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 .
The status of the 07/21/2026 claims, is as follows: Claims 1, 14, and 19-20 have been amended; Claim 13 has been canceled; Claims 1-12, and 14-20 are pending.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 10-12, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gill (US 20170156403) in view of Mironov’452 (US 20170105452) and Benson (US 20140251321)
Regarding Claim 1, Gill discloses a system (inhale 10) comprising:
a cartridge (capsule 26) for use with an apparatus (inhaler 10 of fig. 1 that excludes the capsule 26) configured to heat smokable material and thereby volatilize at least one component of the smokable material (it is noted “for use with an apparatus configured to heat smokable material and thereby volatilize at least one component of the smokable material” is a statement of intended use), the cartridge (capsule 26) comprising:
a container (capsule 26; fig. 3) that defines a cavity (para. 0041), wherein the container defines an opening (opening 36, para. 0039; fig. 3) into the cavity;
smokable material (flavour-release medium 40) disposed in the cavity (para. 0041), wherein the smokable material (medium 40) comprises tobacco (tobacco) and one or more humectants (propylene glycol) (para. 0016) (according to published specification of the instant application, para. 0047, “humectants” comprises glycerol or propylene glycol. Therefore, propylene glycol is one of humectants); and
heatable heater material (induction heatable elements 42) that is configured to, in use, be heated by penetration of a varying magnetic field (para. 0044-0045, it is noted the coil 52 generates magnetic field that causes the heatable element 42 to heat up, thus heating the medium 40 to generate smoke) and to thereby heat the smokable material (flavour-release medium 40) (para. 0044-0045) and volatilize at least one component thereof (tobacco) (para. 0041), wherein the heatable heater material (induction heatable elements 42) is disposed in the smokable material in the cavity (“induction heatable elements 42 contact at least some of the flavour-release medium 40”, para. 0044; fig. 3), wherein the container (capsule 26) has a plurality of apertures extending therethrough (holes in the lid of capsule 26) (para. 0056, 0050, and 0040, 0015, it is noted the embodiment is relied upon is only base of the shell 28 is air permeable and the lid is air permeable, and the sidewall is not air permeable, para. 0056. According to attached Webster, “aperture” is interpreted to mean hole. Because the lid is air permeable, it has holes extend through the shell of the capsule to allow air through),
the apparatus (inhaler 10 of fig. 1 that excludes the capsule 26) configured to heat the smokable material of the cartridge and volatilize at least one component of the smokable material (para. 0045), the apparatus comprising:
an interface (chamber 24) configured to cooperate with the cartridge (capsule 26) (“housing 12 includes a chamber 24 into which a capsule 26 can be removably inserted”, para. 0038),
a magnetic field generator (induction heating arrangement 50) comprising a coil configured to generate a magnetic field (para. 0045), and
wherein the system (inhale 10) comprise a mouthpiece (mouthpiece 18; fig. 1).
Gill does not disclose:
the magnetic field generator comprising a plurality of coils configured to generate the varying magnetic field, wherein the plurality of coils provides progressive heating of the smokable material, and
wherein the mouthpiece is impregnated with a flavorant.
