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 pre-appeal brief filed 05/26/2026.
Claims 1-9 and 13-16 are pending and are subject to this Office Action.
Claims 10-12 are previously cancelled.
Response to Arguments
Applicant’s arguments, see pre-appeal brief pages 2-5, filed 05/26/2026, with respect to the 103 rejection of claim 1 have been fully considered and they are persuasive. The Applicant argues that prior art of record Twelftree does not appropriately teach "at least a portion of the laser being reflected to form a reflected laser" and "controlling an area irradiated with the laser based on characteristics of the reflected laser" as required by the claim. Upon further consideration, the Examiner agrees that Twelftree does not teach these limitations. Therefore, the rejection is withdrawn. However, upon further consideration, a new ground of rejection is made over a new interpretation Spencer (US 20190133188 A1).
Claim Interpretation
Regarding claim 6, the claim recites the limitation “the area irradiated with the laser changes”. According to the linear movement of the aerosol-generating article, the Examiner interprets the change in area to be a change in the section of the aerosol-generating article to which the laser points, and not any other area changes (such as a change in area size).
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 1-7, 9 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Spencer (US 20190133188 A1) in view of Schneider (US 20190029318 A1).
Regarding claim 1, Spencer teaches an aerosol generation device comprising:
A housing (wall 113; [0007] [0050]) configured such that an aerosol-generating article (smokable material 112, 212, 312, 412) is insertable into a heating space therein ([0007], [0050]);
a laser radiation part (irradiative light source 122, 222, 322, 422; [0052], [0058], [0064], [0069]) configured to heat an aerosol-generating article to generate an aerosol, at least a portion of the laser being reflected to form a reflected laser (laser is reflected from beam deflector 428 to form a reflected laser; [0069]) by radiating laser to the aerosol-generating article (article 110, 210, 310, 410 with smokable material 112, 212, 312, 412; [0051], [0056], [0063], [0068]); and
a controller (control circuitry 232, 234, 236; [0012], [0057]) configured to move at least one of the aerosol-generating article and the laser radiation part during heating of the aerosol-generating article ([0048]),
wherein the controller is further configured to control a degree of heating of the aerosol-generating article based on a size of an area irradiated with the laser ([0014], [0054]) based on characteristics of the reflected laser and a size of the irradiated area (beam deflector 428 may be used to focus the light to a particular area and area size by adjusting a position and/or angle of the reflected laser (i.e., a characteristic of the reflected laser); [0069-0070], [0088-0089]).
Spencer does not explicitly teach the degree of heating being independent of an irradiation intensity according to a number of lasers.
Schneider, directed to an aerosol generation device (vaporizing unit; Fig. 1A; [0099]) comprising: a housing (main housing 12; [0103]) configured such that an aerosol-generating article is insertable into a heating space therein (reaction chamber 16; [0103]) and a laser radiation part (laser diode 24; [0109]) configured to heat an aerosol generating article to generate an aerosol by radiating laser to the aerosol generating article ([0110]), teaches that a degree of heating of the aerosol-generating article may be controlled based on the size of an area irradiated with the laser ([0126]). Schneider further teaches that the size of an area irradiated is determined via a focusing lens (beam deflector), such that the degree of heating is independent of an irradiation intensity according to a number of lasers ([0126]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by using the beam deflector 428 to control a degree of heating of the aerosol-generating article by controlling the size of an area irradiated by the laser to control the heating of the aerosol-generating article without using a number of lasers as taught by Schneider because both Spencer and Schneider are directed to aerosol generation devices using lasers to generate aerosol, Schneider teaches an alternate configuration in which only one laser may be used to control intensity and heating of the laser, one having ordinary skill in the art would reasonably expect that having fewer lasers would be beneficial for manufacturing and maintenance of the device, and this involves substituting one alternative laser heating configuration for another to yield predictable results.
