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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/29/2026 has been entered.
Response to Amendment
Claims 1-14 are cancelled. Claim 15 is amended. Claims 28 and 29 are withdrawn. Claims 15-27 are presently examined.
Drawings
The drawings are objected to because the shading is not uniformly thick as required by 37 CFR 1.84(l), and the shading is not used to show the surface or shape of a spherical, cylindrical, and conical element of an object as required by 37 CFR 1.84(m), but is instead used to show the internal features of a component (figure 3). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “temperature-dependent actuation mechanism” in claim 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of applicant’s specification indicates that the structure associated with a temperature-dependent actuation mechanism is a bimetallic strip (page 14, lines 24-25).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 15, it is unclear whether the claimed first and second heating functions require multiple heaters that perform the different heating functions, or whether they require only a single heater that performs the two heating functions. It is further unclear whether a single heater is required to operate in two different modes to perform the two different heating functions, or whether a heater that releases heat towards both the battery and aerosol-forming substrate would be considered to operate in both modes. Even the recitation of switching between modes may not exclude a single heater operating in both modes simultaneously since the claim uses the open ended language “comprising.” Furthermore, what would a single heater operating in two modes look like? It is one thing for a heater to operate at two different temperatures, however, this is not the difference between the two modes of applicant’s invention. The difference may be in the direction that the heat is channeled, however, this is not evident from the claim. The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if it required two separate heating elements that collectively form a heater. Claims 16-27 are indefinite by dependence.
Regarding claim 17, it is unclear whether the heater being further configured to perform a third function requires a third heater of some other arrangement, for the same reasons as set forth above with respect to claim 15. The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required a separate heating element from the first two heating elements. Claims 18-20 are indefinite by dependence.
Regarding claim 21, the claim requires the first heating function to be a resistive heating function, and the second heating function to be an inductive heating function. However, it is unclear whether “the heater” is a single heater that performs both inductive and resistive heating, or whether the heater contains two separate heating elements. It is additionally unclear as to whether the heater includes an inductor or a susceptor, or both. The susceptor could be located remotely from the heater, and need not be connected to any electrical circuit, and the inductor associated with the susceptor would not resistively heat anything since that is not the function of any inductor. The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required one resistive heater that can heat the battery and one inductive heater that can heat the aerosol-forming substrate.
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.
Claims 15-16, 21-22 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Tabasso (WO 2018/001746) in view of Batista (WO 2019/030364).
Regarding claim 15, Tabasso discloses an aerosol generating device (figure 1, reference numeral 102) having an electrochemical energy storage device in the form of a first battery (figure 1, reference numeral 126) that supplies electrical power to an aerosol generating element (abstract, figure 1, reference numeral 134). An electrical heater surrounds the first EESD and heats it (abstract, figure 1, reference numeral 140). The aerosol generating device receives an aerosol generating article (page 12, lines 22-28, figure 1, reference numeral 104) in a cavity (page 12, lines 35-38, page 13, lines 1-8, figure 1, reference numeral 132), which is considered to meet the claim limitation of a cavity. The electrical heater and aerosol generating element are considered to be two heating elements of an overall heater that perform second and first heating functions, respectively. An EESD temperature control system senses the temperature of the EESD and operates the electrical heater to heat the EESD based on the results of the sensing (abstract). The electrical heater is activated when the temperature from the sensor is above a first threshold but below a second threshold (page 4, lines 12-30). The aerosol generating device is not operated until the second temperature threshold is reached (page 11, lines 12-23), indicating that the device switches between which part is being heated based on a temperature of the EESD. The battery heating provides acceptable performance even at low ambient temperatures (page 1, lines 32-34). Tabasso does not explicitly disclose a portion of the heater surrounding the cavity.
Batista teaches an aerosol generating device comprising a chamber (figure 1, reference numeral 20) having an inductor coil disposed around it (figure 1, reference numeral 28) and an elastic susceptor element within the chamber (abstract, figure 1, reference numeral 26). The susceptor receives an aerosol generating article within it (abstract, figure 1, reference numeral 14). Batista additionally teaches that an elastic susceptor helps retain the article inside the device by exerting a force on the article (page 4, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the heater of Batista to heat the article of Tobasso. One would have been motivated to do so since Tabasso discloses a suitable heater for heating aerosol generating articles and Moloney a heater that retains an article in place in the device. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Regarding claim 16, the inductor coil of modified Tabasso is considered to meet the claim limitation of an induction coil.