However, Mironov’452 discloses aerosol-generating system 100 (title) comprising magnetic field generator (plurality of inductor coils 110) comprising a plurality of coils (plurality of inductor coils 110) configured to generate varying magnetic field (para. 0007 and 0033), wherein the plurality of coils (plurality of inductor coils 110) provides progressive heating of the smokable material (aerosol-forming substrate) (abstract and para. 0053 and 0013. It is noted according to published specification of the instant application, para. 0097-0098, the plurality of coils could be operated to provide progressive heating of the smokeable material in a cartridge. This is accomplished by having the heating element 15 comprising discontinuities or holes therein. In the presence of magnetic field generated by the plurality of coils, the area of the heating element 15 with holes/discontinuities is heated to lesser extent compared to the area without holes/discontinuities. This helps progressive heating of the smokable material. The limitation “the plurality of coils provides progressive heating of the smokable material.” is functional limitations. According to MPEP 2114, when the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does.", and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. In this case, the Mironov’452 discloses the plurality of inductor coils 110 configured to generate varying magnetic field, wherein plurality of inductor coils 110 provides progressive heating of the aerosol-forming substrate because the coils 110 generate magnetic field and the susceptor element 210 has an open mesh structure that is fluid permeable (para. 0053). Therefore, the susceptor element 210 having the open mesh structure is capable of providing progressive heating of the aerosol-forming substrate in the presence of the magnetic field generated by coils 110).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coil of Gill to comprises the plurality of coils configured to generate varying magnetic field as taught by Mironov’452, in order to generate strong magnetic field to heat the heater material, thus heat the desired amount of aerosol-generating material according to desired smoking application. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the heatable heater material (i.e. induction heatable elements 42 of Gill) with the susceptor having open mesh structure as taught by Mironov’452, because it is conventionally known to have the heatable heater material that is air permeable to allow aerosol to pass through and is heated in the presence of magnetic field to heat the aerosol-generating substrate. The modification would result in the plurality of coils provides progressive heating of the smokeable material due to holes in the heatable heater material (i.e. open mesh structure of Mironov’452).
The modification does not disclose the mouthpiece is impregnated with a flavorant.
However, Benson discloses an inhaler apparatus 10 comprises a mouthpiece (mouthpiece 36) is impregnated with a flavorant (second substance 52) (para. 0037).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mouthpiece of Gill in view of Mironov’452 to be impregnated with the flavorant (i.e. second substance of Benson) as taught by Benson, in order to introduce pleasing scent/aroma and flavor of the second substance and neutralize the scent and flavor of the first substance held in the container. Doing so would allow the user to combine more than one flavoring agents to suit the user’s need, thereby enhance the user’s experience of the inhaler.
Regarding Claim 2, Gill discloses the system, wherein the container (capsule 26) has a circular cross- section (para. 0039).
Regarding Claim 3, Mironov’452 discloses a heatable heater material (susceptor) comprises an electrically-conductive material (aluminum) (para. 0012).
Regarding Claim 4, Mironov’452 discloses a heatable heater material (susceptor element) comprises an electrically-conductive material including a metal (aluminum) (para. 0012).
Regarding Claim 5, Mironov’452 discloses a heatable heater material (susceptor element) comprises an electrically-conductive material including a metal (aluminum) (para. 0012).
Regarding Claim 6, Gill discloses the system, wherein the cartridge (capsule 26), wherein the container (capsule 26) defines an air flow inlet (holes in the base of the capsule 26) extending therethrough (“ambient air enters the shell 28 through the base 30”, para. 0050, also para. 0056), the air flow inlet configured to admit air into the cavity from an exterior of the container (it is noted the base 30 is air permeable, therefore the base of the capsule 26 defines the air flow inlet to let air through).
Regarding Claim 7, Gill discloses the system, wherein the cartridge includes a temperature detector (temperature sensor 44) configured to detect a temperature of the cartridge (capsule 26) (“temperature sensor 44 measures the temperature inside the shell 28”, para. 0047).
Regarding Claim 10, Gill discloses the system, wherein the container is made of a material that is impermeable to air (sidewall of the capsule 26) and has the plurality of apertures extending therethrough (holes in the lid of the capsule 26) (according to published specification of the instant application, para. 0059, “in some embodiments, the container 10 may be made of a material that is impermeable to air and have one or more apertures extending therethrough for admitting air into the cavity 14 from the exterior of the container 10.” It is examiner’s position that as long as some part of the container is made of material that is impermeable to air and some other part of the container have one or more holes extending through the container meet the claim limitation. In this case, Gill discloses in the embodiment in which the lid of the capsule is air permeable and the base of the capsule is air permeable, and the side wall is not air permeable, para. 0056 and 0040).
Regarding Claim 11, the modification discloses substantially all of the claimed features as set forth above, except the cavity comprises up to 1 gram of the smokable material.
However, it would have been obvious to one having ordinary skill in the art at the
time the invention was made to modify the cavity of the capsule of Gill to comprise up to 1 gram of the smokable material, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The motivation to ensure there is enough the aerosol substrate in the capsule to enable the generation of aerosol vapor to fit desired user’s preference (para. 0041 of Gill).
