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
This office action is in response to Applicant’s amendments filed 03/03/2026.
Claims 1-7 and 10-11 are pending and are subject to this Office Action.
Claims 1, 4, 6-7 and 10 are amended.
Claims 8-9 are cancelled.
Response to Amendment
The Examiner withdraws the objection to claim 11 for informalities due to amendments to the claims filed 03/03/2026.
The Examiner withdraws the 112 rejection of claims 8-9 for indefiniteness due to the cancellation of claims 8-9.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 03/03/2026, with respect to the 102 rejection over Spencer and the 102 rejection over Twelftree of claim 1 have been fully considered and are persuasive. Claim 1 has been amended to require the subject matter of previously presented claims 8-9 in addition to a new requirement that the controller is configured to determine a degree of carbonization of a region of the aerosol generating article. Prior art of record Twelftree teaches the limitations of previously presented claims 8-9, but does not teach determining a degree of carbonization. Prior art of record Spencer does not teach the newly included limitations. Therefore, the 102 rejections have been withdrawn. However, upon further consideration, a new obviousness ground(s) of rejection is made over Spencer in view of Twelftree, Liao et al. (US 20200237019 A1) and Randall (GB 2071856 A).
The following is a modified rejection based on amendments to the claims.
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, 7 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Spencer (US 20190133188 A1) in view of Twelftree (US 20060096607 A1), Liao et al. (US 20200237019 A1) and Randall (GB 2071856 A).
Regarding claim 1, Spencer teaches an aerosol generation device (article 110, 210, 310, 410; Figs. 1-4; [0051], [0056], [0063], [0068]) comprising: a laser radiation part (irradiative light source 122, 222, 322, 422; [0052], [0058], [0064], [0069]) configured to radiate a laser and heat an aerosol-generating article to generate an aerosol (article 110, 210, 310, 410 with smokable material 112, 212, 312, 412; [0051], [0056], [0063], [0068]); and a controller (control circuitry 232, 234, 236; [0057]) configured to control the laser radiation part so that a radiation area of the laser is adjusted, wherein the laser is reflected from the aerosol generating article (one having ordinary skill in the art would recognize that at least some portion of a laser hitting a surface would be reflected).
Spencer does not explicitly teach that the controller is configured to determine (I) a region of the aerosol-generating article irradiated with the laser based on an amount of the laser reflected from the aerosol-generating article, wherein the controller is configured to control heating of the aerosol-generating article based on a result of the determination or (II) that a degree of carbonization of the region is detected.
Regarding (I) ,Twelftree, directed to an aerosol generation device (smoking machine; [0010]) comprising a laser radiation part (heat source, which may comprise a laser; [0013], [0036]) configured to heat an aerosol-generating article (smoking article) to generate an aerosol by radiating laser to the aerosol-generating article ([0036]) and a controller (control means; [0011], [0015-0016]) configured to control the laser radiation part so that a radiation area of the laser is adjusted, teaches that the controller is configured to determine a region of the aerosol-generating article irradiated with the laser based on an amount of the laser reflected from the aerosol-generating article, and wherein the controller is configured to control heating of the aerosol-generating article based on a result of the determination ([0015-0016], [0036]; [0099-1000]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by configuring the controller to determine a region of the aerosol-generating article irradiated with the laser based on an amount of the laser reflected from the aerosol-generating article and control heating of the aerosol-generating article based on a result of the determination as taught by Twelftree because both Spencer and Twelftree are directed to aerosol generation devices using lasers to heat an article, Twelftree teaches that it is known in the art to configure a controller to detect reflected laser from the article, one having ordinary skill in the art would recognize that this would allow for more precise control of the heating, and this involves applying a known teaching to a similar device to yield predictable results.
Regarding (II), Liao, directed to a system for measuring heating performance of an aerosol generation device ([0001]), teaches that a degree of carbonization of a smoking article may be visually determined in order to monitor the smoking article and prevent harmful substances being produced ([0003]).
Randall, directed to a method for detecting carbonization of a heated component (Abstract), teaches that a degree of carbonization may be determined based on an amount of reflected light (page 1, lines 33-44). Randall further teaches that this detection may be used to prevent degradation (page 1, lines 18-27).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by configuring the controller to determine a degree of carbonization of a region of the aerosol-generating article based on an amount of the laser reflected as taught by Randall and to control heating based on the result because both Spencer and Randall are concerned with determining a heating state based on a reflected laser, Liao teaches that monitoring the degree of carbonization of a smoking article may prevent the production of harmful substances and Randall teaches that the reflected laser may be used to determine a degree of carbonization, and this involves applying a known teaching to a similar process to yield predictable results.
