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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/07/2026 (“Amendment”) has been entered, which includes an amendment to claim 1 and supporting remarks. An objection to claim 1 and rejections under 35 USC 103 and 112 are 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 Claims 1-18 remain pending, claims 2, 6, 10, and 12-14 remain withdrawn, and claims 1, 3-5, 7-9, 11, and 15-18 are examined herein.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
Applicant's arguments regarding the rejection of claim 1 under 35 USC 103 with regard to the Bin reference (Amendment p. 7-10) have been fully considered but they are not persuasive. Applicant argues that (1) Bin discloses a “carbon nanotube film material” and thus fails to disclose “each of the plurality of carbon material hearing tubes is independent from each other and is independently formed, the each of the plurality of carbon material hearing tubes extends between the opening and the close end of the chamber” as recited in claim 1 (Amendment p. 7-9). Applicant further argues that (2) the claimed infrared heater is reusable, whereas the heating device of Bin will simply be disposed, and thus the cost of Bin is higher, so secondary considerations under 35 USC 103 tend toward non-obviousness (Amendment p. 8-10).
Regarding (1), the Examiner respectfully disagrees because the meaning of “each of the plurality of carbon material hearing tubes is independent from each other and is independently formed” is unclear in claim 1 (see rejection under 35 USC 112(b) below) and because the amended claim language fails to distinguish Bin regardless. Applicant cites to Bin’s “carbon nanotube film material” and simply concludes that this fails to disclose the claim language, but Applicant does not specifically point out any structural difference between the two. Applicant states that Bin fails to disclose the size and length of such nanotubes, but these are not claimed features, and the argument does not distinguish the claimed structure from Bin’s disclosure. To the contrary, one of ordinary skill in the art would expect a “carbon nanotube film material” as illustrated in Bin’s Figs. 1a and 1c to include “independent” carbon nanotubes as claimed, because one would expect such a film to be constructed from individual nanotubes and because the Figures appear to illustrate independent nanotubes. Regardless, Bin recites a laundry list of carbon materials including “carbon nanotubes, carbon nanotube films…” and other forms of carbon [0002, 0010, 0024, 0035-36, 0055], and the “carbon nanotubes” are cited in the rejection below. Thus, even if “carbon nanotube films” were considered not to read on “independent” nanotubes as claimed, Bin is clearly disclosing a wide variety of physical arrangements of carbon and “carbon nanotubes” reads on such “independent” nanotubes.
Further regarding (1), the Examiner recommends amending claim 1 to recite the outer diameter of the tubes being 0.3-3 mm, in view of the specification at [0036], which would clearly and unambiguously distinguish the carbon nanotubes of Bin.
Regarding (2), the Examiner agrees that Bin’s heating materials would most likely be disposed along with the tobacco material, because Bin discloses mixing the heated materials into tobacco materials for heating [0024], and thus Applicant’s claimed invention might achieve a cost advantage over Bin, which weighs against obviousness as a secondary consideration. However, this consideration alone has little weight and is insufficient to rebut the prima facie case of obviousness presented over Bin in the rejection below, because the evidence is not conclusive and the significance of this cost advantage is speculative (see MPEP 2141(II) noting that “[t]he weight to be given any objective evidence is determined on a case-by-case basis. The mere fact that an applicant has presented evidence does not mean that the evidence is dispositive of the issue of obviousness”).
Claim Objections
Claim 1 is objected to because it recites “close end” at l. 12 which appears to be a typo of “closed end” which was previously introduced at l. 5.
Appropriate correction is required.
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 1, 3-5, 7-9, 11 and 15-18 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.
Claim 1 recites “wherein each of the plurality of carbon material heating tubes is independent from each other” (emphasis added), but it is unclear what structural limitation is set forth by this claim language. The specification does not remedy the lack of clarity because the word “independent” does not appear anywhere in the specification. The specification at [0041, 0048] explains that the tubes and heaters may be “constructed to independently start”, but this is clearly not what is meant by claim 1 because withdrawn claim 2 recites this feature. Claim 1 also recites that the plurality of tubes “is independently formed”, and thus “independent from each other” clearly means something different from “independently formed”. The drawings do not provide any additional clarity either. For purposes of this office action, claim 1 is interpreted as reciting “wherein each of the plurality of carbon material heating tubes
Claims 3-5, 7-9, 11 and 15-18 are rejected due to their dependency on claim 1.
