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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 April 2026 has been entered.
Claims 16-32 are pending. Claims 29-30 remain withdrawn.
Claims 16-28 and 31-32 are presently examined.
Claim Objections
Claim 31 is objected to because of the following informalities:
Claim 31: “according to claim 22, herein” should be “according to claim 22, wherein”.
Appropriate correction is required.
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.
Claims 16-22, 24-25, 27-28, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20190124988 A1 cited on an IDS) in view of Rojo-Calderon (US 20190053541 A1 cited on an IDS).
Claims 16 and 19-22: Hu teaches an aerosol-generating device (fig. 1 and [18], #100), comprising:
a heating arrangement comprising an induction coil (106), a first contact ([23], pole of #202 which connects to a first end of #106), a second contact point (second end of 106), and a third contact (fig. 1, #105);
and a controller ([23], circuit board), wherein the first contact (pole of 202 at the first end of 106) is arranged contacting a proximal end (first end of 106) of the induction coil (106), wherein the second contact point (second end of 106) is arranged contacting a distal end (second end of 106) of the induction coil, wherein the third contact (fig. 1, #105) is arranged contacting the induction coil between the first contact (pole of 202 at the first end of 106) and the second contact point (second end of 106),
wherein the first contact (pole of 202 at the first end of 106), the second contact point (second end of 106), and the third contact (105) are electrically connected to ([22-23], #105 and #106 electrically connect to #202 to form a circuit) the controller (circuit board),
wherein the controller is configured to control supply of an alternating electrical current ([22], the induction coil uses electrical current to generate an alternating magnetic field, so the electrical current is alternating),
and wherein the first contact (pole of 202 at the first end of 106) is a fixed contact that comprises a first contact member (pole of 202) distinct from the induction coil (106) and is fixed to the proximal end (first end of 106) of the induction coil, the second contact point (bottommost point of 106) is a fixed contact point, and the third contact (fig. 1, #105) is configured as a movable contact [23],
wherein the controller is further configured to control supply of the alternating electrical current ([22], the induction coil uses electrical current to generate an alternating magnetic field, so the electrical current can be alternating) such that portions of the induction coil (106) create alternating magnetic fields [22].
Hu does not explicitly teach that the second contact point is a second contact comprising a second contact member distinct from the induction coil and fixed to the distal end of the induction coil, and that the controller is configured to control supply of an alternating electrical current between only a pair of the first, the second, and the third contacts,
in particular between the first contact and the third contact, or between the second contact and the third contact, or between the first contact and the second contact,
and that the controller is configured to control supply of an alternating electrical current between a first pair of the contracts for a first predetermined time and between a second pair of the contacts for a second predetermined time.
Rojo-Calderon teaches an aerosol-generating device (fig. 1 and [61-64], #1) comprising an induction coil (L), a first coil segment (L1), a second coil segment (L3), and a third coil segment (L2);
a first contact (L11) and a second contact (L32) that are fixed contacts each comprising a respective contact member (connection tap) distinct from the induction coil (L) and fixed to a respective one of a proximal end (bottommost end of L) and a distal end (topmost end of L) of the induction coil;
and a controller, wherein the controller is configured to control supply of an alternating electrical current between two of the coil segments [20-21],
which requires that the controller is configured to control supply of an alternating electrical current between the first coil segment and the third coil segment, or between the second coil segment and the third coil segment, or between the first coil segment and the second coil segment,
wherein the controller is configured to control supply of an alternating electrical current between a first pair of the coil segments for a first predetermined time (predetermined duration) and between a second pair of the coil segments for a second predetermined time (once the second pair is energized, one of ordinary skill would envisage applying a second predetermined time to continue the “sequence of supplying” current), such that the supply of alternating electrical current to each coil segment can be customized in order to yield uniform aerosolization [18].
Moreover, Rojo-Calderon teaches that supply of an alternating electrical current between only a pair of the three coil segments is well within the scope of a device [20] comprising an induction coil and three coil segments, similar to Hu’s device comprising an induction coil and a sliding contact moving between a first, fixed contact and a second, fixed contact point.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Rojo-Calderon’s second contact to Hu’s second contact point and enable Hu’s controller to control supply of an alternating electrical current between only a pair of the first, the second, and the third contacts as taught by Rojo-Calderon, such that the controller is configured to control supply of an alternating electrical current between the first coil segment and the third coil segment, or between the second coil segment and the third coil segment, or between the first coil segment and the second coil segment, or between a first pair of the coil segments for a first predetermined time and between a second pair of the coil segments for a second predetermined time, because doing so would enable customizing electricity delivery along Hu’s coil in order to yield uniform aerosolization and would otherwise fall well within the scope of Hu’s device comprising an induction coil and a sliding contact moving between a first, fixed contact and a second, fixed contact point.
