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 .
Response to Amendment
Amendment filed 12/18/2025 has been entered and fully considered. Claims 1 and 3-20 are pending. Claims 2 and 21-25 are cancelled. Claim 1 is amended. No new matter is added.
Response to Arguments
Applicant’s arguments, see REMARKS, filed 12/18/2025, with respect to the rejection(s) of claim(s) 1 under ZINOVIK et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of ZINOVIK et al.
Applicant argues that LEE does not teach the “two sheet-like bodies” construction. LEE describes a heating susceptor that is generally elongated and includes a hollow for accommodating a sensor. Paragraph [0128] of ZINOVIK does not cure the deficiencies of LEE.
Examiner note that the wrong paragraph of ZINOVIK was cited. For this reason, prosecution is being reopened.
Examiner respectfully disagrees that the embodiment shown in figure 5, and described in paragraph [0127], of ZINOVIK does not read onto the claimed invention. Each of the layers of ZINOVIK is “sheet-like” as claimed given that each layer is an elongated flat sheet-like shape. These layers are coupled together (Paragraph [0127]). Even though the claim is directed to two sheet-like structures connected to each other, a three layer structure disclosed by ZINOVIK would still comprise two sheet laminated together by a third structure (e.g., layer 222). Even the embodiment shown in figure 3 of ZINOVIK discloses a two layer structure (Paragraph [0126]).
While ZINOVIK does not describe having a hollow interior for the temperature sensor, LEE does describe having the hollow interior within the heater to house the temperature sensor (Paragraphs [0055], [0056]). The shape of the heater in LEE is not limited to that shown in figure 6, and can have any suitable cross section (Paragraph [0056]). Thus, the shape of the heater disclosed by ZINOVIK is within the scope of LEE. The combination of LEE and ZINOVIK provides a heater having a sheet-like laminated structure for strength purposes (as taught by ZINOVIK) and the ability to directly measure the temperature of the heater (see paragraph [0066] of LEE). The courts have generally held that The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). MPEP 2144. The combined structure of LEE and ZINOVIK provides articulated reasons to one of ordinary skill in the art to make such a combination.
Applicant argues that the rationale for combining references would not result in higher mechanical stability because the cavity in ZINOVIK would remove material and interrupt the continuous layer.
Examiner respectfully disagrees. LEE shows a heater with the hollow therein that has the ability to be inserted into the aerosol generating article. Thus, there is a reasonable expectation of success in having the hollow structure in ZINOVIK as well.
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 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 and 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. (US 2021/0084980) in view of KAUFMAN et al. (US 2017/0119048) and ZINOVIK et al. (US 2022/0030947)
With respect to claim 1, LEE et al. discloses an aerosol generating device (Abstract) comprising a cavity, 120, configured to receive an inhalable material (Figures 3 and 7; Paragraph [0031]); a magnetic field generator configured to generate an alternating (e.g., changing) magnetic field (Paragraphs [0027]-[0035]); a susceptor (Paragraphs [0029], [0030], [0037], [0058]) heated by the varying magnetic field to generate heat to heat the material in the cavity. Within the susceptor is a temperature sensor, 115, configured to sense a temperature of the susceptor (Paragraphs [0053]). The sensor is accommodated in a hollow portion (e.g., accommodating cavity) that implicitly extends in a length direction (Figure 3; Paragraphs [0066]-[0069]).
LEE et al. does not explicitly disclose that the susceptor is penetrated by the varying magnetic field. KAUFMAN et al. discloses an apparatus for heating a smokable material (Abstract). The susceptor is penetrated by the varying magnetic field so that eddy currents are passed through the susceptor causing the susceptor heat up and heat the smokable material (Paragraphs [0052]-[0054]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to penetrate the susceptor of LEE et al. with the varying magnetic field, as taught by KAUFMAN et al., so as to cause heating of the susceptor.
LEE et al. does not explicitly disclose that the susceptor is formed into a sheet shape extending in the axial direction of the cavity, and comprises a first sheet-like body and a second sheet-like body opposite each other in a thickness direction and are connected to each other.
ZINOVIK et al. discloses a heating assembly for an aerosol forming substrate (Abstract). The susceptor assembly comprises a multilayered body comprises first, second and third susceptors, 221, 222 and 223, that are coupled to each other, extend in an axial direction of the cavity (Figure 5). Each susceptor is a sheet-like body (Figures 3, 5 and 6) and they are stacked opposite each other in a thickness direction. Such a configuration provides a highly symmetric layer structure showing essentially no out of plane deformations (Paragraphs [0127] and [0126]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the susceptor of modified LEE et al. as a three layered structure, in the manner taught by ZINOVIK et al. so as to provide a highly symmetric layer structure showing essentially no out of plane deformations.
It is noted that because LEE et al. teaches that the temperature sensor exists inside of a hollow in the susceptor, this hollow would also exist in the structure disclosed by ZINOVIK et al., so that the temperature sensor can be placed as taught.
With respect to claims 12 and 13, ZINOVIK et al. discloses a heating assembly for an aerosol forming substrate (Abstract). The susceptor assembly comprises a multilayered body comprises first, second and third susceptors, 221, 222 and 223, that are coupled to each other, extend in an axial direction of the cavity (Figure 11). Each susceptor is a sheet-like body (Figures 3, 5 and 6) and they are stacked opposite each other in a thickness direction. Such a configuration provides higher mechanical stability (Paragraph [0128]).
