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 and 8 and supporting remarks filed 07/28/2026 (“Amendment”) have been entered. The rejections under 35 USC 103 are maintained, albeit modified in view of the amended claim language. Claims 1, 4-5, and 8 remain pending and are examined herein.
Response to Arguments
Applicant's arguments regarding the claim rejections under 35 USC 103 (Amendment p. 4-7) have been fully considered but they are not persuasive. Applicant argues that Lord and Lee do not teach “the wick further comprises an aluminum oxide film formed directly on the outer surface of the wick” as claimed because (1) Lee does not disclose the wick 110 including an aluminum oxide film, (2) it would not be obvious to modify Lord’s support 20 with Lee’s teaching of the heat conducting element 120 and the aluminum oxide film 130, and (3) there is no motivation to combine because Lord does not disclose any preference that the support 20 has good thermal conductivity.
Regarding (1), the argument is not persuasive for the same reasons as set forth in the Non-Final Rejection mailed 04/28/2026 at p. 3-4 (“Second, Applicant argues that…Lee’s wick 110 does not include an oxide film 130”).
Regarding (2), the Examiner respectfully disagrees because the argument, that Lord’s support 20 is equated to the claimed “wick” whereas Lee’s element 120 is different from wick 110, is based on a hindsight analysis of the prior art in view of the claims. Motivation to combine is derived from the teachings of the prior art and the knowledge of one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). One of ordinary skill in the art would be motivated to combine Lord and Lee, irrespective of what the Examiner has equated to Applicant’s claimed “wick”, because one would recognize that Lord’s porous support 20 and Lee’s heat conducting element 120 both prevent direct contact between a wick and a heating element.
Regarding (3), the Examiner agrees that Lord does not explicitly disclose a preference that the support 20 has good thermal conductivity. However, one of ordinary skill in the art would recognize that the support 20 would benefit from using a material with good thermal conductivity, because Lee teaches the heat conducting element 120 having good thermal conductivity, and the support 20 is similarly situated as Lee’s heat conducting element 120 (as noted in the rejection, they both prevent direct contact between a wick and a heating element. Furthermore, one would recognize the heat transfer function of Lord’s support 20 in view of [0064-65] and Fig. 2 wherein the support 20 facilitates vaporization of liquid by delivering it to the vicinity of the heating element 17). The Applicant further argues that “Lord’s ceramic support 20 is already electrically insulating, so there is no reason to replace it with a metal and then add an insulating oxide film”, but this ignores the motivation provided in the rejection. One would be motivated to replace Lord’s ceramic support 20 with metal such as aluminum because Lee teaches aluminum for good thermal conductivity, and one would be motivated to add an aluminum oxide film to such aluminum support 20 because Lee teaches doing so to prevent electrical shortage.
The arguments directed to Christensen are moot because Christensen is not relied upon for the claim language at issue.
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, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lord (JP 2015-527884 A, US 2015/0157055 A1 cited as English translation, of record, previously cited) in view of Christensen (US 2019/0387797 A1, of record, previously cited) and Lee (KR 10-2021-0015530 A, of record, previously cited with English translation).
Regarding claim 1, Lord is directed to an electronic vapor provision device including a heater and a heater support (Abstract), the heater and support together reading on a “heating structure” as claimed. The porous heating element support 20 (“wick”) facilitates vaporization of liquid by the heating element 17 ([0036, 0064], Figs. 2-6). The support 20 is cylindrical and has an outer surface 28 pitted with a plurality of recesses 70 (which reads on the claimed first, second, and third sides, the claimed “outer surface”, and the claimed “plurality of dimples”) ([0097], compare Figs. 5-6 showing porous support 20 with Applicant’s Figs. 9-11 showing wick 554). The heating element 17 (“coil”) is wrapped around the support 20 and contacts the outer surface 28 thereof ([0064], Figs. 5-6).
However, Lord fails to disclose that the support 20 has “an inner surface disposed opposite the outer surface and defining a hollow portion” as claimed. Further, the support 20 may comprise a porous ceramic material [0036], but Lord fails to disclose that the support 20 “comprises an aluminum oxide film formed directly on the outer surface of the wick, and the coil is in contact with the aluminum oxide film”.
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Christensen is directed to vaporizer wicking elements (Title). The wick 303 is hollow with a porous jacket 307 surrounded by a heating element 302 ([0064], Fig. 4, reproduced below). The hollow wick 303 advantageously provides more absorptive and conductive surface area for liquid, which improves vaporization and liquid transfer rate while allowing for smaller wick 303 diameter [0005, 0034, 0061, 0064, 0067-68]. One of ordinary skill in the art would recognize that Lord’s porous support 20 surrounded by the heating element 17 is structurally similar to Christensen’s wick 303 surrounded by the heating element 302, and thus Lord’s support 20 would similarly and predictably benefit from having a hollow interior (which reads on “an inner surface disposed opposite the outer surface and defining a hollow portion”).