Regarding claim 2, Spencer teaches that the aerosol-generating article includes a cylindrical aerosol-forming substrate (article 110 has a cylindrical layer of smokable material 112; Fig. 1; [0050]).
Regarding claim 3, Spencer teaches that the aerosol generation device further comprises a rotary holder configured to rotate the aerosol-forming substrate, wherein an area irradiated with the laser changes due to rotation of the aerosol-forming substrate ([0065]).
Regarding claim 4, Spencer does not explicitly teach a thickness of the aerosol-forming substrate.
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 aerosol-forming substrate, including to 2 mm or less, because one having ordinary skill in the art would recognize that thickness is a result effective variable that would affect heating time (Fourier’s law of heat conduction teaches that a thicker material requires a longer heating time) and thus would be motivated to optimize the thickness to reduce heating time, 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 5, Spencer teaches that the aerosol-generating article includes a flat-type aerosol-forming substrate (article 110 has a flat layer of smokable material 112; Fig. 1; [0050]).
Regarding claim 6, Spencer teaches that the aerosol-generating article linearly moves in a longitudinal direction or a direction perpendicular to the longitudinal direction; and an area irradiated with the laser changes due to a linear movement of the aerosol- generating article (Fig. 3; [0065]).
Regarding claim 7, Spencer teaches that the area irradiated with the laser changes due to angle adjustment of the laser radiation part ([0066]).
Regarding claim 9, Spencer teaches that the aerosol-generation device further comprises a laser reflection part (beam deflector 428; Fig. 4; [0070]) disposed below the aerosol-generating article and configured to reflect the radiated laser toward the aerosol-generating article ([0070]); and a mouthpiece part disposed at a top portion of the aerosol-generating article ([0046], [0053]).
Regarding claim 13, Spencer teaches that the aerosol-generation device further comprises a battery (power source 230; [0057]) configured to supply power to the laser radiation part, wherein the controller (light source control circuitry 236; [0057], [0061]) is further configured to, in response to detection of a user’s puff, control the supply of power to the laser radiation part ([0083]).
Regarding claim 14, Schneider teaches that the size of the area irradiated with the laser may be increased to decrease the degree of heating or decreased to increase the degree of heating ([0126]). Schneider further teaches that the degree of heating may be increased or decreased to reach a reference value (vaporization temperature) ([0137]). Thus, it would be obvious to one having ordinary skill in the art that the controller would be configured to increase the size of the area irradiated with the laser when the degree of heating is equal to or greater than a reference value; and decrease the size of the area irradiated with the laser when the degree of heating is less than the reference value such as to maintain the heating reference value.
Regarding claim 15, Spencer teaches that the aerosol-generating article includes a cylindrical aerosol-forming substrate (Fig. 1; [0050]), wherein the aerosol generation device further comprises a rotary holder (moving arrangement 350; [0065]) configured to rotate the aerosol-forming substrate ([0065]), wherein the controller is further configured to move at least one of the aerosol-generating article and the laser radiation part while rotating the rotary holder during heating of the aerosol-generating article ([0066] teaches that the laser radiation part may me moved while the rotary holder rotates).
Spencer does not explicitly teach that the laser radiation part moves along a longitudinal direction.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by moving the radiation part in a longitudinal directed because one having ordinary skill in the art would recognize that the laser may move in two primary directions, longitudinally or axially, Spencer generally teaches that the laser may be moved to adjust the radiation area, and this involves choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Regarding claim 16, Spencer teaches a mouthpiece part disposed at a top portion of the aerosol-generating article and in fluid communication with an airflow path ([0046], [0053]), wherein the laser radiation part is disposed to be separated from the aerosol-generating article by the airflow path ([0016], [0053]; Figs. 2-4); and a laser reflection part (beam deflector 428; [0069-0070]) disposed below the aerosol-generating article and below the laser radiation part (Fig. 4), the laser reflection part being configured to reflect the radiated laser toward the aerosol-generating article in an upward direction along the airflow path (Fig. 4; [0070]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Spencer and Schneider as applied to claim 1 above, and further in view of Schmidlin et al. (WO 2020002006 A1).