Claim 17: modified Hu teaches the aerosol-generating device according to claim 16, further comprising a cavity (fig. 1 and [18], #102) configured to receive an aerosol-generating article (aerosol generating material) comprising an aerosol-forming substrate, wherein the induction coil (106) of the heating arrangement is arranged at least partly surrounding the cavity (102).
Claim 18: modified Hu teaches the aerosol-generating device according to claim 17, wherein a space of the cavity (fig. 1 and [18], #102) surrounded by a portion of the induction coil (106) between the first contact (pole of 202 at the first end of 106) and the third contact (105) is a first heating zone, wherein a space of the cavity (102) surrounded by a portion of the induction coil (106) between the second contact (Rojo-Calderon’s connection tap at the second end of 106) and the third contact (105) is a second heating zone, and wherein a space of the cavity (102) surrounded by the induction coil (106) between the first contact (pole of 202 at the first end of 106) and the second contact (Rojo-Calderon’s connection tap at the second end of 106) comprises the first heating zone and the second heating zone.
Claim 24: modified Hu teaches the aerosol-generating device according to claim 16, further comprising an actuator (fig. 3 and [23], #1051) configured to enable a user to manually move the movable third contact (105).
Claim 25: modified Hu teaches the aerosol-generating device according to claim 16, wherein the induction coil (fig. 1, #106) is a helical coil and the movable third contact (fig. 1-2, #105) is configured to move axially along the induction coil (106).
Claim 27: modified Hu teaches the aerosol-generating device according to claim 16, wherein the movable third contact (fig. 1 and [18], #105) is configured as a sliding contact ([23], #105 slides).
Claim 28: modified Hu teaches the aerosol-generating device according to claim 16, further comprising a communication interface (fig. 2 and [23], #1051) configured to enable a user to control operation of the controller (moving #1051 changes the heating zones and temperatures which changes electrical delivery by the controller).
Claim 32: modified Hu teaches the aerosol-generating device according to claim 25, wherein the movable third contact (fig. 1, #105) is configured to move axially along the induction coil (106) while the alternating electrical current is being supplied between the movable third contact (106) and the first contact (pole of 202 at the first end of 106).
Claims 23, 26, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (US 20190124988 A1 cited on an IDS) in view of Rojo-Calderon (US 20190053541 A1 cited on an IDS) as applied to claims 16 and 22 in further view of Qiu (WO 2018032667 A1 with reference made to national stage translation EP 3498112 A1).
Claim 23 and 26: modified Hu teaches the aerosol-generating device according to claim 16.
Modified Hu does not explicitly teach a motor configured to move the movable third contact,
or that the controller is further configured to operate movement of the movable third contact.
Qiu teaches an aerosol-generating device (title) comprising a motor (fig. 9 and [60-62], #242) configured to move a movable contact (2442),
wherein a controller (232) is configured to operate movement of the movable contact (2442), such that the movable contact can be moved in a precise and quantitative manner [60].
Qiu’s motor improves the movement of a movable contact and is otherwise agnostic to the contact’s intended use to yield expectation to succeed.
Moreover, adding a motor to move Hu’s movable contact would broadly provide a mechanical means to replace the manual activity of moving the contact with one’s fingers. See MPEP 2144.04(III): In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). The courts have held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.
The instant claims which combine a movable contact with a motor to automate the movable contact are similar to the claims of Venner which combine mold structures with a timer and solenoid to automate a pressure valve system.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s motor to Hu such that the motor is configured to move the movable contact and such that the controller is configured to operate movement of the movable third contact, because doing so would enable the movable contact to be moved in a precise and quantitative manner and would otherwise be automating a manual activity akin to In re Venner.
Claim 31: modified Hu teaches the aerosol-generating device according to claim 22, wherein the third contact (fig. 1 and [23], #105) is configured to move (105 slides) while the alternating electrical current is supplied only between the first contact (pole of 202 at the first end of 106) and the third contact (105), and the third contact (105) is configured to move (105 slides) while the alternating electrical current is supplied only between the second contact (Rojo-Calderon’s L32 added to Hu’s topmost end of 106) and the third contact (105).
Modified Hu does not explicitly teach that the controller is configured to move the third contact.
Qiu teaches an aerosol-generating device (title) comprising a controller (fig. 9 and [60-62], #232) configured to move a movable contact (2442), such that the movable contact can be moved in a precise and quantitative manner [60].
