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
The amendment filed 12/31/2025 has been entered. Claims 1 and 4-20 remain pending in the application. Applicant’s amendments to the claims have overcome the 112(b) rejection and double patenting rejections previously set forth in the Non-Final Office Action mailed 08/05/2025.
Information Disclosure Statement
The information disclosure statements (IDS) dated 08/20/2025, 09/03/2025, and 11/19/2025 have been received and considered.
Response to Arguments
Applicant's arguments filed 12/31/2025 (“Remarks”) have been fully considered but they are not persuasive.
The nonstatutory double patenting rejections have been withdrawn in light of the amendments to the claims. The 112(b) rejection of claim 18 has been withdrawn in light of the amendment to the claim clarifying the location of the chamfer.
Regarding the argument that Hazani’s electrical contacts (fig. 4, 132) are not part of the exterior surface of the capsule, the examiner has carefully considered but respectfully disagrees. Hazani’s electrical contacts are made through openings in the wall of the support so that the assembly of the electrical contacts 132 through the outer wall of support 122 with cartridge contacts 134 makes them part of the exterior surface. Please see the clarified rejection below. To overcome the current rejection, it is suggested to consider amending the limitation to recite that the electrical contacts are in direct connection with (or are integral with) the conductive component and are positioned on the exterior surface of the capsule, as shown in applicant’s fig. 35 for example, (1242, 1246 [0220]). Examiner notes that Hazani’s electrical contacts which are in direct connection with the conductive component (132) are not positioned on the exterior surface of the capsule; the indirectly connected electrical contacts 134 are positioned on the exterior surface of the capsule. Further search and consideration would be required for such a configuration.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11, 15-16, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hazani et al (US 2022/0175036 A1), hereafter Hazani.
Regarding Claim 1, Hazani discloses a capsule for an aerosol-generating device (fig. 4, cartridge internal compartment 108 [0183]), comprising: a housing (fig. 4, 102 [0183]) containing an aerosol-forming substrate (fig. 4, liquid container 162 [214]); and a conductive component (fig. 4, heater 120 [0183]) including a first end section (fig. 7, left side electrical contact 132 of heater 120 [0285] communicating with matching cartridge electrical contacts 134, fig. 14A [0294]), an intermediate section (fig. 7, heat conductive coil 126 [0285]), and a second end section (fig. 7, right side electrical contact 132 of heater 120 [0285] communicating with matching cartridge electrical contacts 134, fig. 14A [0294]), the intermediate section configured to heat the aerosol- forming substrate (fig. 4, 120 [0192]), the first end section and the second end section each having at least one surface discontinuity (fig. 7, left and right electrical contacts 132 each have a circular opening in the center) configured to enhance an electrical connection therewith (figs. 11A-11B, the circular holes through 132 make electrical contact with resistivity measurement contacts 136, which enhances the electrical connection with the device to provide feedback on the temperature of the heater [0295]), the first end section and the second end section are in a form of electrical contact pads (fig. 4, left and right 132 are electrical contacts [0285]) that are part of an exterior surface of the capsule ([0294] electrical contacts 132 pass through support 122 to achieve electrical contact with 134, best seen in fig. 14A, and thus are part of an exterior surface of the capsule since the components are assembled together).
Regarding Claim 4, Hazani discloses a capsule of claim 1, wherein the first end section and the second end section each include a planar region surrounding the at least one surface discontinuity (fig. 7, each of the areas surrounding the holes in 132 are flat).
Regarding Claim 5, Hazani discloses a capsule of claim 1, wherein the first end section and the second end section are formed of stainless steel ([0273] heater 120 is made from stainless steel).
Regarding Claim 6, Hazani discloses a capsule of claim 1, wherein the at least one surface discontinuity includes one or more structurally-vulnerable portions (see annotated fig. 7 and fig. 10, the contact portions 132 are bent up [0285]) configured to serve as focused points of contact during an establishment of the electrical connection (fig. 11A, bending 132 at the indicated portion allows for electrical contact with 136 [0294-0295]).
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Regarding Claim 7, Hazani discloses a capsule of claim 6, wherein the one or more structurally-vulnerable portions are configured to physically yield during the establishment of the electrical connection (figs. 7 and 10, the structurally vulnerable portions yield as they are bent to be installed into electrical connection [00285] and [0294]).
Regarding Claim 8, Hazani discloses a capsule of claim 1, wherein the at least one surface discontinuity includes one or more edges (see annotated figure).
Regarding Claim 9, Hazani discloses a capsule of claim 1, wherein the at least one surface discontinuity includes a rim (see annotated figure).
