allegedly solve this problem, the Examiner has cited Liu, in particular, a "rubber insulation sleeve 21". This is disclosed to be around the outside of the top electrode which is located on the end of the heating element away from the article. The presence of the insulation sleeve on the electrodes implies that the sleeve provides electrical insulation to the device. Neither the location nor the function of this insulation sleeve would lead the person of ordinary skill in the art to consider introducing a further (non-aerogel) thermal insulator into modified Li. When looking to provide improved thermal insulation of modified Li, the person of ordinary skill in the art would not look to a document (Liu) in which an electrical insulation sleeve is provided in order to provide a further thermal insulator.
Also, Applicant points out that Liu does not disclose any thermal insulators around or near the heating element, it appears to focus on providing a seal to prevent hot air flowing into the device body at the opposite end to the heating element. There is therefore no teaching in this document that would lead a person of ordinary skill in the art to modify Li further to arrive at the invention of independent claim 1.
There is still no disclosure in any of the documents of a body of thermal insulation comprising two different materials, for example an aerogel material and one or more further (non-aerogel) thermal insulators. The documents alone may disclose certain types of insulation individually, but this does not provide the motivation for a person of ordinary skill in the art to combine such embodiments which provide standalone insulation solutions. Nowhere is such a body of insulation disclosed or taught in a manner that would lead a person of ordinary skill in the art to arrive at the invention set forth in claim 1.
Examiner Response B:
The Examiner respectfully disagrees. Modified Li teaches two masses of insulation which comprise the body of thermal insulation, and thus it would be obvious that each mass of insulation is comprised of a different material that best serves the location of the first mass of insulation and the second mass of insulation, respectively.
Liu is relied upon to teach a well-known thermal insulation material in an electronic cigarette product.
Applicant Argument C:
Claims 1-6 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, 4 and 6-10 of co-pending U.S. Application No. 15/754,818.
The Applicant respectfully traverses this rejection for the same reasons as discussed above, namely that the teachings of Blandino are directed to material that a person of ordinary skill in the art would have no reasonable basis to consider such teaching when considering the type of body of thermal insulation and heating arrangement as found in claim 1. As such, the Applicant request said rejection be withdrawn.
Applicant Response C:
The Examiner respectfully disagrees. Claim 8 of co-pending U.S. Application No. 15/754,818 explicitly states that the thermal insultation includes one or more thermal insulators selected from an aerogel and many other thermal insulation materials. Claims 4, 6, 7 and 9 of co-pending U.S. Application No. 15/754,818 teach the instantly claimed insulation configuration.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 6-10 of copending Application No. 15754818.
Claims 1, 2, 4 and 6-10 of copending Application No. 15754818 teach all of the limitations in claims 1-6 of the instant application.
Claim 1, 3-5 of the instant application is taught by claims 1, 4, 6, 7, 8 and 9 of copending Application No. 15754818.
Claim 2 of the instant application is taught by claim 2 of copending Application No. 15754818.
Claim 6 of the instant application is taught by claim 10 of copending Application No. 15754818.
This is a provisional nonstatutory double patenting rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5,11-14, 16, 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN203762288 (LI hereinafter) in view of US20130042865 (MONSEES hereinafter) and further in view of WO2014047954 (LIU hereinafter).
US 20150189915 is applied as a translation of WO2014047954. All citations to ‘Liu’ refer to US 20150189915.
Regarding claim 1, LI teaches an apparatus (Fig. 1), comprising:
a heating zone (1022) configured to receive an article including smokable material, specifically the ‘article’ comprises solid tobacco material (104) ([0024]);
an elongate heater element (102) disposed around the heater zone and including heating material that is heatable by penetration with the varying magnetic field (1021) to heat the heating zone ([0026]);
a magnetic field generator comprising a coil (103) and a device configured to pass a varying electrical current through the coil to generate the varying magnetic field ([0026]); and,
a thermal insulation between the coil and the heater element (113 in Fig. 2, “first mass of thermal insulation”) and a thermal insulator located between the coil and the housing (113 in Fig.1, “second mass of thermal insulation”) ([0027]).
