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
This Office Action is in response to Applicant’s amendment filed 03/17/2026.
Claims 1, 3-7 and 9-13 and 15 are pending and are subject to this Office Action.
Claim 1 is amended.
Claim 15 is newly added.
Claims 2, 4 and 8 are cancelled.
Claims 10-13 are previously withdrawn.
Response to Arguments
Applicant's arguments, see pages 6-12, filed 03/17/2026, with respect to the 103 rejection of claim 1 have been fully considered and they are persuasive. Claim 1 is amended the subject matter of cancelled claim 14. Prior art of record Macko does not teach that the conductive bead is “selected from the group consisting of a zirconia bead, a silica bead, and a combination thereof" as amended. Therefore, the rejection has been withdrawn. However, upon further consideration, a new obviousness ground(s) of rejection is made in view of Hejazi (US 20190350256 A1), as previously applied in the rejection of claim 14.
On pages 7-10 the Applicant argues that the prior art does not appropriately teach that the porous wick and the conductive bead are made of different materials ("glass beads, ceramic beads, alumina beads and combinations thereof" and "a zirconia bead, a silica bead and a combination thereof", respectively) as claimed. The Applicant argues that as Macko teaches the porous wick and the conductive bead as one structure (formed of electrically resistive materials such as alumina or ceramic), there would be no motivation to have each comprise different materials. The Applicant also notes that while Hejazi teaches that the wick and the heating element may be different materials, Hejazi teaches these components as different structures
The Examiner disagrees.
Firstly, the Examiner notes that prior art of record Macko teaches that different materials may be used for the porous wick and conductive bead layer of Macko, including ceramic beads and alumina beads ([0030-0033]). Hejazi teaches that a conductive heating material of the conductive bead layer may alternatively be silica or zirconia ([0042], [0072]). It would be obvious to one having ordinary skill in the art that different materials may be used at once, such as in layers. Thus, it would not be unreasonable to make the porous wick and the conductive bead layer as two different materials, even if they are comprised within the same structure. The Examiner notes that this would merely involve a prima facie substitution of various known materials.
In the alternative, the Examiner notes that Macko teaches that different materials may be used for the porous wick and conductive bead layer of Macko. Hejazi teaches that a conductive heating layer material may be silica ([0042]) and a porous wick may be glass ([0041]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Macko by using glass and silica for the porous wick and the conductive beads, respectively, as taught by Hejazi because Makco and Hejazi are directed to heating elements comprising conductive layers, Hejazi teaches that silica and glass are known porous conductive heating materials, and this involves substituting alternative porous conductive materials for others to yield predictable results. The Examiner notes that with one layer being glass and one being silica, both layers comprise silica and would thus comprise the same base material.
On pages 10-12 the Applicant argues that the prior art does not appropriately teach "the shape of the conductive bead layer corresponds to the shape of the lower surface of the porous wick" such that the wick and the conductive layer are two separate structures. The Applicant argues that this limitation highlights that the wick and the conductive layer are different structures, thereby distinguishing over prior art Macko, and further states that the argument made by the Examiner regarding the obviousness of forming the structure of Macko as two separate pieces would be arbitrary.
The Examiner disagrees.
As recited in the previous arguments dated 12/17/2025, the examiner maintains that the use of a two-piece construction instead of the integral structure with the same two functions disclosed in Macko would merely be a matter of obvious engineering choice, or even of mere notation that would yield predictable results. Furthermore, one having ordinary skill in the art would recognize that the element may reasonably be comprised of two materials, such as in two layers, and each may represent a different component/function.
While the Applicant states that Macko teaches that the porous wick and conductive layer are a single structure, the Examiner notes that Macko paragraph [0021] merely teaches a preference to a single structure between wicking portions 140 and heatable portions 141, but this does not constitute teaching away or preclude two portions. Furthermore, these are not the two portions to which the Examiners argument is applied. Examiner only references portion 141 as being separated into layers, and does not cite portion 140.
As the separation of porous wick and conductive layer is considered an appropriate modification, the Examiner here references Annotated Fig. 1, in which the conductive bead layer rests on top of the porous wick and thus conforms to a lower surface of the porous wick where the two layers contact, indicating that the shape of the conductive bead layer corresponds to the shape of the lower surface of the porous wick.
The following is a modified rejection based on Applicant’s amendments to the claims.
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 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.
Claims 1, 3-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Macko et al. (US 20140238424 A1) in view of Davis et al. (US 20170020193 A1) and Hejazi (US 20190350256 A1).
Regarding claim 1, Macko teaches a planar heating element (heater-wick element 14; Figs. 3 and 5; [0008]) for generating an aerosol, comprising,
a porous wick (portion of heated portion 141; see Annotated Fig. 1; [0021]; porosity specified in [0040]) for absorbing a liquid aerosol-generating substrate (liquid is absorbed from the liquid supply region 22 along the wick to the heated portion 141; [0026-0029]); and
a conductive bead layer (region of heated portion 141 formed of a plurality of conductive beads; see Annotated Fig. 1; [0021], [0030]) for heating the absorbed liquid aerosol-generating substrate; and
a terminal part (connection regions 99) for delivering an electricity for heating to the conductive bead layer (via electrical leads 26; [0034-0035]),
wherein the porous wick is a structure comprising beads, and the beads are selected from the group consisting of ceramic beads ([0033]), alumina beads ([0031]), and combinations thereof,
the conductive bead layer is a layer having a plurality of conductive beads stacked on one surface of the porous wick (see Annotated Fig. 1),
the one surface of the porous wick is an area formed by continuously connecting from one terminal to the other terminal while the porous beads exposed to the outside and located at the outermost side of the porous wick are in direct contact with the conductive beads (see Annotated Fig. 1), and
the shape of the conductive bead layer corresponds to a shape of a lower surface of the porous wick (see Annotated Fig. 1, in which the conductive bead layer rests on top of the porous wick and thus conforms to a lower surface of the porous wick where the two layers contact).
