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
Applicant’s amendment to claims 1, 4-8, 10-13, and 15-16, newly added claim 18, amendment to the specification, and supporting remarks filed 12/09/2025 (“Amendment”) have been entered. Accordingly, the objections to the drawings, specification, and claims, the claim rejections under 35 USC 112, and the claim rejections for double patenting are withdrawn. However, the rejections under 35 USC 103 are maintained (albeit modified in view of the claim amendments) and a new rejection of claim 18 is set forth below. Claims 1-18 remain pending, claims 2, 6, 10, and 12-14 remain withdrawn, and claims 1, 3-5, 7-9, 11, and 15-18 are examined herein.
Response to Arguments
The Examiner appreciates the Applicant providing a translation of Bin (CN 109090708 A), but the Examiner’s citations are to the translation provided to the Applicant as Non-Patent Literature on 06/10/2025.
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues that Bin fails to disclose the limitations of amended claim 1 because (1) Bin’s tobacco material and film-shaped heating member are made integrally and thus cannot be removed from one another and (2) Bin’s film-shaped heating member is clearly not the same as the plurality of carbon material heating tubes in claim 1 (Amendment p. 9-11). The Examiner respectfully disagrees.
Regarding (1), the Non-Final Rejection at p. 6 acknowledged that in Bin’s disclosed embodiments of the electronic cigarette and special cigarette, the special cigarette contains both the heating device and tobacco, but it would be obvious to rearrange the heating device into the electronic cigarette in view of Bin’s disclosure at [0024]. Furthermore, Bin’s special cigarette is insertable into and removable from the cavity of the electronic cigarette ([0041], Fig. 1c). Thus, modified Bin reads on the claim language and Applicant’s argument is unpersuasive.
Regarding (2), Bin discloses carbon nanotubes and/or carbon nanotube film material [0010, 0024, 0035], both of which read on “carbon material heating tubes”, as set forth in the Non-Final Rejection at p. 6. Applicant’s argument that Bin’s heating member is different because it is film-shaped with citations to Bin’s Figs. 2-3 and 7 is therefore unpersuasive, because Bin reads on the claim language as set forth in the Non-Final Rejection.
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 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, 3, 7, 9, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bin (CN 109090708 A, previously cited).
Regarding claim 1, Bin is directed to a heating device for an electronic cigarette (Title). The electronic cigarette (an “aerosol generation device” as claimed) has a cavity (“chamber extending along an axial direction of the aerosol generation device”) which receives a special cigarette (“aerosol forming substrate which is insertable into the chamber or removable from the chamber along the axial direction”) containing tobacco ([0041], Fig. 1c, reproduced below). In a first embodiment, the special cigarette includes a heating device (“infrared heater”) made of carbon nanotube film material [0041]. The heating device may use infrared heating to atomize the tobacco [0039]. As shown in Fig. 1c, the carbon nanotube film material is arranged to surround the interior contents of the special cigarette (“the plurality of carbon material heating tubes are evenly distributed to surround the chamber”).
In Bin’s disclosed embodiments, the heating device is part of the special cigarette rather than the electronic cigarette (see generally [0024, 0026-32], Figs. 1-7), and thus Bin fails to specifically disclose an embodiment with an “aerosol generation device...comprising…at least one infrared heater” as claimed. But Bin also discloses an alternative wherein the heating device is part of the electronic cigarette ([0024], “or the electrically heated materials are placed in electronic cigarettes”). Therefore, it would be obvious to rearrange the heating device into the electronic cigarette (e.g., such that the same or similar heating arrangement is formed when the special cigarette is inserted into the electronic cigarette per Fig. 1c) as taught by Bin. Additionally, such a modification would be a rearrangement of parts which is obvious in view of Bin. See MPEP 2144.04(VI)(C); see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
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Regarding claim 3, Bin discloses that the heating device activates “[w]hen the special cigarette is inserted into the cigarette holder” and “generates heat by itself when powered on” [0041], which suggests that the carbon nanotube films are “constructed to dependently start” as claimed.