Alternatively, if there is issue as to whether LI teaches applying the first mass of thermal insulation and the second mass of thermal insulation OR whether LI teaches applying the first mass of thermal insulation or the second mass of thermal insulation due to the machine translation LI, it would have been obvious to one of ordinary skill in the art at the time of the invention to have included both the first mass of thermal insulation and the second mass of thermal insulation in the apparatus because Li teaches that the first mass of thermal insulation prevent the conduction of heat to outside housing 101, and thereby prevents the user from having a hot sensation, and Li teaches that the second mass of thermal insulation serves to protect the inner wire because the coil is generally coated with an anti-oxidation coating on its surface, so the second mass of thermal insulation prevents the coil surface from being damaged (“Embodiment Mono”, paragraph 2). Thus by including both the first mass of thermal insulation and the second mass of thermal insulation in the apparatus, the benefits of both the first mass of thermal insulation and the second mass of thermal insulation are realized.
LI does not expressly teach the material of the thermal insulation.
MONSES teaches a device for generating an inhalable aerosol which includes aerogel insulation ([0080]-[0081]) next to the heating device ([0078]). It would have been obvious to apply aerogel insulation as the thermal insulation material in LI adjacent the heater element because MONSES teaches that aerogel insulation have extremely low density and thermal conductivity, almost nullifying the three methods of heat transfer (convection, conduction and radiation) ([0081]).
Modified LI teaches that the aerogel material comprises at least part of a body of thermal insulation (MONSES, [0080]-[0081]), specifically, modified LI teaches that the “first mass of thermal insulation” comprises the mass of aerogel material (113 in Fig. 2, “first mass of thermal insulation”).
Modified LI does not expressly teach the material of the further thermal insulator, or “second mass of thermal insulation”.
LIU teaches an electronic smoking device with an insulation sleeve of rubber ([0035]).
It would have been obvious for one of ordinary skill in the art at the time of filing to have applied a well-known insulation material, such as rubber as taught by LIU, as the material of the further thermal insulator, or “second mass of thermal insulation” with a reasonable expectation of success and predictable results.
Regarding claim 2, LI teaches that the heating zone (1022) is defined by the heating element (102), wherein the heater zone forms a chamber defined by heater element (102) which just contains the smokeable material ([0026]), and therefore is free of any heating material that is heatable by penetration with the varying magnetic field.
Regarding claims 3 and 4, LI teaches that the insulation encircles the heating element (113 in Fig. 2) such that the insulation is between the coil and the heating element [0027]).
Regarding claim 5, LI teaches that the insulation encircles the coil (113 in Fig. 1).
Regarding claims 11-13, LI teaches that the insulation between the coil and heating element (113 in Fig. 2) is a first mass of thermal insulation and the insulation between the coil and the housing (113 in Fig. 1) is a second mass of thermal insulation.
Regarding claims 14 and 16, modified LI teaches that the aerogel material, which abuts the heating element (113 in Fig. 2) comprises at least part of a body of thermal insulation, wherein the aerogel material is a nonwoven material (MONSES, [0080]-[0081]).
Regarding claim 17, LI teaches that the coil is embedded in the body of thermal insulation ([0027]), specifically the coil is located between the layer of thermal insulation located between the coil and the heating element (113 in Fig. 2, “first mass of thermal insulation”) and layer of thermal insulation between the coil and the housing (113 in Fig. 1, “second mass of thermal insulation”).
Regarding claim 19, modified LI teaches that the body of thermal insulation is arranged to maintain a relative positioning of the coil and the heating element, by being positioned between the coil and heating element (113 in Fig. 2).
Regarding claim 20, LI teaches a system comprising an apparatus for heating smokable material to volatilize at least one component of the smokable material ([0001]-[0002]), the system comprising:
an article (100) including smokable material (104), specifically the ‘article’ comprises solid tobacco material ([0024]);
a heating zone (1022) configured to receive an article including smokable material, specifically the ‘article’ comprises solid tobacco material (104) ([0024]);
an elongate heater element (102) disposed around the heater zone and including heating material that is heatable by penetration with the varying magnetic field (1021) to heat the heating zone ([0026]);
a magnetic field generator comprising a coil (103) and a device configured to pass a varying electrical current through the coil to generate the varying magnetic field ([0026]); and,
a thermal insulation between the coil and the heater element (113 in Fig. 2, “first mass of thermal insulation”) and a further thermal insulator located between the coil and the housing (113 in Fig.1, “second mass of thermal insulation”) ([0027]).
