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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 03/16/2026.
Claims 1-6, 9-10, 14-15, 17-21, 25-26, 29, and 32 are pending.
Claims 1, 9-10, and 14 are amended.
Claims 7-8, 11-13, 16,22-24, and 30-31 are cancelled.
Claims 21, 25-26 and 29 are withdrawn as being directed to a non-elected invention.
The rejection of claim 14 under 35 U.S.C. 112(b) is withdrawn due to amendments made to the claims.
Response to Arguments
Applicant' s arguments, see pages 6-10, filed 03/16/2026, with respect to the rejections of the claims under 35 U.S.C. 102 and 103, respectively, are persuasive regarding the 35 U.S.C. 102 rejections of Buchberger and Qiu, and therefore are withdrawn. However, in view of a new interpretation of Buchberger, the arguments regarding Buchberger are moot and Qiu is still considered to make obvious the new amendments to the claim.
On pages 8-9, the Applicant argues that Qiu that the capillary channels 126 are not different sizes and the Examiner is inferring that the capillary channels are different sizes.
The Examiner respectfully disagrees. Figure 3 of Qiu purposefully demonstrates a range of capillary channel sizes within the aerosol-generating component. This is not in error and is intentionally created to show that a range of channel dimensions is included within the disclosure.
A modified rejection based on the amendments is provided below.
Claim interpretation
The capillary structure is being interpreted as a structure capable of capillary action of a liquid/vapor and “capillarity” is being interpreted as the ability for a liquid to rise or fall as a result of surface tension.
Claim Objections
Claims 3 and 9-10 are objected to because of the following informalities:
Claim 3 should read: “wherein the capillarity is greater in the portion having a greater rate of vaporization”
Claims 9-10 should read: “having a greater rate[[s]] of vaporization are disposed”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6, 9-10, and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4-6, 9-10, and 14-15 are rejected for reciting “the portions” because there is only a first and second portion defined in claim 1, wherein only the first or second portion can correspond to the portion having greater propensity for the flow of electrical current/greater vaporization/greater density, and therefore “the portions” lack antecedent basis and are further unclear if the structure is meant to just have a first and second portion or more than two portions within the aerosol generating component. For purposes of examination, the portions are interpreted as a first or second portion and not more than one portion for each property.
Claim 9 is further indefinite for reciting the portions having a greater rate of vaporization are disposed inwardly of the portion having a lesser rate of vaporization because it is unclear how the area comprising a greater capillarity can also have a lesser rate of vaporization. In accordance with the Applicant’s disclosure, it appears the areas with greater vaporization should also be the areas having greater capillarity. For purposes of examination the portion of greater vaporization is being interpreted as being disposed at the periphery of the aerosol generating component.
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 1-6, 9-10, 14-15, 17-20, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Buchberger (WO2018211252).
In regards to claim 1, Buchberger discloses a heating element 103 (i.e., aerosol generating component) comprising a capillary structure (page 11, lines 30-36), wherein the capillary structure comprises slots separating the structure into a first portion and a second portion, and the slots comprise different concentrations of current, as well as a stronger capillarity in the more central portions of the structure (i.e., the capillarity of a first portion of the capillary structure varies relative to the capillarity of a second portion) (page 7, lines 3-6 and page 9, lines 20-29).
Buchberger further discloses the heating component formed from a single layer (Figures 1-3).
Buchberger does not explicitly disclose the portion having lesser capillarity is disposed at the periphery of the aerosol generating component, however Buchberger teaches a range of examples including Figure 19 which shows the aerosol generating component 103 having slot-shaped openings 150 in a single row along the center of heating element (page 20, lines 26-36). Since the slots/openings are responsible for the capillary action (page 5, lines 19-35), it would be obvious to one of ordinary skill that Buchberger teaches at least one example wherein the portion comprising greater capillarity is disposed in the center and the portion comprising lesser capillarity is at a periphery of the aerosol generating component. See Figure 19 provided below.
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Furthermore, Buchberger discloses the slot end is the curved internal end of the aerosol-generating component (page 21, lines 16-36 – page 22, lines 1-10), wherein the end slots have a greater concentration of current, and hence electrical power, due to the arrangement of the slots (page 9, lines 24-27).