Qiu’s motor improves the movement of a movable contact and is otherwise agnostic to the contact’s intended use to yield expectation to succeed.
Moreover, adding a motor to move Hu’s movable contact would broadly provide a mechanical means to replace the manual activity of moving the contact with one’s fingers. See MPEP 2144.04(III): In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). The courts have held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.
The instant claims which combine a movable contact with a motor to automate the movable contact are similar to the claims of Venner which combine mold structures with a timer and solenoid to automate a pressure valve system.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Qiu’s motor to Hu such that the controller is configured to move the third contact, because doing so would enable the third contact to be moved in a precise and quantitative manner and would otherwise be automating a manual activity akin to In re Venner.
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 16-28 and 31-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 24, 26, and 28-29 of copending Application No. 17/998176 in view of Rojo-Calderon (US 20190053541 A1).
Claims 16 and 19-22: ‘176 recites an aerosol-generating device (C16), comprising:
a heating arrangement comprising a heating coil (heating coil), a first contact (second contact), a second contact (first contact), and a third contact (third contact);
wherein the first contact (second contact) is arranged contacting a proximal end (proximal end) of the heating coil, wherein the second contact (first contact) is arranged contacting a distal end (distal end) of the heating coil, wherein the third contact (third contact) is arranged contacting the heating coil between the first contact (second contact) and the second contact (first contact).
and wherein the first contact and the second contact are fixed contacts (the second contact and the first contact are arranged at ends of the coil) that each comprise a respective contact member distinct from the induction coil (the first contact and the second contact are arranged contacting the induction coil, not as parts of the induction coil) and fixed to a respective one of the proximal end and the distal end of the induction coil, and the third contact is configured as a movable contact (third contact is mounted on a sliding arrangement).
‘176 does not recite that the heating coil is an induction coil, and a controller configured to control supply of an alternating electrical current between only a pair of the first, the second, and the third contacts,
in particular between the first contact and the third contact, or between the second contact and the third contact, or between the first contact and the second contact,
or that the controller is configured to control supply of an alternating electrical current between a first pair of the contracts for a first predetermined time and between a second pair of the contacts for a second predetermined time.
Rojo-Calderon teaches an aerosol-generating device (fig. 1 and [61-64], #1) comprising an induction coil (L), a first coil segment (L1), a second coil segment (L3), and a third coil segment (L2);
a first contact (L11) and a second contact (L32) that are fixed contacts each comprising a respective contact member (connection tap) distinct from the induction coil (L) and fixed to a respective one of a proximal end (bottommost end of L) and a distal end (topmost end of L) of the induction coil;
and a controller, wherein the controller is configured to control supply of an alternating electrical current between two of the coil segments [20-21],
which requires that the controller is configured to control supply of an alternating electrical current between the first coil segment and the third coil segment, or between the second coil segment and the third coil segment, or between the first coil segment and the second coil segment,
wherein the controller is configured to control supply of an alternating electrical current between a first pair of the coil segments for a first predetermined time (predetermined duration) and between a second pair of the coil segments for a second predetermined time (once the second pair is energized, one of ordinary skill would envisage applying a second predetermined time to continue the “sequence of supplying” current), such that the supply of alternating electrical current to each coil segment can be customized in order to yield uniform aerosolization for a user [18].
Moreover, Rojo-Calderon teaches that supply of an alternating electrical current between only a pair of the three coil segments is well within the scope of a device [20] comprising an induction coil and three coil segments, similar to the instant device comprising an induction coil and three contacts.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that ‘176’s heating coil is an induction coil and add, to ‘176, Rojo-Calderon’s controller configured to control supply of an alternating electrical current between only a pair of the first, the second, and the third contacts as taught by Rojo-Calderon, such that the controller is configured to control supply of an alternating electrical current between the first coil segment and the third coil segment, or between the second coil segment and the third coil segment, or between the first coil segment and the second coil segment, or between a first pair of the coil segments for a first predetermined time and between a second pair of the coil segments for a second predetermined time, because doing so would enable uniform aerosolization for a user and would otherwise fall well within the scope of ‘176’s device comprising a heating coil, a first contact, a second contact point, and a third contact.
Claim 17: modified ‘176 teaches the aerosol-generating device according to claim 16, further comprising a cavity (C28, cavity) configured to receive an aerosol-generating article comprising an aerosol-forming substrate, wherein the induction coil (C29, heating coil) of the heating arrangement is arranged at least partly surrounding the cavity.