Regarding claims 7 and 15, as shown in Figs. 1a and 1c, the carbon nanotubes have a line shape as claimed. In the first embodiment, the carbon nanotube film material is a sheet which is wound in a circumferential direction ([0041], Fig. 1b), and which radiates infrared [0039]. In Bin as modified in claim 1, it would similarly be obvious to wind the carbon nanotube film material in a circumferential direction within the cavity of the electronic cigarette (which reads on “the plurality of carbon material heating tubes are arranged in a circumferential direction of the chamber”, compare Bin’s Fig. 1b with Applicant’s Figs. 3-4 showing plurality of tubes 121 arranged circumferentially).
Regarding claims 9 and 17, Bin discloses a cigarette holder (“holder”) which receives the special cigarette and contains power supply lines for connecting to the poles of the carbon nanotube film material (which reads on “hold the plurality of carbon material heating tubes”).
Claims 4-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bin (CN 109090708 A, previously cited) as applied to claim 1, in view of Linow (US 2012/0018423 A1).
Regarding claim 4, Bin discloses the heating device made of carbon nanotube film material as set forth above in the discussion of claim 1. Bin also discloses that the heating device may include carbon fibers (“carbon material heating wire”) or other forms of carbon [0035-36], but fails to disclose “wherein the infrared heater comprises a plurality of hollow tubes…a first electrode connection member, and a second electrode connection member; the carbon material heating wire extends to pass through each of the plurality of hollow tubes in sequence so that the each hollow tube accommodates a part of the carbon material heating wire, to form a corresponding one of the plurality of carbon material heating tubes; and the first electrode connection member is electrically connected to one end of the carbon material heating wire, and the second electrode connection member is electrically connected to another end of the carbon material heating wire.”
Linow is directed to a method for producing a carbon band for a carbon infrared heater (Title), which is reasonably pertinent to the problems solved by the inventors of the instant application. The heater is a quartz glass tube 1 (“hollow tube”) accommodating a twisted carbon band 3 (“carbon material heating wire”) ([0055-56], Fig. 1 reproduced below). The ends of the carbon band 3 are connected to terminal elements 4 (“first electrode connection member” and “second electrode connection member”) [0056, 0063]. Linow’s carbon infrared heater provides more constant emission properties and longer service life [0010]. Arranging one carbon band 3 within multiple tubes 1 such that “each hollow tube accommodates a part of the carbon material heating wire” would be a mere rearrangement of parts which does not patentably distinguish the prior art. See MPEP 2144.04(VI)(C); see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Bin by using a plurality of Linow’s quartz glass tubes 1 accommodating a single carbon band 3 as Bin’s heating device, because Bin is directed to an electronic cigarette which is analogous to the claimed invention, Linow is directed to carbon infrared heater which is reasonably pertinent to the claimed invention, Bin teaches carbon fibers and other forms of carbon for the heating device, Linow teaches that its heater provides more constant emission properties and longer service life, the claimed arrangement of tubes and wires is a mere rearrangement of parts, and this would involve a simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claims 5 and 11, Bin discloses the heating device made of carbon nanotube film material as set forth above in the discussion of claim 1. Bin also discloses that the heating device may include carbon fibers (“plurality of carbon material heating wires”) or other forms of carbon [0035-36], but fails to disclose “wherein the infrared heater comprises a plurality of hollow tubes…a first electrode connection member, and a second electrode connection member; each hollow tube accommodates at least one carbon material heating wire, to form one of the plurality of carbon material heating tubes; and the first electrode connection member is electrically connected to one end of each of the plurality of carbon material heating wires, and the second electrode connection member is electrically connected to another end of each of the plurality of carbon material heating wires” per claim 5 and similar language in claim 11.