Regarding Claim 12, Mironov’452 discloses the heatable heater material (susceptor element 210) comprises discontinuities or holes therein (open mesh structure) (para. 0053).
Regarding Claim 16, Gill discloses the system (inhaler 10; fig. 1), wherein the apparatus (fig. 1 excludes the capsule) defines at least part of a passageway (conduit 15; fig. 1) configured to permit volatilized material (heated air or vapour) to pass from the cavity of the container (capsule 26) to an exterior of the apparatus in use (consumption by the user) (para. 0040).
Regarding Claim 17, Gill discloses the system (inhaler 10; fig. 1), wherein the interface (chamber 24) comprises a surface (“a chamber in which the capsule is removably disposed”, para. 0025) and wherein the interface is configured for mechanical mating with the cartridge (para. 0038) (it is noted according to attached Webster, “mechanical” is interpreted to mean physical. Because the cartridge is disposed in the chamber 24, the cartridge is in physical contact with the chamber 24).
Regarding Claim 18, Gill discloses the system (inhaler 10; fig. 1), wherein the interface (chamber 24) defines a recess (space of the chamber into which the capsule is inserted; fig. 1) configured to receive at least a portion of the cartridge (“a chamber 24 into which a capsule 26 can be removably inserted”, para. 0038).
Regarding Claim 19, the modification discloses the system (inhaler 10; fig. 1 of Gill), wherein the recess (space of the chamber into which the capsule is inserted; fig. 1 of Gill) and the plurality of coils (coils 52 of Mironov’452) are relatively positioned so that a varying magnetic field (magnetic field) produced by the plurality of coils in use penetrates the recess at a location where the heatable heater material is located (para. 0045 of Gill, it is noted the magnetic field penetrates the recess at the location to heat the heatable elements 42 in the capsule disposed within the chamber 24, thus heat the medium 40).
Claims 8-9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Gill (US 20170156403), Mironov’452 (US 20170105452), and Benson (US 20140251321) as applied to claim 1, further in view of Mironov’330 (US 20170079330)
Regarding Claim 8, the modification discloses substantially all of the claimed features as set forth above, except wherein the container comprises a liner having an aperture extending therethrough.
However, Mironov’330 discloses a container (cartridge 200) comprises a liner (susceptor element 210; fig. 2) having an aperture (mesh) extending therethrough (para. 0063).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Gill to include the liner having the aperture extending therethrough (i.e. modify the lid of the capsule 26 of Gill to include the liner) as taught by Mironov’330, in order to heat the aerosol material in the capsule from the top using the liner as one of the heating sources because the liner would be heated by the magnetic field induced by the coil, so that the flavor medium would be heated up quickly because it would be heated by multiple heating sources (i.e. liner mounted to the lid of the capsule of Mironov’330 and induction heatable elements 42 disposed in the capsule of Gill).
Regarding Claim 9, the modification discloses substantially all of the claimed features as set forth above, except the container comprises a liner made of electrically- conductive material.
However, Mironov’330 discloses a container (cartridge 200) comprises a liner (susceptor element 210; fig. 2) made of electrically- conductive material (aluminum) (para. 0063 and 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Gill to include the liner made of electrically- conductive material (i.e. modify the lid of the capsule 26 of Gill to include the liner) as taught by Mironov’330, in order to heat the aerosol material in the capsule from the top using the liner as one of the heating sources because the liner would be heated by the magnetic field induced by the coil, so that the flavor medium would be heated up quickly because it would be heated by multiple heating sources (i.e. liner of Mironov’330 and induction heatable elements 42 of Gill).
Regarding Claim 14, the modification discloses substantially all of the claimed features as set forth above. Gill discloses the system (inhaler 10; fig. 1), wherein the apparatus (all shown in fig. 1 except the capsule 26) further comprises a body (housing 12; fig. 1), wherein the body (housing 12) includes the interface (chamber 24) (para. 0038).