Regarding claim 21, Tabasso discloses that the battery is heated by a resistive heating element (page 2, lines 15-25).
Regarding claim 22, Tabasso discloses the aerosol generating device having an EESD that is heated by an electrical heater (abstract). The heating element is an inductive heating element (page 5, lines 1-8) that uses a susceptor to heat the battery (page 16, lines 25-38, page 17, lines 1-3), which is considered to meet the claim limitation of a first susceptor. An inductive heating element heats the aerosol generating article having a susceptor that heats the aerosol forming substrate (page 5, lines 37-38, page 6, lines 1-6), which is considered to meet the claim limitation of a second substrate.
Regarding claims 25 and 26, Tabasso discloses that the temperature control system is operated by a microcontroller (page 3, lines 32-38, page 3, lines 1-2), which is considered to meet the claim limitation of a controller.
Regarding claim 27, Tabasso discloses that the temperature control system senses the temperature of the EESD using a temperature sensor that sends data to the controller (abstract), indicating that the controller must have a communication unit. Applicant’s specification teaches that the external device may in fact be a part of the device and can be a temperature sensor (page 4, lines 25-30), indicating that the temperature sensor of Tabasso meets the claim limitation of an external device.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tabasso (WO 2018/001746) in view of Batista (WO 2019/030364) as applied to claim 15 above, and further in view of Hatton (US 11,590,296).
Regarding claims 17-20, modified Tabasso teaches all the claim limitations as set forth above. Tabasso additionally discloses the aerosol generating device having an EESD that is heated by an electrical heater (abstract). The heating element is an inductive heating element (page 5, lines 1-8). Modified Tabasso does not explicitly teach an inductive heater both heating and charging the battery.
Hatton teaches a vaporizer atomizer (column 1, lines 16-18) having a single inductor that is used for charging the heater, which is considered to meet the claim limitation of a third function, and to power up the heater so that cost and space requirements are reduced (column 14, lines 23-31).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the inductive heater of modified Tabasso with the charging of Hatton. One would have been motivated to do so since Hatton teaches an inductive heater that both heats and charges to reduce cost and space requirements.
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Tabasso (WO 2018/001746) in view of Batista (WO 2019/030364) as applied to claim 15 above, and further in view of Xiang (WO 2016/074363, machine translation relied upon).
Regarding claims 23 and 24, modified Tabsso teaches all the claim limitations as set forth above. Tabasso additionally discloses the aerosol generating device having an EESD that is heated by an electrical heater (abstract). The heating element has both a resistive heating element, which is considered to meet the claim limitation of a first heating function and an inductive heating element (page 5, lines 1-8), which is considered to meet the claim limitation of a second heating function. Modified Desnerck does not explicitly teach a temperature dependent actuation mechanism.
Xiang teaches an electronic cigarette control circuit having a switch element that is deformed by heat so that atomization stops when the temperature exceeds a normal range (page 2, fourth paragraph). The switch element is a bimetallic strip (page 3, second paragraph).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the heater of modified Tabasso with the bimetallic strip of Xiang. One would have been motivated to do so since Xiang teaches a bimetallic strip that causes a heater to shut off when a normal temperature is exceeded.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant’s arguments regarding Desnerck are no longer relevant since Desnerck is not relied upon in the instant Office action. However, applicant’s arguments regarding the use of a single heater remain relevant and are therefore directly addressed.
Applicant argues that the claimed device uses only a single heater, while Tabasso discloses two heaters. However, applicant’s claims do not specify anything at all about the construction of such a heater. The use of the term “a heater” does not exclude the use of a second heating element, and does not even require that the second heating element be adjacent to the first heating element. Two heating elements in two different locations, as is the case in Tabasso, would therefore fall within the meaning of a single heater as used in applicant’s arguments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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