Macko does not explicitly teach (I) that the beads themselves are porous or (II) that conductive bead layer is selected from the group consisting of zirconia bead, a silica bead, and a combination thereof.
Regarding (I), Davis, directed to an aerosol delivery device comprising a heating element (heater 134; [0114]) for generating an aerosol and a porous wick comprising beads (liquid transport element 136; [0114]), teaches that beads for a porous wick may be porous ([0070], [0114]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that the beads of Macko would be porous as taught by Davis because both Macko and Davis are directed to heating elements for generating aerosol comprising porous wick structures using beads, Davis teaches that beads of a porous wick may themselves be porous, and this involves applying a known teaching to a similar device to yield predictable results.
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Annotated Figure 1 (annotated from Macko Fig. 5)
Regarding (II), Macko teaches that the conductive bead may be made of suitable metal electrically resistive materials ([0030-0031]).
Macko does not teach that the conductive bead is selected from the group consisting of a zirconia bead, a silica bead, and a combination thereof. It would be obvious to one having ordinary skill in the art that different materials may be used at once, such as in layers.
Hejazi, directed to an aerosol delivery device (100; [0038]) comprising a heating element (heater 134 and fluid transport element 136; Fig. 1; [0041], [0049]) for generating an aerosol comprising a porous wick (fluid transport element 136; [0041]) and a conductive layer (heater 134; [0042]), teaches that a metal conductive heating material may alternatively be silica or zirconia ([0042], [0072]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Macko by using silica or zirconia for the conductive bead layer as taught by Hejazi because Makco and Hejazi are directed to heating elements comprising conductive layers, Hejazi teaches that silica and zirconia are known conductive heating materials, and this involves substituting one alternative conductive material for another to yield predictable results.
In the alternative, Hejazi teaches that a conductive heating layer material may be silica ([0042]) and a porous wick may be glass ([0041]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Macko by using glass and silica for the porous wick and the conductive beads, respectively, as taught by Hejazi because Makco and Hejazi are directed to heating elements comprising conductive layers, Hejazi teaches that silica and glass are known porous conductive heating materials, and this involves substituting alternative porous conductive materials for others to yield predictable results. The Examiner notes that with one layer being glass and one being silica, both layers comprise silica and would thus comprise the same base material.
Regarding claim 3, Macko teaches that the conductive bead layer is a planar heating layer for heating the conductive beads stacked on one surface of the porous wick by electricity delivered from the terminal part ([0034-0035]; Annotated Fig. 1).
Regarding claim 4, Macko teaches that the conductive beads are selected from the group consisting of conductive metal beads ([0030]), beads having a surface coated with a conductive material ([0031]), and combinations thereof.
Regarding claim 5, Macko teaches that the conductive beads have an average diameter of 50 to 200 um ([0037] teaches a diameter of less than about 0.25mm (250um). The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Regarding claim 6, Macko teaches that the conductive bead layer size is within the millimeter range ([0037]).
Macko does not explicitly teach a thickness of the conductive bead layer.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to optimize the thickness of the conductive bead layer, which may include the range of 0.1 to 1.5 mm, because it would be obvious to one of ordinary skill that thickness is a result effective variable, as Fourier’s law states that thickness affects the conduction, one with ordinary skill in the art would be motivated to optimize the thickness in order to optimize heating of a substrate, and because 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).
Regarding claim 7, Macko does not explicitly teach a ratio of the average thickness of the porous wick to the conductive bead layer.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to optimize the ratio of the thickness of the wick to the bead layer, which may include the range 0.1 to 5, because it would be obvious to one of ordinary skill that thickness is a result effective variable, as Fourier’s law states that thickness affects the conduction, one with ordinary skill in the art would be motivated to optimize the thicknesses in order to optimize heating of a substrate, and because 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).
Regarding claim 9, Macko teaches that the terminal part 99 comprises a first terminal and a second terminal respectively located separately at both ends of the conductive bead layer (Figs. 2-5; [0034-0035]).
Regarding claim 15, Hejazi teaches that the porous beads comprise glass.
Hejazi, directed to an aerosol delivery device (100; [0038]) comprising a heating element (heater 134 and fluid transport element 136; Fig. 1; [0041], [0049]) for generating an aerosol comprising a porous wick (fluid transport element 136; [0041]) and a conductive layer (heater 134; [0042]), teaches that the porous wick beads may be glass ([0041]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Macko by making the porous beads of glass as taught by Hejazi because both Macko and Hejazi are directed to aerosol delivery devices comprising porous wicks, Hejazi teaches that glass is a known alternative porous wick material, and this involves substituting one alternative porous wick material for another to yield predictable results.
The Examiner notes that Davis similarly teaches that a porous wick may comprise glass beads ([0070], [0114]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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