Alternatively, if there is issue as to whether LI teaches applying the first mass of thermal insulation and the second mass of thermal insulation OR whether LI teaches applying the first mass of thermal insulation or the second mass of thermal insulation due to the machine translation LI, it would have been obvious to one of ordinary skill in the art at the time of the invention to have included both the first mass of thermal insulation and the second mass of thermal insulation in the apparatus because Li teaches that the first mass of thermal insulation prevent the conduction of heat to outside housing 101, and thereby prevents the user from having a hot sensation, and Li teaches that the second mass of thermal insulation serves to protect the inner wire because the coil is generally coated with an anti-oxidation coating on its surface, so the second mass of thermal insulation prevents the coil surface from being damaged (“Embodiment Mono”, paragraph 2). Thus by including both the first mass of thermal insulation and the second mass of thermal insulation in the apparatus, the benefits of both the first mass of thermal insulation and the second mass of thermal insulation are realized.
LI does not expressly teach the material of the thermal insulation.
MONSES teaches a device for generating an inhalable aerosol which includes aerogel insulation ([0080]-[0081]) next to the heating device ([0078]). It would have been obvious to apply aerogel insulation as the thermal insulation material in LI adjacent the heater element because MONSES teaches that aerogel insulation have extremely low density and thermal conductivity, almost nullifying the three methods of heat transfer (convection, conduction and radiation) ([0081]).
Modified LI teaches that the aerogel material comprises at least part of a body of thermal insulation (MONSES, [0080]-[0081]), specifically, modified LI teaches that the “first mass of thermal insulation” comprises the mass of aerogel material (113 in Fig. 2, “first mass of thermal insulation”).
Modified LI does not expressly teach the material of the further thermal insulator, or “second mass of thermal insulation”.
LIU teaches an electronic smoking device with an insulation sleeve of rubber ([0035]).
It would have been obvious for one of ordinary skill in the art at the time of filing to have applied a well-known insulation material, such as rubber as taught by LIU, as the material of the further thermal insulator, or “second mass of thermal insulation” with a reasonable expectation of success and predictable results.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of LI, MONSES and LIU as applied to claim 1 above, and further in view of US 20140216485 (EGOYANTS hereinafter).
Regarding claim 6, LI teaches a gap between an outermost surface of the heating element and an innermost surface of the coil, specifically the space wherein thermal insulation is placed (113 in Fig. 2).
Modified LI does not expressly teach that the gap is between about one and about three millimeters.
EGOYANTS teaches a heat-not-burn tobacco apparatus which comprises thermal insulation (18) around the heater (3) ([0029]) wherein the insulation around the heater is about 1 mm ([0020]-[0022]). It would have been obvious for one of ordinary skill in the art at the time of filing to have applied the insulation thickness of about 1 mm of the apparatus of EGOYANTS to the insulation of Modified LI, which is silent as to the exact thickness of the thermal insulation, with a reasonable expectation of success and predictable results, namely appropriate thermal insulation.
Claim(s) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of LI, MONSES and LIU as applied to claim 1 above, and further in view of US 5369723 (COUNTS hereinafter).
Regarding claims 7-10, Modified LI does not expressly teach that the thermal insulation comprises air gaps.
COUNTS teaches a tobacco flavor unit provided for use in a smoking article for delivering to a smoker a tobacco flavor substance, the smoking article having electrical heating means (abstract). COUNTS teaches that the heater is surrounded by air gaps, which provide good thermal isolation, and because of the insulating nature of the air gaps, higher heater temperatures are allowed to be obtained for a given predetermined electrical power consumption (col. 6, lines 40-65 and col. 9, lines 52-56). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have positioned an air gap next to the heating element and next to the coil in Modified LI with a reasonable expectation of success and predictable results, namely because of the insulating nature of air gaps, less electrical power is needed to achieve a predetermined heater temperature than would otherwise be required (col. 6, lines 50-54).
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755