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 the Claims
Claims 1-15 are pending and are subject to this Office Action. Claims 1-4, 8-9, and 12-15 have been amended.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 3/16/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 3/16/2026, with respect to the rejection(s) of claim(s) 1-15 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended claim 1 with the limitation of wherein a first section of the cover along a longitudinal direction of the cover has a first thickness and a second section of the cover along the longitudinal direction of the cover has a second thickness, the first thickness being thinner than the second thickness, wherein the first section of the cover is closer to the heater than the second section of the cover, and wherein an airgap distance between the first section of the cover and the main housing is larger than an airgap distance between the second section of the cover and the main housing, whereas previously this was not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
In specific regard to the Applicant’s arguments on page 7 with respect to Abi not disclosing a cover having different thicknesses as the element in Abi is an insulating member, these are not found to be persuasive. Abi merely teaches a known way to change the size of an air gap, i.e. by making an element next to an air gap thinner to increase the size of an air gap. As such it would be obvious for one having ordinary skill in the art to apply this to Ferrie, and thus when changing the size of the air gap, one of ordinary skill in the art would know one method would be to change the thickness of an element next to the air gap, such as the cover. Further, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The following is a modified rejection made based on amendments to the claims.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The limitation(s) “cover detection means” in claim 10 invokes 35 USC 112(f) by combining the generic place holder “for” with functional language “detecting whether the cover element is attached to the main housing or not” without sufficient structure, material, or acts for performing the claimed function. 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. According to claim 11 of the instant application, the corresponding structure is button or switch that is configured to be actuated when the cover element is attached to the main housing, and/or wherein the cover detection means comprises sensor circuitry.
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.
Claim(s) 1-8 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (EP3711571, cited in IDS dated 4/12/2023) in view of Abi (WO2020/182743, cited previously) and Zhao (CN110279147A, citations will refer to the English equivalent US2021/0321673).
Regarding claim 1, Ferrie teaches:
An aerosol generation device (device 201) comprising: a main body defined by a main housing (housing 227, figure 3, [0110]).
A heater for heating an aerosol generation substrate (heater 204) and accommodated within the main housing (figure 2E, [0122]).
A cover (panel 231/232) detachably attached or connected to the main housing (removably attached, [0135]) and covering a portion of the main housing to form part of the exterior surface of the main housing (the panels 231, 232 are configured for covering at least a portion of the external surface 229 of the housing 227, [0131], figure 3).
Wherein the main housing and the cover are shaped such that an air gap is formed between the main housing and the cover (gap 235 that defines a void and is filled with air…between an external surface 229 of the housing and an internal surface 236 of the panel, [0132], figures 3-4).
The air gap may be provided over substantially the entire length of the housing ([0134]). As such, the portion of the cover adjacent to the heater defines a first section of the cover along a longitudinal direction of the cover that has a first thickness, and the portion of the cover not adjacent to the heater defines a second section of the cover along the longitudinal direction that has a second thickness. Further, as the first section of the cover is adjacent to the heater, the first section of the cover is closer to the heater than the second section of the cover.
Ferrie does not appear to explicitly disclose the cover comprising a discrete set of different thicknesses and/or a continuous spectrum of different thicknesses, the first thickness being thinner than the second thickness, and wherein an airgap distance between the first section of the cover and the main housing is larger than an airgap distance between the second section of the cover and the main housing.
However, Ferrie further teaches the gap may be configured based on insulation requirement ([0134]).
Zhao, directed to a cigarette heating device, teaches an air gap that has an insulation effect and having air insulation near the heating assembly helps a user to not feel too hot when touching the device ([0008]).
As such, Zhao teaches a larger insulation requirement near the heating assembly so that the device is not too hot when a user touches the device.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to configure the air gap of Ferrie to be larger near the heating assembly due to the larger insulation requirement as taught by Zhao, because both Ferrie and Zhao are directed to heating devices with air gaps for insulation, Zhao teaches insulation near the heating assembly makes the device not too hot for when a user touches the device, and this merely involves applying a known technique (i.e. more insulation near a heating assembly) to a similar device ready for improvement to yield predictable results. As such, modified Zhao teaches an airgap distance between the first section of the cover and the main housing is larger than an airgap distance between the second section of the cover and the main housing.
Abi, directed to an aerosol provision device, further teaches that the thickness of an element affects the size of an air gap (page 21, third paragraph, making the insulating member thinner to increase the air gap size).
Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the air gap of Ferrie by changing the thickness of the cover element to change the size of the air gap as taught by Abi, because both Ferrie and Abi are directed to aerosol generating devices with air gaps, Abi teaches a known way to change the size of an air gap, and this merely involves choosing from a finite number of identified, predictable solutions to change the size of an air gap, with a reasonable expectation for success. As such, modified Zhao teaches the first thickness being thinner than the second thickness in order to have a larger air gap around the heating element, and therefore teaches the cover comprising a discrete set of different thicknesses.
Regarding claim 2, Ferrie teaches
Wherein the entire cover covers a portion of the main housing (as shown in figure 3), and wherein the air gap is formed between the portion of the main housing covered by the cover and the cover (gap 235 is defined between an external surface 229 of the housing and an internal surface 236 of the panel, [0132], figures 3-4).
Regarding claim 3, Ferrie teaches wherein the air gap is enclosed between the main housing and the cover (gap 235 is defined between an external surface 229 of the housing and an internal surface 236 of the panel, [0132], figures 3-4).
Regarding claim 4, Ferrie teaches:
Wherein a section or the entire air gap is formed adjacent to a section of the portion of the main housing of which at least a part is adjacent to the heater, or wherein a section of or the entire air gap is formed adjacent to a section of the main housing of which the entire section is adjacent to the heater (the gap 235 may be provided over substantially entire length of the housing 227 [0132]).
Regarding claims 5 and 7, as modified Ferrie teaches the air gap adjacent to the heater being larger than the air gap not adjacent to the heater, this defines wherein different sections of the air gap have different average gap distances and wherein the air gap includes a first section of the air gap with a first average air gap distance and a second section of the air gap with a second air gap distance different from the first air gap distance.
Regarding claim 6, Ferrie does not appear to disclose the average air gap distance between the main housing and the cover portion. However, The courts have yielded that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP § 2144.04(IV)(A).
Regarding claim 8, Ferrie teaches wherein the cover comprises a thermal conductor on at least a portion or all of its inner surface that faces the main housing when the cover is releasably attached to the main housing (where the panel may be formed from metal, [0022], which is a thermal conductor).
Regarding claim 14, Ferrie teaches:
An operation interface (user interface UI) portion is provided within the air gap on the surface of the portion of the main housing facing the cover when the cover is attached to the main housing (where the panel adjacent to the user interface may be deformable such that the user may interact with the user interface through said deformable portion ([0023]), and as such there would be an air gap between the main housing that comprises the operation interface and the cover element).
Wherein the operation interface portion comprises an input for receiving an operation input by a user (the UI may include input means to receive operative commands from the user, [0050]).
Regarding claim 15, Ferrie teaches:
An output (output means of the UI, [0051]) within the air gap on the surface of the portion of the main housing facing the cover when the cover is attached to the main housing (where the panel adjacent to the user interface may be deformable such that the user may interact with the user interface through said deformable portion ([0023]), and as such there would be an air gap between the main housing that comprises the operation interface and the cover element).
For indicating an operation output of the aerosol generation device, wherein the output comprises an indicator light (the output means may comprise a light to indicate a condition of the device, [0051]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (EP3711571, cited in IDS dated 4/12/2023) in view of Abi (WO2020/182743, cited previously) and Zhao (CN110279147A, citations will refer to the English equivalent US2021/0321673) as applied to claim 8 above, and further in view of Paprocki (US2016/0255879).
Regarding claim 9, Ferrie does not appear to disclose wherein the thermal conductor comprises a thermally conductive strip, layer, rod, or bar, and wherein the thermal conductor comprises a copper material.
Paprocki, directed to an apparatus for heating smokable material, teaches:
A cover element (outer housing 2) with an innermost surface that may be coated, partially or fully, which a material that is a good heat conductor. A metal coating, such as of copper, may be used for this purpose ([0073]).
The heat conductive coating helps to dissipate any heat that has been conducted to the outer housing which helps to prevent hot spots building up on the outer housing 2 ([0073]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the cover element of Ferrie by coating the inner most surface with a metal coating such as copper as taught by Paprocki, because both Ferrie and Paprocki are directed to cover elements of aerosol generation devices, Paprocki teaches this helps to prevent hot spots building up on the outer housing, and this merely involves incorporating a known element (i.e. inner surface coating of copper) to a similar cover element to yield predictable results.
The coating of copper on the inner surface of the cover element of Ferrie reads on a thermally conductive strip or layer, and wherein the thermal conductor comprises a copper material.
