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 Claims
Claims 1-28 are pending. Claims 16-28 are withdrawn. Claim 14 is amended. Claims 29-28 are canceled.
Priority
Examiner is not authorized to determine whether the claim of priority is sufficiently established by the recent filings. See Miscellaneous Communication to Applicant of 02/26/2026, suggesting a petition under 1.78(c) is required and providing contact information to aid Applicant in resolving this matter.
Response to Amendment
The amendment of 02/13/2026 is entered. The amendment to claim 14 overcomes the objection to claim 14, and thus this objection is withdrawn. The rejection of claim 6 under 35 USC 112(b) is withdrawn. The claim will be interpreted as argued by Applicant.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the obvious type double patenting rejection is traversed, because Applicant argues that the conductive wire in the present wire must have a substantially rectangular cross-section and the reference application does not claim this limitation. Examiner asserts that the claimed reference application would be interpreted in light of its Specification, and this interpretation is required to determine what shape the wire must have because all wire must have some cross-sectional shape. The reference Specification suggests that the cross-section of the wire may be rectangular, and thus the claimed wire of the reference Application is considered to claim this species, absent its exclusion from the reference Application claims. In short, one of ordinary skill in the art would find it obvious to practice the reference application in a way that infringes the claims of the present application, such that a double patenting rejection is required. Allowing both applications would potentially result in different entities licensing these patents and suing each other for infringement, and also potentially extending the patent term – though the Examiner cannot reasonably calculate the relative patent terms for Applications still undergoing examination. The double patenting rejections are maintained.
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.
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) 1-2, 4-6, 10, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1).
Regarding claim 1, White discloses:
An apparatus arranged to heat aerosolizable material to volatilize at least one component of the aerosolizable material, (Fig 9), the apparatus comprising: a receiving portion, (Fig 9 ref 62A) arranged to receive a consumable article comprising the aerosolizable material, (Fig 9 tube 42, with aerosolizable material ref 45); and a conductive wire, (Fig 9 ref 68) disposed around the receiving portion, (Fig 9), the conductive wire being arranged to generate heat for transfer to the received consumable article comprising the aerosolizable material in response to application of an electric current, ([0050]). White discloses that nichrome wire is suitable for use as a heating wire, ([0050]). White does not particularly disclose that the conductive wire has a substantially rectangular cross-sectional area, and even though the spiral grooves are depicted as having a rectangular cross-section, the wire depicted in the grooves appears to be round.
Tucker teaches an electronical cigarette with a heater comprising a ribbon of electrically resistive mesh material wound around a wick, ([0002]), and is thus within the inventor’s field of endeavor. Tucker teaches that the heater is wrapped around the body to be heated and teaches the technique of using a heater with a planar form factor to increase the surface area contact between the heating wire and the body to be heated, here a wick, ([0030]).
Batista teaches an electrically heated aerosol generating device, ([0004]), and is thus within the inventor’s field of endeavor. Batista teaches that a healing element of an electric heater in an aerosol generating device may be formed of an electrically resistive wire, which is wrapped around the body to be heated. ([0144]). Batista teaches a technique of using wire with a square, rectangular, or flat cross-sectional shape to increase heat transfer between the wire and the body to be heated, ([0144]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wire disclosed in White according to the technique taught by Batista and Tucker, such that the wire cross-section has a rectangular or square cross-sectional profile, sizing the wire and the grooves to accommodate the nichrome wire in a friction fit within the grooves. One of ordinary skill in the art would have appreciated that the flat wire would fit more securely in the grooves, because of the greater surface contact on the planar surfaces of the wire and that the greater surface area contact would provide for better heat transfer from the wire to the as taught by Tucker and Batista.
Regarding claim 2, modified White discloses the apparatus of claim 1, and further discloses the consumable article is in cylindrical form and the receiving portion comprises a tube configured to receive the consumable article comprising the aerosolizable material, ([0050] fig 9).