Regarding Claim 10, Hazani discloses a capsule of claim 1, wherein the at least one surface discontinuity is a machined portion of the first end section and the second end section (fig. 7, two ends 132 each having a circular hole in the center) that is configured to receive an electric current ([0294]). The claimed phrase “machined portion” is being treated as a product by process limitation; that is, the discontinuity is made by a machining process to form the discontinuity. As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102 rejection may be made and the burden is shifted to the applicant to show an unobvious difference. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process. In re Thorpe, 777 F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985).
Thus, even though Hazani uses an undisclosed process to form the discontinuity in the electrical contacts, it appears that the end product would be the same or similar as that claimed; especially since both the applicant’s product and the prior art product results in a discontinuity in the electrical contact area of the heating element. Applicant is reminded that Claim 10 is not directed toward a method of manufacturing.
Regarding Claim 11, Hazani discloses a capsule of claim 1, wherein the at least one surface discontinuity is an opening in a surface of each of the first end section and the second end section (fig. 7, the discontinuity is an opening through the top and bottom surfaces of the first end section and second end sections 132).
Regarding Claim 15, Hazani discloses a capsule of claim 11, wherein the opening is a through hole in each of the first end section and the second end section (fig. 7, the opening is a through hole).
Regarding Claim 16, Hazani discloses a capsule of claim 11, wherein the opening has a shape of a circle (fig. 7, the opening is circular).
Regarding Claim 19, Hazani discloses a capsule of claim 1, wherein the aerosol-forming substrate includes a plant material ([0227] the device may deliver tobacco or cannabis products, which are both plant materials).
Regarding Claim 20, Hazani discloses a capsule of claim 19, wherein the plant material includes tobacco ([0227] the plant material delivered can be nicotine from tobacco).
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.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hazani in view of Hermiz et al. (US 2021/0106055 A1), hereafter Hermiz.
Regarding Claim 12, Hazani discloses a capsule of claim 11, but is silent on wherein the opening is a recess (examiner’s note: a “recess” is interpreted according to its dictionary definition of a space set back from the rest of a wall).
Hermiz teaches an electrical contact for a heating element of an electronic smoking device (fig. 15, smoking device 16 with heating elements 136, 136 having terminals 168 for electrical contact with a power source [0054]) which come into electrical contacts having a recess (fig. 14, dimples 198 extend proximally to contact terminals 168 [0060]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute the circular through holes of Hazani’s heating element electrical contacts (fig. 7, 132) for the dimples taught by Hermiz, in order to have a recess in the electrical contact area, since Hermiz demonstrates that a recess is a known means of creating an electrical connection between components, and the contact with a recess would predictably still result in an electrical connection in Hazani’s device.
Regarding Claim 13, the modified Hazani discloses a capsule of claim 12, wherein each of the first end section and the second end section has a corresponding protuberance on a side opposite from the recess (as modified by Hermiz above, each circular through hole of Hazani’s electrical contact 132 is replaced by a dimple; one of ordinary skill in the art would understand based on Hermiz’s disclosure that a dimple is a recessed portion on one surface and a protuberance on the opposing surface; Hermiz fig. 14, dimple 198 and [0060]).
Regarding Claim 14, the modified Hazani discloses a capsule of claim 12, wherein the recess is a dimple (as modified in claim 12 by Hermiz fig. 14 dimple 198).
Claim 17 is rejected under 35 U.S.C. 103 as unpatentable over Hazani.
Regarding Claim 17, Hazani discloses a capsule of claim 16, but is silent on wherein the circle has a diameter between 0.3 mm to 0.5 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the circular opening of Hazani to have a diameter between 0.3mm-0.5mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the circular discontinuity of the modified Hazani would still be able to form an electrical connection with an appropriately sized mating electrical contact. Further, applicant places no criticality on the range claimed, indicating simply that the dimensions of the circular opening of the discontinuity are 0.3mm to 0.5mm (specification par. [0286]).
Claim 18 is rejected under 35 U.S.C. 103 as unpatentable over Hazani in view of Atkins et al. (US 11253001 B2), hereafter Atkins.
Regarding Claim 18, Hazani discloses a capsule of claim 1, but is silent on wherein the at least one surface discontinuity is a protrusion with a chamfer on a surface of each of the first end section and the second end section.
Atkins teaches an electrical contact in a vaporizer device (fig. 47D, 125A, 125B, col. 28 lines 50-52) in the form of a protrusion with a chamfer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Hazani’s electrical contact discontinuity (being a circular through hole in fig. 7, 132) for Atkins’ chamfer electrical contact, since Atkins demonstrates that a chamfer is a known means of creating an electrical connection between components, and the contact with a raised chamfer would predictably still result in an electrical connection in Hazani’s device.
Conclusion
THIS ACTION IS MADE FINAL. 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 SARA K. TOICH whose telephone number is (703)756-1450. The examiner can normally be reached M-Th 7:30 am - 4:30 pm, every other F 7:30-3:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy S. Lee can be reached at (571) 270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA K TOICH/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785