Claim(s) 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (EP3711571, cited in IDS dated 4/12/2023) in view of Abi (WO2020/182743, cited previously) and Zhao (CN110279147A, citations will refer to the English equivalent US2021/0321673) as applied to claim 1 above, and further in view of Ferrie 2022 (US2022/0095684).
Regarding claims 10-11, Ferrie does not appear to disclose a cover detection means for detecting whether the cover is attached to the main housing or not.
Ferrie 2022, directed to a smoking substitute system, teaches:
A cap position sensor (i.e. cover detection means) for detecting a position of a cap ([0480]).
Providing a device having a sensor for detecting the position of a cap and a controller able to control the device in response that detection allows the device to function differently when, for example, the cap is removed. This may allow the implementation of safety controls when the cap is removed ([1115]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ferrie by incorporating a cover detection means as taught by Ferrie 2022, because both Ferrie and Ferrie 2022 are directed to covers of aerosol generation devices, Ferrie 2022 teaches this may allow the implementation of safety controls when the cover is removed, and this merely involves incorporating a known element (i.e. cap position sensor) to a similar cover of an aerosol generation device to yield predictable results.
The cap position sensor reads on wherein the cover detection means comprises sensor circuitry as recited in claim 11.
As the only positions of the cover of Ferrie are the cover either being attached or not attached, modified Ferrie having a cover detection means would detect whether the cover is attached to the main housing or not.
Regarding claim 12, modified Ferrie further teaches wherein the sensor circuitry comprises a Hall sensor (Ferrie 2022, the cap position sensor may, for example, be in the form of a Hall effect sensor and the cap may comprise a magnet that is arranged to be detected by the Hall effect sensor when the cap is in the first position, [0480]).
Regarding claim 13, Ferrie further teaches that the air gap may provide additional thermal insulation such that a user may be shielded from the heat resulting from prolong use of the device ([0017]).
Ferrie does not appear to explicitly disclose circuitry for controlling the operation of the aerosol generation device based on information from the cover detection means; the information comprising information about a first state in which it is detected that the cover is attached to the main housing and about a second state in which it is detected that the cover is not attached to the main housing; wherein controlling the operation of the aerosol generation device based on information from the cover detection means comprises preventing or inhibiting generation of an aerosol by the aerosol generation device if the information from the cover detecting means indicates the second state; and enabling generation of an aerosol by the aerosol generation device if the information from the cover detecting means indicates the first state.
Ferrie 2022 further teaches:
A cap engageable with the main body and movable between a closed position in which it substantially encloses the heater and an open position wherein at least a portion of the heater is exposed ([1114]).
Circuitry for controlling the operation of the aerosol generation device based on information from the cover detection means (The controller may be configured to prevent activation of the heater when the sensor detects that the cap is in the open position, [1118]).
The information comprising information about a first state in which it is detected (that the cover is in the closed position, [1118]) and about a second state in which it is detected (that the cover is in the open position, [1118]).
Wherein controlling the operation of the aerosol generation device based on information from the cover detection means comprises preventing or inhibiting generation of an aerosol by the aerosol generation device if the information from the cover detecting means indicates the second state (The controller may be configured to prevent activation of the heater when the sensor detects that the cap is in the open position, [1118]).
Enabling generation of an aerosol by the aerosol generation device if the information from the cover detecting means indicates the first state (as the controller only prevents activation of the heater if the sensor detects that the cap is in the open position, [1118]).
This may allow the implementation of safety controls when the cap is removed (which exposes the heater) ([1115]).
As the cover of Ferrie covers the main housing of the device to provide additional thermal insulation such that a user may be shielded from the heat resulting from prolong use of the device ([0017]), it would be obvious to one having ordinary skill in the art that when the cover is attached to the main housing this would be considered to be when the cover is in a closed position, and when the cover is not attached to the main housing this would be considered to be when the cover element is in an open position.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Ferrie by incorporating circuitry for controlling the operation of the aerosol generation device based on information from the cover detection means as taught by Ferrie 2022, because both Ferrie and Ferrie 2022 are directed to aerosol generation devices with cover elements for protecting a user from a heater, Ferrie 2022 teaches this may allow the implementation of safety controls when the cover is removed, and this merely involves incorporating a known cover part (i.e. circuitry for controlling the operation of the aerosol generation device based on information from the cover detection means) to a similar cover of an aerosol generation device to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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