Buchberger further discloses a serpentine current path (page 20, lines 14-19) which in accordance with the Applicant’s instant specification allows the portions having lesser propensity for current flow to be bypassed by the aerosolizable material (i.e., lesser current has lesser capillarity) (pages 43-44). Since Buchberger discloses the end slots are the ends comprising higher current, it would be obvious to one of ordinary skill in the art that the same serpentine shape of the same material would create the same expected results and is therefore considered prima facie obvious. See Figure 20 annotated by the Examiner provided below.
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Furthermore, Buchberger discloses the aerosol generating component comprises a metal fiber structure which can have appropriately sized voids and interstices between the metal fibers to provide a capillary force for wicking liquid (page 7, lines 24-31). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the opening/slot size and locations since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed capillarity portions location is critical and has unexpected results. In the present invention, one would have been motivated to optimize the opening/slot size motivated by the desire to provide a greater capillary force along the slots since that is where a greater current and rate of vaporization is, which would product a greater aerosol production and to further increase temperature gradients to simultaneously aerosolize a range of different components in the source liquid (page 9, lines 6-34).
In regards to claims 2-5, Buchberger discloses the aerosol generating component comprises slots, wherein the slots extend inwardly and outwardly and are alternately positioned along the longitudinal sides. The arrangement of the heating component creates a current flow that follows a meandering path which results in a concentration of current, and hence electrical power, around the ends of the slots (i.e., greater rate of vaporization and greater flow of electrical current at the portions by the end of the slots). The different current/power densities at different locations on the heating element give areas of relatively high current density that become hotter than areas of relatively low current density (i.e., the portions having greater and lesser propensity for the flow of electrical current have different densities) (page 9, lines 20-29).
In regards to claim 6, Buchberger discloses the aerosol generating component portions have a greater rate of vaporization and have greater densities (page 9, lines 20-29), but does not explicitly disclose the portions having a greater rate of vaporization have a density of up to 300% of the density of the portions having a lesser rate of vaporization.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the density of the portion having a greater rate of vaporization since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed density is critical and has unexpected results. In the present invention, one would have been motivated to optimize the density motivated by the desire to have portions of the heating component have higher heat (which results from a higher density) and therefore increase temperature gradients which creates a range of different temperatures in order to aerosolize different components within the source liquid (page 9, lines 20-34).
In regards to claims 9-10, Buchberger discloses the ends of the slots are where the portions are located that have greater rates of vaporization, and the ends of the slots are alternatively arranged relative to the longitudinal axis of the aerosol generating component, wherein both the inwardly facing and outwardly facing slots are located inwardly of the portions having a lesser rate of vaporization and outwardly of the portions having a lesser rate of vaporization (Figure 2 and page 9, lines 20-29).
In regards to claim 14, Buchberger discloses a non-linear profile of a boundary is disposed between the portions having lesser and greater rates of vaporization. Refer to figure 3 annotated by the Examiner provided below.
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In regards to claim 15, Buchberger discloses the portions having a lesser propensity for the flow of electrical current are disposed at the periphery of the aerosol generating component (Figure 20 and page 9, lines 20-29).
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In regards to claim 17, Buchberger discloses the thickness of the different portions vary in relation to each other (Figures 1-3 and page 9, lines 20-29).
In regards to claim 18, Buchberger discloses the aerosol generating component is substantially rectangular (page 9, lines 10-11).
In regards to claim 19, Buchberger discloses the aerosol generating component comprises a plurality of apertures 134 (page 16, lines 7-9).
In regards to claim 20, Buchberger discloses the apertures are located at a periphery of the aerosol generating component (page 16, lines 15-19 and Figure 21).
In regards to claim 32, Buchberger discloses the aerosol generating component can be a mesh formed from metal wires or fibers which are woven together, or alternatively aggregated into a non-woven structure (page 7, lines 19-21).
Claims 1-6, 9-10, 14, 19-20, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (EP-3287017-A1).
In regards to claim 1, Qiu discloses a heating member 12 (i.e., an aerosol generating component) comprising capillary action (i.e., capillary structure) ([0028]), wherein the aerosol generating component comprises a plurality of capillary channels 126, each of the capillary channels comprising a different diameter (i.e., a first portion varies relative to the second portion) (Figure 3). Since the channels vary in size and store the liquid for capillary action of the aerosol generating component, the smaller capillary channels (i.e., first portion) vary in capillarity to the larger capillary channels (i.e., second portion) (Figure 3 [0022]).