Claim 18: modified ‘176 teaches the aerosol-generating device according to claim 17, wherein (modified ‘176 comprises Rojo-Calderon’s controller configured to supply power between only a pair of the first contact, the second contact, and the third contact which would form heating zones between each pair) a space of the cavity surrounded by a portion of the induction coil between the first contact and the third contact is a first heating zone, wherein a space of the cavity surrounded by a portion of the induction coil between the second contact and the third contact is a second heating zone, and wherein a space of the cavity surrounded by the induction coil between the first contact and the second contact comprises the first heating zone and the second heating zone.
Claim 23: modified ‘176 teaches the aerosol-generating device according to claim 16, further comprising a motor (C26, motor) configured to move the movable third contact (third contact).
Claim 24: modified ‘176 teaches the aerosol-generating device according to claim 16, further comprising an actuator (C16, sliding arrangement) configured to enable a user to manually move the movable third contact.
Claim 25: modified ‘176 teaches the aerosol-generating device according to claim 16, wherein the induction coil (C16, heating coil) is a helical coil (the heating coil is arranged parallel to a longitudinal axis, so one of ordinary skill would immediately envisage a helical/spiraling shape) and the movable third contact (third contact) is configured to move axially (slide) along the induction coil.
Claim 26: modified ‘176 teaches the aerosol-generating device according to claim 16, wherein the controller is further configured to operate movement of the movable third contact (C26, the controller energizes a motor to move the third contact).
Claim 27: modified ’176 recites the aerosol-generating device according to claim 16, wherein the movable third contact (C16, third contact) is configured as a sliding contact (the third contact slides).
Claim 28: modified ‘176 teaches the aerosol-generating device according to claim 16, further comprising a communication interface (C24, communication interface) configured to enable a user to control operation of the controller.
Claim 31: modified ‘176 teaches the aerosol-generating device according to claim 22, wherein the controller is configured to move the third contact (C26, the controller energizes a motor to move the third contact) while the alternating electrical current is supplied only between the first contact and the third contact (modified ‘176 comprises Rojo-Calderon’s controller configured to supply power between only a pair of the first contact, the second contact, and the third contact), and the controller is configured to move the third contact (C26, the controller energizes a motor to move the third contact) while the alternating electrical current is supplied only between the second contact and the third contact (modified ‘176 comprises Rojo-Calderon’s controller configured to supply power between only a pair of the first contact, the second contact, and the third contact).
Claim 32: modified ‘176 teaches the aerosol-generating device according to claim 25, wherein the movable third contact (C16, third contact) is configured to move axially (slide) along the induction coil while the alternating electrical current is being supplied between the movable third contact and one of the first or second contacts (modified ‘176 comprises Rojo-Calderon’s controller configured to supply power between only a pair of the first contact, the second contact, and the third contact).
Response to Arguments
Applicant’s arguments of 2026 30 April have been carefully considered. Upon further search and consideration necessitated by applicant’s amendments, a new ground of rejection is made for claim 16 over Hu in view of Rojo-Calderon.
Applicant argues (p. 7, [final paragraph]) that Hu teaches a sliding contact and one fixed end contact rather than a sliding contact and two fixed end contacts. However, Rojo-Calderon teaches two fixed end contacts for the benefit of customizing which coil segments receive energy, and how much energy, in order to yield uniform aerosolization [Rojo-Calderon 18]. Hu teaches adjusting how much of the coil which receives energy ([Hu 23], sliding #105 changes the length of active induction coil #106), and Rojo-Calderon further teaches controlling which combinations of the coil segments receive energy through fixed end contacts [Rojo-Calderon 18] to yield an improvement over Hu’s linear adjustment.
Applicant’s arguments against Hu fig. 5 (p. 9, [2-3]) are mooted by the new ground of rejection which does not rely on Hu fig. 5.
Applicant’s arguments against Thorsen (p. 9, [4] – p. 10, [1]) are mooted by the new ground of rejection which does not rely on Thorsen.
Applicant argues (p. 10, [2]) that Hu teaches a sliding contact and a fixed end contact, while Rojo-Calderon teaches multiple fixed end contacts. However, Rojo-Calderon’s teaching of customizing power delivery to coil segments (Rojo-Calderon fig. 1 and [18 and 61-64], #L1-#L3) is not bound to a sliding contact, and one of ordinary skill would be motivated to add Rojo-Calderon’s fixed contact to Hu’s free end for the same benefit.
Double Patenting: a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. See MPEP 804(I)(B)(1).
Applicant has neither shown patentable distinctness nor filed a terminal disclaimer, so the double patenting rejection is iterated.
Conclusion
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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