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, of record, previously cited with English translation).
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”) which receives a special cigarette (“aerosol forming substrate”) containing tobacco ([0041], Fig. 1c). As shown in Fig. 1c, the cavity extends axially along the device, has an opening for receiving the special cigarette, and has a contact position with the inserted end of the special cigarette [0041] (which reads on “extending along an axial direction of the aerosol generation device, the chamber comprising an opening and configured to receive the aerosol forming substrate from the opening, the chamber further comprising a closed end where the aerosol forming substrate is stopped for further insertion into the aerosol generation device, wherein the aerosol forming substrate is insertable into the chamber or removable from the chamber along the axial direction”).
The special cigarette includes a heating device (“infrared heater”) which may be made of carbon nanotubes [0002, 0010, 0024, 0035-36, 0055]. 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 functionally equivalent heating arrangement is formed when the special cigarette is inserted into the electronic cigarette per Fig. 1c) as taught by Bin (which reads on an “aerosol generation device...comprising…at least one infrared heater”). 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).
The heating device (“infrared heater”) may be made of carbon nanotubes [0002, 0010, 0024, 0035-36, 0055] (which reads on “wherein each of the plurality of carbon material hearing tubes…is independently formed”; one of ordinary skill in the art would expect carbon nanotubes to be “independently formed”, particularly because Bin discloses “carbon nanotubes” separately from “carbon nanotube films”). Fig. 1c illustrates a carbon nanotube film wherein the inserted nanotubes extend in an axial direction (which reads on “the each of the plurality of carbon material hearing tubes extends between the opening and the close end of the chamber”; one of ordinary skill in the art would expect carbon nanotubes to be axially arranged similar to the nanotubes shown in the film of Fig. 1c). The carbon nanotubes may use infrared heating to atomize the tobacco [0036, 0039] (which reads on “the plurality of carbon material heating tubes are constructed to heat the aerosol forming substrate received in the chamber in an infrared radiation manner”). The carbon nanotubes incorporated into the electronic cigarette would surround the special cigarette (see Fig. 1c; which reads on “the plurality of carbon material heating tubes are evenly distributed to surround the chamber”).
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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 nanotubes are “constructed to dependently start” as claimed.
Regarding claims 7 and 15, as shown in Figs. 1a and 1c, the carbon nanotubes have a “straight line” shape as claimed. In a 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 arrange the carbon nanotubes 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, to radiate infrared to the chamber to heat the aerosol forming substrate”, 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 material [0041] (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 of record, previously cited with English translation) as applied to claim 1, in view of Linow (US 2012/0018423 A1, of record, previously cited).
Regarding claim 4, Bin discloses the heating device made of carbon nanotubes 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 nanotubes 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 “wherein each of the plurality of carbon material heating tubes comprises a hollow tube…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, the first electrode connection member is electrically connected to one end of the at least one carbon material heating wire, and the second electrode connection member is electrically connected to another end of the at least one carbon material heating wire.” per claim 11.
Linow discloses the quartz glass tube 1 (“hollow tube”) accommodating a twisted carbon band 3 (“carbon material heating wire”) with terminal elements 4 (“first electrode connection member” and “second electrode connection member”), as set forth immediately above in the discussion of claim 4. 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 1 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 of record, previously cited with English translation) as applied to claims 1 and 3, in view of Scherzer (US 6,464,918 B1, of record, previously cited).
Bin discloses the carbon nanotube heater 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 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” per claims 8 and 16 (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 reads on the claim language), 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, of record, previously cited with English translation) in view of Linow (US 2012/0018423 A1, of record, previously cited) as applied to claim 4, further in view of Suda (US 2003/0222077 A1, of record, previously cited).
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 (which reads on the claim language), 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Li (CN 112841747 A, English translation provided herewith) discloses an electric smoking device with a cigarette receiving cavity 12 and a heating cylinder 11 ([n0008], Fig. 5). The heating cylinder 11 consists of multiple heat-generating tubes 116 which are selected from infrared heating tubes or carbon fiber tubes ([n0009-10, n0015], Fig. 1). This disclosure is considered particularly relevant to claim 1.
Li is an intervening reference and may be distinguished by filing a translation of the certified copy of Applicant’s foreign application as filed, submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216; see also 37 CFR 1.55.
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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 /SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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