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Lee is directed to a heating assembly for an aerosol generating device comprising a heat conduction element and a wick (Title). The heating assembly includes the wick 110 surrounded by the heat conducting element 120 which is surrounded by a heating element 140 ([0107], Fig. 5). The heat conducting element 120 prevents direct contact between the wick 110 and the heating element 140 [0003-4]. The heat conducting element 120 preferably includes a metal material such as aluminum having good thermal conductivity [0009, 0112]. Lee further discloses an oxide film 130 formed on the outer surface of the heat conducting element 120 so that the heating element 140 is not electrically shorted [0107, 0121]. For instance, when the heat conducting element 120 includes aluminum, its surface may be anodized to form an aluminum oxide film 130 thereon [0118]. One of ordinary skill in the art would recognize that Lord’s support 20 similarly prevents direct contact between the wick 18 and heating element 17, and thus could predictably include a metal material such as aluminum to provide good thermal conductivity. One would further recognize that such an aluminum support 20 would further benefit by anodizing an oxide film 130 on the support surface 28 to prevent electrical shortage of the heating element 17 (which reads on “wherein the wick further comprises an aluminum oxide film formed directly on the outer surface of the wick, and the coil is in contact with the aluminum oxide film”).
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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 Lord by forming a hollow interior in the support 20 (which reads on the “inner surface disposed opposite the outer surface and defining a hollow portion”), because both Lord and Christensen are directed to heating components for vaporization devices, Christensen teaches that the hollow interior improves vaporization while allowing for smaller wick 303 diameter, 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).
Further, 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 Lord’s porous support 20 by forming it from aluminum rather than ceramic, and anodizing an aluminum oxide film 130 on the surface 28 thereof (which reads on “wherein the wick further comprises an aluminum oxide film formed directly on the outer surface of the wick, and the coil is in contact with the aluminum oxide film”), because both Lord and Lee are directed to heating components of vaporization devices, Lee teaches that the heat conducting element 120 preferably includes a metal material such as aluminum having good thermal conductivity to transfer heat while preventing direct contact between the wick 110 and heating element 140, and Lee teaches that forming an aluminum oxide film 130 prevents electrical shortage of the heating element 140, both of which one of ordinary skill in the art would recognize is similarly applicable to Lord’s support 20, and these modifications would involve a simple substitution of one known element for another to obtain predictable results and 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).
Regarding claim 5, as shown in Figs. 5-6, Lord’s recesses 70 are arranged in sets of columns longitudinally spaced apart such that they do not overlap, which reads on the claimed “plurality of first dimples” and “plurality of second dimples” (compare Figs. 5-6 with Applicant’s Figs. 9-11).
Regarding claim 8, the claim recites a “heating structure” including a “wick” and a “coil” with the same limitations as claim 1. Therefore, the “wick” and “coil” are obvious over modified Lord for the same reasons as set forth above. Lord’s porous support 20 facilitates vaporization of liquid by the heating element 17 as set forth above ([0036, 0064], Figs. 2-6), and thus the heating structure is “configured to heat the aerosol generating material” as recited in claim 8. Further, Lord discloses a liquid store 7 (which reads on the claimed “reservoir”) in fluid communication with a vaporizer 6 containing the heating element 17 and support 20 ([0052], Fig. 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lord (JP 2015-527884 A, US 2015/0157055 A1 cited as English translation, of record, previously cited) in view of Christensen (US 2019/0387797 A1, of record, previously cited) and Lee (KR 10-2021-0015530 A, of record, previously cited with English translation) as applied to claim 1, alternatively further in view of Chen (TW I308952 B, of record, previously cited with English translation).
Modified Lord discloses the heating element support 20 with recesses 70 as set forth above. The recesses 70 form gaps 80 between the heating element coil 23 and the support surface 28 at a depth of 10-500 micrometers, though other sizes are possible [0098, 0112]. Lord is silent on the cross-sectional diameter of the recesses 70/gaps 80. Thus, Lord fails to explicitly disclose the recesses 70/gaps 80 being formed with diameter about 30-100 nm as claimed. However, Lord discloses that the gaps 80 provide areas for liquid to gather prior to vaporization, increase the surface area for exposing liquid to the coil 23, and expose more of the coil 23 for vaporization [0099]. Thus, one of ordinary skill in the art would recognize that both the depth and diameter of the recesses 70/gaps 80 are result-effective variables regarding the vaporization performance and would accordingly optimize the diameter to be within the claimed range. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Additionally, the difference between what is claimed and what is disclosed by Lord is a mere change in size or proportion which does not patentably distinguish the prior art. See MPEP 2144.04(IV)(A); see also in re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Alternatively, Chen provides motivation to modify Lord in a manner that reads on the claim, as set forth below.
Chen is directed to a heat pipe and method for preparing the same (Title). The heat pipe achieves good heat conduction using an internal working fluid (p. 1, first paragraph below Title), and thus Chen is reasonably pertinent to the problem solved by the inventors of the instant application (i.e., improving heating efficiency, see Applicant’s specification at [0003, 0011]). The inner wall of the heat pipe includes a plurality of micro-depressions with diameters between 2-50 nm (p. 3, last 15 lines). The nanometer sizing increases the heat transfer area and thus the heat transfer capacity (p. 4 l. 10-20). One of ordinary skill in the art would recognize that Lord’s recesses 70/gaps 80 could be similarly sized to predictably increase their heat transfer area and capacity.
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 Lord by forming the recesses 70/gaps 80 with diameters of about 30-100 nm, because this is merely routine optimization of and/or a mere change in size from what is disclosed by Lord. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also MPEP 2144.04(IV)(A); see also in re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Alternatively, it would have been obvious to modify Lord by forming the recesses 70/gaps 80 with diameters of 2-50 nm, because Lord is directed to the same field of endeavor as the instant claims and Chen is reasonably pertinent to the problem solved, Chen teaches that the nanometer sizing increases the heat transfer area and thus the heat transfer capacity, 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
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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