Regarding claim 4, modified White discloses the apparatus of claim 1, and further discloses that the conductive wire is arranged in a helix around the receiving portion, ([0050] fig 9).
Regarding claim 5, modified White discloses the apparatus of claim 1. Modified White discloses that the flat nichrome wire is wrapped around the receiving portion in a plurality of turns with gaps in between each turn of the wire representing unheated space between the wire, (see Fig 9). Modified White does not disclose that the heating wire is wrapped around the receiving portion in a single turn.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified White, such that the wire was wider and covered the desired heating area in a single turn. Modifying the width of the wire, would avoid gaps between the turns of the wire, allowing for consistent heating without gaps to the receiving portion, and simplify the manufacturing process by reducing the machining of grooves in the receiving portion.
Regarding claim 6, modified White discloses the apparatus of claim 1, and further discloses that the conductive wire may be nichrome, ([0050]).
Regarding claim 10, modified White discloses the apparatus of claim 1, and further discloses that the receiving portion is separate from the conductive wire, ([0050]).
Regarding claim 15, modified White discloses the apparatus of claim 1, and further discloses that the conductive wire is fitted into a spiral groove around the receiving portion, ([0050]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the spiral grooves, such that the wire was secured in the grooves with a friction fit, to ensure the wrapped wire was held, wrapped around the receiving portion in tension, to ensure that the wire remained in place for the safety of the user and to ensure efficient thermal transfer to the receiving portion.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 1 above, as further evidenced by Poorolajal, “Impact of cigarette filter length and diameter on cigarette smoke emissions” 2019.
Regarding claim 3, modified White discloses the apparatus of claim 1. White discloses the consumable article is in cylindrical form, (Fig 1, 10). White does not disclose the diameter of the consumable, nor the tube of the receiving portion.
Poorolajal evidences commonly used cigarette diameters, ([pg 379 Table 1]), and is thus within the inventor’s field of endeavor. Poorolajal evidences that the diameter of the commonly used cigarettes are between 5.2 mm and 7.78 mm, ([pg 379 Table 1]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have adapted the diameter of the receiving portion, in the form of a tube, to accommodate cylindrical consumables having a diameter similar to those commonly used. This size diameter has been shown to be commercially acceptable to consumers. Given the diameter of consumable that the receiving tube is expected to accommodate, one of ordinary skill in the art would have reasonably expected to size the interior diameter of the receiving portion tube to accommodate the diameter of a commonly available consumable, and reasonably expected that the receiving portion would have a wall thickness of approximately 1 mm to have sufficient crush resistance and durability. Thus, it would be obvious to make the receiving portion tube with an interior diameter of between 5.2 mm and 7.2 mm, with an outer diameter of 2 mm greater than that (to account for wall thickness of the tube), which renders obvious a receiving portion tube of between 7.2-9.2 mm, which is within the range specified by the claim.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 1 above, and Norling (US 2011/0259875 A1).
Regarding claim 7, modified White discloses the apparatus of claim 1. Modified white discloses the heating wire may be nichrome wire, ([0050]). Modified While does not disclose the resistivity of nichrome wire.
Norling teaches alloys intended for use in electrical resistance materials for heating in household appliances, ([0002]), and is thus reasonably pertinent to the problem faced by the inventor. Norling teaches that using a heating element with coils of the type NiCr 80/20 achieve an even distribution of temperature with a long life, ([0009]), and that alloys with a Cr content greater than 25% by weight such as NiCr 70/30 have poor workability properties, ([0013]). Norling teaches that the resistivity of an alloy may change as its temperature increases, ([0005]), and that having a lower resistivity at the Ct value results in improved longevity for the heating element because the risk of local overheating is reduced, ([0005]). Norling publishes several resistivity values for NiCr alloys in table 2, with the resistivity published for both room temperature and Ct temperature published.