The first sheet, 221, has a bottom surface (As seen in figure 5) that faces away from the opposite surface of the second sheet, 223 (as seen in figure 5), in the thickness direction. These surfaces are flat surfaces (Figures 2 and 3).
It is noted that because LEE et al. teaches that the temperature sensor exists inside of a hollow in the susceptor, this hollow would also exist in the structure disclosed by ZINOVIK et al., so that the temperature sensor would necessarily be placed between the two surfaces and within the accommodating cavity therebetween.
With respect to claim 14, the courts have generally held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). MPEP 2113, I and II.
In the instant case, the claimed “formed by folding a sheet-like body around an axis” results in the product claimed in claim 13, which has been rejected by aforementioned cited art (See rejection of claim 13). As such, the resulting product is substantially the same as claimed, and the claim is prima facie obvious even though the prior art product is made by a different process.
With respect to claim 15, ZINOVIK et al. discloses that the first and second susceptors, 2223 and 221 are identical (Paragraph [0127]) and when placed about an axis, would be symmetrical.
With respect to claim 16, the courts have generally held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). MPEP 2113, I and II.
In the instant case, the claimed “prepared by chemical etching” results in the product claimed in claim 13, which has been rejected by aforementioned cited art (See rejection of claim 13). As such, the resulting product is substantially the same as claimed, and the claim is prima facie obvious even though the prior art product is made by a different process.
With respect to claim 17, the claim limitations of “a dent arranged along the axis” is related to the method of folding to arrive at the claimed invention of claim 13 (See instant published paragraphs [0106] and [0107]. The courts have generally held that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). MPEP 2113, I and II.
The resulting product is substantially the same as claimed, and the claim is prima facie obvious even though the prior art product is made by a different process.
With respect to claim 18, ZINOVIK et al. discloses a heating assembly for an aerosol forming substrate (Abstract). The susceptor assembly comprises a multilayered body comprises first, second and third susceptors, 221, 222 and 223, that are coupled to each other, extend in an axial direction of the cavity (Figure 11). Each susceptor is a sheet-like body (Figures 3, 5 and 6) and they are stacked opposite each other in a thickness direction. Such a configuration provides higher mechanical stability (Paragraph [0128]).
The first sheet, 221, has a bottom surface (As seen in figure 5) that faces away from the opposite surface of the second sheet, 223 (as seen in figure 5), in the thickness direction. These surfaces are flat surfaces (Figures 2 and 3).
It is noted that because LEE et al. teaches that the temperature sensor exists inside of a hollow in the susceptor, this hollow would also exist in the structure disclosed by ZINOVIK et al., so that the temperature sensor would necessarily be placed between the two surfaces and within the accommodating cavity therebetween.
______________________________________________________________________
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. (US 2021/0084980) in view of KAUFMAN et al. (US 2017/0119048) and ZINOVIK et al. (US 2022/0030947) as applied to claims 1 and 12-18 above, and further in view of ZINOVIK et al. (US 2022/0030947) as applied to claims 2 and 12-18 above, and further in view of YANG et al. (CN 207544334, machine translation).
With respect to claim 19, modified LEE et al. does not explicitly disclose that the accommodation cavity comprises a groove extending along the inner surface of the first sheet-like part. YANG et al. discloses a heater for electrically heating a cigarette (Abstract; Title). The first and second sheets have grooves on their inner surface, 5 and 6, which form a hollow space to accommodate a thermocouple, 10, (See highlighted text in translation). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide grooves on the inners surfaces of the sheet-like parts of modified LEE et al., as taught by YANG et al., so that the proper space can be provided for insertion of the temperature sensor.
_____________________________________________________________________
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over LEE et al. (US 2021/0084980) in view of KAUFMAN et al. (US 2017/0119048) and ZINOVIK et al. (US 2022/0030947) as applied to claims 1 and 12-18 above, and further in view of HOLOUBEK et al. (US 2018/0049471).
With respect to claim 20, modified LEE et al. does not explicitly disclose that at least one of the sheet like parts have a base part extending outward in a width direction. HOLOUBEK et al. discloses that the heater is anchored so as to be held in a base (Abstract) by having the sheet thereof comprises an outwardly extending lug, 3400, (in the width direction) so as to increase the anchoring effect of the anchor portion of the heater (Paragraphs [0014], [0015], [0079]; Figure 6).
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide laterally extending lugs on the base of the sheets of modified LEE et al., as taught by HOLOUBEK et al. so as to increase the anchoring effect of the heater in a holder.
Allowable Subject Matter
Claims 3-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claim 3, the art (See YANG et al. above) disclose grooves within the sheets to form a space for the heater. However, the art does not disclose the claimed protrusion within the sheets to form this space, per se.
With respect to claim 11, LEE et al. shows that the cavity includes a tapered portion as claimed (See figures 1-4). However, the temperature sensor is not in this area, per se.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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 Tucker can be reached at 571-272-1095. 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.
/ALEX B EFTA/Primary Examiner, Art Unit 1745