Regarding claim 8, Spencer teaches that the aerosol-generation device further comprises a laser guide part (beam director; [0008]) configured to guide the radiated laser to the aerosol-generating article.
Spencer does not explicitly teach that the laser guide part is tubular.
Schmidlin, directed to an aerosol generation device (electronic cigarette 2) comprising: a laser radiation part (laser 14; page 7, lines 23-24) configured to heat an aerosol-generating article (absorber 10 receiving vaporizable liquid) to generate an aerosol by radiating laser to the aerosol-generating article (page 11, lines 1-5), teaches that a laser guide part may be tubular (page 14, lines 22-24; Fig. 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by making the laser guide part tubular as taught by Schmidlin because both Spencer and Schmidlin are directed to aerosol generation devices using laser radiation, Spencer is silent to the shape of the laser guide, and one with ordinary skill would be motivated to look to prior art for a known and suitable laser guide, and this involves applying a known teaching to a similar product to yield predictable result.
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 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/036440 (reference application) in view of Schneider (US 20190029318 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol generation device comprising a laser radiation part configured to heat an aerosol-generating article by radiating laser to generate an aerosol and a controller configured to move at least one of the aerosol generating article and the laser radiation part during heating of the aerosol-generating article.
The claims differ in that conflicting claim 1 does not teach (I) a housing configured such that an aerosol-generating article is insertable into a heating space therein, (II) that the controller is further configured to control a degree of heating of the aerosol-generating article based on a size of an area irradiated with the laser, the degree of heating being independent of an irradiation intensity according to a number of lasers, or (III) controlling an area irradiated with the laser based on characteristics of the laser reflected from the aerosol-generating article.
Regarding (I), Schneider, directed to an aerosol generation device (vaporizing unit; Fig. 1A; [0099]) comprising a laser radiation part (laser diode 24; [0109]) configured to heat an aerosol generating article to generate an aerosol by radiating laser to the aerosol generating article ([0110]), teaches that the device comprises a housing (main housing 12; [0103]) configured such that an aerosol-generating article is insertable into a heating space therein (reaction chamber 16; [0103]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art that the invention of the conflicting claims may further comprise a housing as taught by Schneider because both the conflicting claims and Schneider are directed to aerosol generation device, Schneider teaches that it is known that aerosol generating devices have housings, and this involves applying a known teaching to a similar device to yield predictable results.
Regarding (II), Schneider, directed to an aerosol generation device (vaporizing unit; Fig. 1A; [0099]) comprising a laser radiation part (laser diode 24; [0109]) configured to heat an aerosol generating article to generate an aerosol by radiating laser to the aerosol generating article ([0110]), teaches that a degree of heating of the aerosol-generating article may be controlled based on the size of an area irradiated with the laser ([0126]). Schneider further teaches that the size of an area irradiated is determined via a focusing lens, such that the degree of heating is independent of an irradiation intensity according to a number of lasers ([0126]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the invention of the conflicting claims by using focusing lens to control a degree of heating of the aerosol-generating article by controlling the size of an area irradiated by the laser to control the heating of the aerosol-generating article without using a number of lasers as taught by Schneider because both the conflicting claims and Schneider are directed to aerosol generation devices using lasers to generate aerosol, Schneider teaches an alternate configuration in which the laser may be used to control intensity and heating of the laser, and this involves applying a known teaching to a similar device to yield predictable results.
Regarding (III), conflicting claim 8 teaches controlling an area irradiated with the laser based on characteristics of the laser reflected from the aerosol-generating article.
Therefore, conflicting claims 1 and 8, in view of Schneider, still make obvious all structural components of rejected claim 1. Therefore, all elements of rejected claim 1 are present and obvious over the conflicting claims.
Conclusion
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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