It would have been obvious to one of ordinary skill in the art to further modify White according to the teachings of Norling, and specified the nichrome wire to have be an 80/20 NiCr alloy. This alloy is shown to have the lowest listed Ct temperature, while comprising an amount of Cr that is limited to below 25%. By selecting the NiCr 80/20 alloy, one of ordinary skill in the art would have expected the wire to have good workability attributes, as well as good longevity. The resistivity for NiCr 80/20 is taught to between 1.09 ohm.mm2/m and 1.05 ohm.mm2/m.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) ) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 1 above, and in further view of Irvin (US 2,371,445).
Regarding claim 8, modified White discloses the apparatus of claim 1. Modified White does not disclose the receiving portion comprises a flared opening.
Irvin teaches snuffers for cigarettes, ([pg 1 col 1 lines 1-3]), and is thus considered within the inventor’s field of endeavor. Irvin teaches that flaring the open end of a tubular opening makes it easier to insert a cigarette into the tube, ([claim 4 lines 6-8]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to further modify White, such that the opening of the receiving portion tube was flared outward as taught by Irvin, to more easily insert the cylindrical consumable.
Claim(s) 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) ) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 1 above, and in further view of Shimizu (JP 2014/216287A) (English Machine Translation relied upon).
Regarding claim 9 and 12, modified White discloses the apparatus of claim 1. Modified White does not disclose that a layer of dielectric material is disposed between the receiving portion and the conductive wire, or that the dielectric portion comprises a tube of aluminum with a thickness of about 0.05 mm to 0.15 mm.
Shimizu teaches a novel heater for smokeless heating of tobacco leaves, ([0004]-[0005]), and is thus within the Inventor’s field of endeavor. Shimizu teaches that an inexpensive heater having good thermal efficiency can be manufactured by using an aluminum tube having an oxidized surface as an insulation tube and winding a resistance wire/ribbon around the insulation tube, ([Abstract]). Shimizu suggests that the heating element wire may be a nickel chromium wire, ([0024]). Shimizu teaches that the thickness of the aluminum may be freely selected, ([0024]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to further modify White according to the teachings of Shimizu. White discloses that the heating wire is wound around the receiving portion, and that the heat is generated by energizing the heating wire with electricity, ([0050]), and that the receiving portion conducts the heat from the heating wire to the inserted consumable, ([0050]). But does not disclose how to prevent the electricity from the wire from energizing the receiving portion or otherwise shorting. Shimizu discloses that a layer of oxidized aluminum would electrically insulate the receiving portion from the heating wire, and that the thickness of the aluminum layer may be freely selected. One of ordinary skill in the art would reasonably select a thin layer of aluminum, such as aluminum foil, because it is readily available and easy to wrap around the surface of the receiving portion tube, between the receiving portion tube, and the heating wire wrapped around the tube. Aluminum foil is asserted to commonly have a thickness of between 0.016 mm to 0.2 mm, overlapping the claimed range and rendering it obvious. Oxidized aluminum is inherently a dielectric layer.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) ) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 10 above, and in further view of Shimizu (JP 2014/216287A) (English Machine Translation relied upon), and Dorsey, Jr. (US 3,616,310).
Regarding claim 11, modified White discloses the apparatus of claim 10. As in the rejections of claim 12 above, Shimizu teaches that a heater may be manufactured with a layer of aluminum in the form of a tube that acts as an electrical insulator for a heating wire wrapped around the tube. Shimizu teaches that the aluminum is oxidized but does not disclose the method of creating the insulating layer of oxidized aluminum.