Linow discloses the quartz glass tube 1 accommodating a twisted carbon band 3 with terminal elements 4, as set forth immediately above. It would be obvious to arrange one band 3 within one tube 1 as disclosed by Linow, which reads on “each hollow tube accommodates at least one carbon material heating wire” per claim 5. It would similarly be obvious to arrange one band 3 within one tube 1 with two terminal elements 4 per tube as disclosed by Linow, which reads on “wherein any one of the plurality of carbon material heating tubes comprises a hollow tube, at least one carbon material heating wire, a first electrode connection member, and a second electrode connection member; and the at least one carbon material heating wire is accommodated in the hollow tube” per claim 11.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Bin by using a plurality of Linow’s quartz glass tubes 1 accommodating a plurality of carbon bands 3 with two terminal elements 4 per tube as Bin’s heating device, for the same reasons as set forth above in the discussion of claim 4, and additionally because Linow discloses such a tube 1 with one band 3 and two terminals 4, which reads on the arrangements of claims 5 and 11.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bin (CN 109090708 A, previously cited) as applied to claims 1 and 3, in view of Scherzer (US 6,464,918 B1).
Bin discloses the carbon nanotube film material as set forth above in the discussion of claim 1. Bin discloses that its heating device can generate heat evenly [0039]. However, the carbon nanotubes of the film material are arranged circumferentially in lines running along the cigarette, as shown in Figs. 1a and 1c, and thus Bin fails to disclose “wherein each of the plurality of carbon material heating tubes is in a shape of at least one of a semi- circle, U, and C; and the plurality of carbon material heating tubes are arranged sequentially along the axial direction of the chamber” (see Applicant’s Figs. 11-13).
Scherzer is directed to a method for production of a spiral-shaped heating element for an infrared radiator (Title, col. 1 l. 15-25), which is reasonably pertinent to the problems solved by the inventors of the instant application. Infrared radiators are generally equipped with spiral heating elements (col. 1 l. 30, Fig. 1, reproduced below). Scherzer’s heating element can be made of material containing carbon fibers (Abstract). One of ordinary skill in the art would recognize that Bin’s carbon nanotubes illustrated in Figs. 1a and 1c could similarly be oriented to collectively form a spiral shape spanning an axial length, which would heat evenly as disclosed by Bin [0039], and which would be a mere rearrangement of parts and/or change in shape. See MPEP 2144.04(VI)(C); see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP 2144.04(IV)(B); see also In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Bin’s carbon nanotubes by orienting them to collectively form a spiral heating element as disclosed by Scherzer, because Bin is directed to an electronic cigarette which is analogous to the claimed invention, Scherzer is directed to an infrared radiator which is reasonably pertinent to the claimed invention, Scherzer discloses that spiral heating elements are well known, Bin discloses even heating which one of ordinary skill would recognize is achieved by Scherzer’s spiral, and this would involve a mere change in shape and/or rearrangement of parts. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Bin (CN 109090708 A, previously cited) in view of Linow (US 2012/0018423 A1) as applied to claim 4, further in view of Suda (US 2003/0222077 A1).
Modified Bin discloses the aerosol generation device of claim 4 as set forth above, but fails to disclose Linow’s quartz glass tubes 1 being “filled with an inert gas and/or vacuumized” as claimed.
Suda is directed to a resistive heating element (Title) which produces infrared radiation when electrified (Abstract, [0044]), which is reasonably pertinent to the problems solved by the inventors of the instant application. Suda teaches that it is preferable to put its heating element in a heat-resistant container such as a quartz tube, and to fill the container with an inert gas, in order to prevent deterioration of the heating element and oxidation of carbon materials therein [0021]. One of ordinary skill in the art would recognize that Suda’s teaching could advantageously be applied to Linow’s quartz glass tubes 1.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Bin by filling the quartz glass tubes 1 with an inert gas in order as taught by Suda, because Bin is directed to an electronic cigarette which is analogous to the claimed invention and Suda is directed to an infrared radiation heater which is reasonably pertinent to the claimed invention, Suda teaches that this prevents deterioration of the heater, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 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 MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747