Regarding claim 2, Spencer teaches that the aerosol-generating article is made of a cylindrical aerosol-forming substrate that is not surrounded by a wrapper (article 110 has a cylindrical layer of smokable material 112; Fig. 1; [0050]).
Regarding claim 3, Spencer teaches that the aerosol-generating article is made of a flat aerosol-forming substrate that is not surrounded by a wrapper (article 110 has a flat layer of smokable material 112; Fig. 1; [0050]).
Regarding claim 4, Spencer teaches that the controller increases a size of the radiation area of the laser when a designated time elapses ([0083] teaches increasing the size after a puff duration. [0087-0088] further teaches changing the area irradiated after a preset time to control different flavor profiles).
Regarding claim 5, Spencer does not explicitly teach an adjusted size of the radiation area.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the adjusted size of the radiation area because one having ordinary skill would recognize that an area may be adjusted to different sizes depending on the desired heating of different sizes and types of aerosol-generating articles, and this involves applying a known teaching to a known device to yield predictable results. Furthermore, changes in size, such as the adjusted size of a radiation area, are prima facie obvious. See MPEP § 2144.04 (IV)(A).
Regarding claim 7, Spencer teaches that the controller adjusts a radiation distance from the laser radiation part to the aerosol-generating article to adjust the radiation area of the laser ([0070] teaches that the controller may control the position of the beam deflector 428, which would thereby change the radiation distance).
Regarding claim 10, Twelftree teaches that the controller controls the region of the aerosol-generating article irradiated with the laser to be changed based on the result of the determination ([0099-0100]).
Regarding claim 11, Spencer teaches that at least one of the aerosol-generating article and the laser radiation part is configured to be movable ([0048], [0065]); and the controller adjusts a movement speed of the at least one to control heating of the aerosol-generating article ([0065] teaches that the controller adjusts the movement. The controller would thus control the movement speed).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over Spencer, Twelftree, Liao and Randall as applied to claim 1 above and further in view of Lindars et al. (US 20180289909 A1).
Regarding claim 6, Spencer teaches that the laser radiation part includes a beam deflector 428, wherein the controller adjusts the beam deflector to adjust the radiation area of the laser ([0069-0070]). Spencer teaches that the beam deflector 428 may be any optical component that enables the desired manipulation of the laser ([0070]).
Spencer does not teach that the beam deflector is a focal length adjustable lens.
Lindars, directed to an aerosol generation device (vaporizer 100; [0049]) comprising a laser radiation part (heater 106 with lasers 140; [0058]) configured to radiate a laser and heat an aerosol-generating article to generate an aerosol ([0058-0059]) and a controller (laser control electronics 144; [0058]) configured to control the laser radiation part, teaches that the laser radiation part includes a focal length adjustable lens (lens 118; [0058-0059]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Spencer by making the beam deflector a focal length adjustable lens as taught by Lindars because both Spencer and Lindars are directed to aerosol generation device comprising lasers, Lindars teaches that a focal length adjusting lens is a known beam deflector for a laser, and this involves substituting one alternative beam deflector configuration for another to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 12 of copending Application No. 17/925,681 in view of Randall (GB 2071856 A). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol generating device comprising a laser radiation part configured to radiate a laser and heat an aerosol-generating article to generate an aerosol.
The claims differ in that conflicting claim 1 does not teach a controller configured to control the laser radiation part so that a radiation area of the laser is adjusted or that the controller is configured to determine a region of the aerosol-generating article irradiated based on characteristics of the reflected laser. However, conflicting claims 10 and 12 teach this limitation.
The claims further differ in that the copending claims do not explicitly teach that the controller is configured to determine a degree of carbonization based on an amount of the laser reflected.
Randall, directed to a method for detecting carbonization of a heated component (Abstract), teaches that a degree of carbonization may be determined based on an amount of reflected light (page 1, lines 33-44). Randall further teaches that this detection may be used to prevent degradation (page 1, lines 18-27).
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 conflicting claims by configuring the controller to determine a degree of carbonization of a region of the aerosol-generating article based on an amount of the laser reflected as taught by Randall and to control heating based on the result because both the conflicting claims and Randall are concerned with determining a heating state based on a reflected laser, Randall teaches that the reflected laser may be used to determine a degree of carbonization, and this involves applying a known teaching to a similar process to yield predictable results.
The claims further differ in that conflicting claim 1 teaches additional limitations directed to movement of the laser or aerosol generating article. However, all elements of rejected claim 1 are present and obvious over the conflicting claims.
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.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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