Dorsey teaches that the anodization of aluminum is a well-known process, ([col 1 lines 4-6]). Aluminum is a materially commonly used in the tobacco arts to make aerosol generating devices, and the properties of aluminum and common treatments thereof are asserted to be within the ordinary skill in the art, and reasonably pertinent to the Inventor’s field of endeavor. Dorsey teaches a method of increasing the protective value or durability of an anodic oxide coating, ([col 1 lines 33-37]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified White, by using the oxidized aluminum tube of Shimizu where the oxidized layer was formed by an anodizing process as taught by Dorsey. Shumizu is silent as to how the oxidized layer is formed, and Dorsey teaches a practical way to form a durable oxidized layer to electrically insulate the aluminum tube from the heating wire. One of ordinary skill in the art would have been motivated to use the anodizing process of Dorsey to provide a durable oxidized layer and believed that the application of the anodizing process of Dorsey to an aluminum tube, would have been successful in producing a suitable oxidized layer on an aluminum tube, to be used according to the teachings of Shimizu.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 2015/0101606 A1) ) in view of Tucker et al. (US 2016/0157525 A1) and Batista et al. (US 2018/0070641 A1), as applied to claim 10, and in further view of Steel Band Clamp, sold by uxcell through Amazon, retrieved on 11/1/2025, offered for sale on June 26, 2019.
Regarding claims 13-14, modified White discloses the apparatus of claim 1. White discloses an embodiment where the outer periphery of the housing of the heat conductor is covered in a layer of insulation, ([0040]). White discloses that the insulating materials include nonfibrous materials such as silica aero gel, ([0040] Fig 2-3ref 39, depicted in an embodiment where the heat comes from a flame below the receiving portion tube, see Fig 4).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the outer heat insulation layer disclosed by White for the embodiments depicted by Fig 2-3, to provide a heat insulation layer around the receiving portion tube with the heating wire of Fig 9, in the form of sleeve of silica aero gel. White does not disclose how the layer of silica aero gel is to be held in place.
Clamp teaches a spring clamp for holding a tube or layer onto another tube, ([pg 1]), and is considered a fastener type that would be known to one of ordinary skill in the art for securing a layer to tubular portion, reasonably pertinent to the problem of how to secure the silica aero gel layer of to the receiving portion tube of White. Clamp teaches that a variety of sizes are available, which cover the expected diameters of the receiving portion tube of White, with one or more turns of Flat Wire, and a sleeve of silica aero gel.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have secured the silica aero gel layer to the receiving portion tube of White, with a spring clamp taught by Clamp. White is silent as to how the silica aero gel sleeve layer is to be secured to the receiving portion tube. Clamp provides a removably attachable way of securing the silica aero gel sleeve. One of ordinary skill in the art would have been motivated to select the steel band clamp of Clamp, to allow the user to remove the silica aero gel sleeve and inspect the receiving portion tube and wiring for damage, as well as easily replace the silica aero gel sleeve in the event that it becomes worn, soiled, or otherwise in need of replacement. The steel band clamp meets the requirement of a resilient member arranged around the conductive wire. The silica aero gel sleeve meets the requirement of a sleeve around the conductive wire. The arrangement of the steel band clamp to hold the sleeve in place, inherently will meet the functional limitations of maintaining tension in the conductive wire, to hold the conductive wire in contact with the receiving portion tube, which will also inherently improve the thermal contact between the two.
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 1-2, 4, and 6-7, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 14 of copending Application No. 18/002,981). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 requires:
An apparatus arranged to heat aerosolizable material to volatilize at least one component of the aerosolizable material, (claim 1), the apparatus comprising: a receiving portion arranged to receive a consumable article comprising the aerosolizable material, (claim 2); and a conductive wire disposed around the receiving portion, (claim 2), the conductive wire being arranged to generate heat for transfer to the received consumable article comprising the aerosolizable material in response to application of an electric current, (claim 1-2), wherein, the conductive wire has a substantially rectangular cross-section, (claim 1, the Specification making clear that the conductive wire includes a species of conductive wire with a rectangular cross-section pg 7 lines 4-7).
Claim 2 requires substantially the same limitation as in claim 3 of the reference application.
Claim 4 requires substantially the same limitation as in claim 4 of the reference application.
Claim 6 is rendered obvious by claim 14 of the reference application.
Claim 7 is rendered obvious by claim 1 in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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/D.E.V./Examiner, Art Unit 1747
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759