The modification does not disclose the mouthpiece is movable relative to the body.
However, Mironov’330 discloses a mouthpiece (mouthpiece portion 120) is movable relative to the body (main housing 101) (“mouthpiece portion is connected to the main housing 101 by a hinged connection in this example but any kind of connection may be used, such as a snap fitting or a screw fitting”, para. 0061. It is noted the mouthpiece portion 120 can be disconnected from the main housing 101, therefore the mouthpiece portion 120 is movable relative to the housing 101).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mouthpiece of Gill to be movable relative to the body as taught by Mironov’330, in order to allow the user to disconnect the mouthpiece from the body for cleaning.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Gill (US 20170156403), Mironov’452 (US 20170105452), Benson (US 20140251321), and Mironov’330 (US 20170079330) as applied to claim 14 above, further in view of Mironov’215 (US 20160324215)
Regarding Claim 15, the modification discloses substantially all of the claimed features as set forth above, except the apparatus comprises a puncture device, wherein the puncture device is configured to puncture or penetrate the cartridge as the mouthpiece is moved relative to the body when the cartridge cooperates with the interface.
However, Gill further discloses in another embodiment shown in fig. 5, a puncture device (“modified temperature sensor 62 having a hollow passage 46 through which heated air or vapour can flow out of the shell 28 and along the conduit 15 leading to the mouthpiece 18”, para. 0054), wherein the puncture device is configured to puncture or penetrate the cartridge when the cartridge (capsule 26) cooperates with the interface (chamber 24).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the temperature sensor 44 of Gill to include the hollow passage through which heated vapour can flow out of the shell into the mouthpiece, in order to allow the capsule having non-permeable lid to be used in the apparatus by piercing the lid with the modified temperature sensor to allow heated vapour to exit the capsule, flow through the hollow passage and into the mouthpiece.
The modification does not disclose the puncture device comprising a first tube and a second tube, is configured to puncture or penetrate the cartridge as the mouthpiece is moved relative to the body.
However, Mironov’215 discloses a puncture device (piercing portion 314) comprising a first tube (inlet conduit 316) and a second tube (outlet conduit 318) (para. 0080; figs. 3-4), is configured to puncture or penetrate a seal of the cartridge (lid of capsule 100) as the mouthpiece is moved relative to the body (housing 302 of the aerosol-generating device 300) (para. 0071).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the puncture device of Gill (i.e. modified temperature sensor of Gill) to be part of the mouthpiece such that when the mouthpiece is attached to the housing of the apparatus, the puncture device punctures the capsule, such that as the user draws on the mouthpiece, air enter through the inlet conduit 316, into the capsule, and exit the capsule through the outlet conduit 318 in the mouthpiece. Doing so would allow the capsule having the non air-permeable lid to be used in the apparatus, and the user simply needs to attach the mouthpiece to the housing of the apparatus, the puncture device of the mouthpiece would pierce the lid of the capsule to allow the heated vapour to exit the capsule through the hollow passages and into the mouth piece, thereby simplify the design of the apparatus.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Gill (US 20170156403), Mironov’452 (US 20170105452), and Benson (US 20140251321) as applied to claim 1, further in view of Cohen (US 20110036346)
Regarding Claim 20, the modification discloses substantially all of the claimed features as set forth above, except the apparatus comprises a temperature sensor for sensing a temperature of the recess.
However, Cohen discloses an apparatus (inhalation device; fig. 1) comprises a temperature sensor (sensor) for sensing a temperature of the recess (atomization chamber 104; fig. 8) (para. 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the recess of Gill (i.e. chamber 24) to include the temperature sensor for sensing temperature of the chamber as taught by Cohen, in order to control the heating coil based on the sensed temperature of the chamber such that optimum temperature is obtained (para. 0041 of Cohen).
Response to Amendment
With respect to claim objections: since amendments made to the claims, therefore claim objections are withdrawn.
Response to Argument
Applicant's arguments filed on 07/21/2026 have been fully considered but they are respectfully considered moot in view of new ground of rejections.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on (571)270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/ Supervisory Patent Examiner, Art Unit 3761
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