Alternatively, as shown in Figure 3, the heating member may be considered to have different sections of different capillarity based on the different distribution of channels and grooves. For example, the left side of the heating member may be considered to be a first section with a first capillarity and the right side of the heating member may be considered to be a second section with a second capillarity.
Qiu further discloses the aerosol generating component is formed from a single layer (Figure 3).
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Qiu does not explicitly disclose the portion having a lesser capillarity is disposed at the periphery of the aerosol generating component, however Qiu teaches the aerosol generating component comprises both portions on the periphery of the aerosol generating component, since the smaller and larger capillary channels are located throughout the entire aerosol generating component, and therefore it would be prima facie obvious that Qiu still teaches at least a portion having a lesser capillarity is disposed at a periphery of the aerosol generating component.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the hole size of the capillary channels such that the portion having lesser capillarity is located on the periphery of the aerosol generating component, since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed portions location is critical and has unexpected results. In the present invention, one would have been motivated to optimize the capillary channel sizes motivated by the desire to set parameters such as the size of the capillary holes and thickness of the aerosol generating component to optimize the capillarity in different portions by changing the size and thickness in certain areas ([0028]).
In regards to claim 2, Qiu discloses the capillary channels (i.e., first and second portions) have different sizes and hold different amounts of liquid for the heating element, therefore it would be obvious to one of ordinary skill in the art that the portions would have different rates of vaporization of the aerosolizable material.
In regards to claim 3, Qiu discloses the capillary channels (i.e., first and second portions) have different sizes and hold different amounts of liquid for the heating element, therefore it would be obvious to one of ordinary skill in the art that the larger portions would have greater capillarity and those areas would also be the areas having a greater rate of vaporization.
In regards to claim 4, Qiu discloses different electrical resistances can be obtained within the aerosol generating component by adjusting the size of the through holes ([0027]), but does not explicitly disclose the different rates of vaporization correspond with portions having greater and lesser propensity for the flow of electrical current. However, Qiu discloses the electrical resistance depends on the size of the capillary channel, which also affects the amount of vaporization, therefore it would be obvious to one of ordinary skill in the art that the different rates of vaporization would also correspond to portions having greater and lesser propensity for the flow of current.
In regards to claims 5-6, Qiu discloses the holes of the aerosol generating component can be adjusted by other parameters ([0027]) but is silent regarding the portions having different densities and does not explicitly disclose the portions having greater rate of vaporization have a density of up to 300% of the portions having a lesser rate of vaporization.
However, since Qiu discloses other parameters can be adjusted to achieve different electrical resistances, it would be obvious to one of ordinary skill in the art that the portions could have different densities such that the portion having a greater rate of vaporization have a density of up to 300% of the portions having a lesser rate of vaporization. The Examiner notes that the rates of vaporization would be based on capillary action/structure of the different regions, the differences in propensity of flow of electrical current would also be based on capillary channels and the density in those areas, and therefore it would be obvious to one of ordinary skill in the art that these components could be optimized to create different densities of the portions to affect the capillarity and vaporization of the aerosol generating component.
In regards to claim 9, Qiu discloses at least some of the larger portions (having a greater rate of vaporization) are disposed relative to the longitudinal axis of the aerosol generating component, inwardly of the portions having a lesser rate of vaporization. Refer to Figure 3 annotated by the Examiner provided below.
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In regards to claim 10, Qiu discloses at least some of the larger portions having a greater rate of vaporization are disposed relative to the longitudinal axis of the aerosol generating component, outwardly of the portions having a lesser rate of vaporization. Refer to Figure 3 annotated by the Examiner provided above.
In regards to claim 14, Qiu discloses the heating member that defines the different portions having greater and lesser rates of vaporization (Figure 3). It is clear that the heating member can be divided into sections of different vaporization rates using a non-linear boundary between the capillary holes.
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In regards to claim 19, Qiu discloses the aerosol generating component comprises suction grooves 124 (i.e., one or more apertures) ([0028]).
In regards to claim 20, Qiu discloses the one or more apertures originate from the periphery of the aerosol generating component (Figure 3).
In regards to claim 32, Qiu discloses the aerosol generating component of claim 1 single layer is made from woven heating wires ([0011]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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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.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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