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 .
Drawings
The drawings are objected to because the drawing submitted on 2/22/2025 is missing Figures 1a and 1b. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the heating structure in claim 1 wherein the heating is a functional language with the term structure being a generic placeholder for means.
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.
The heating structure is interpreted as an electrical resistance heating metal layer/foil as disclosed in the specification, or its equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites for at least 250º C which a narrower range in a broader range of at least 300º C; and claim 5 recites the broad recitation of at least 30 mm and the claim also recites a range of at least 0.5 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1-10 and 13 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.
Claims 2, 5, 7 and 13 recite for “in particular” but it is unclear if such term is for the claim scope that includes all the recited elements or for alternatively recited elements. For purposes of examining, the term “in particular” is interpreted as being an alternative “or” recitation.
Claim 12 is 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 12 lacks proper antecedent basis for “the ADM method or CVD method or CSD method or PVD method” and the acronyms for ADM, CVD, SCD or PVD need to be stated what each stands for clarity.
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.
Claim(s) 1-6, 8-11, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajaligol et al (US 5,665,262).
With respect to claim 1, Hajaligol discloses the flexible heating element claimed including an electrically conductive substrate formed of a metal layer/foil (shown by a thin metal substrate 300 having a thickness of 3-5 mils that is equivalent to .0076 mm to 0.127 mm), an insulation layer (shown by a ceramic layer 310) formed on one side of the substrate, a heating structure (shown by a heating element 122) formed on one side of the insulation layer facing away from the substrate (also, see Figure 5) wherein the heating element has a thickness of less than 1.0 mm as the substrate (300) has the thickness of 0.076 mm to 0.127 mm that is within the claimed range of 0.02 mm to 0.5 mm, the insulation layer having a thickness of 0.1 to 10 mils (equivalents to 2.54 um to 254 um), and the heating structure having a thickness of 1 to 2 mils (.023 mm to .05 mm) which shows the total thickness of the heating element that is less than 1.0 mm. Also, see column 11, lines 10-12 and lines 62-65, and column 18, lines 29-31.
Hajaligol, however, shows a broader range of the insulation layer thickness of 2.54 um to 254 um than the claimed range of 0.2 um to 30 um, and it would have been obvious to one of ordinary skill in the art to adapt Hajaligol with the insulation layer thickness of 0.2 um to 30 um as a matter of optimization to form the overall thickness of the heating element thinner which would predictably allow more flexibility of the heating element which can be more efficiently or effectively rolled up or shaped to form the desired cylindrical tube or rod as shown in Figure 4.
With respect to claims 2 and 3, Hajaligol discloses that the insulation layer is a metal oxide layer (e.g., alumina/aluminum oxide; column 11, lines 49-59).
With respect to claim 4, Hajaligol discloses the insulation layer claimed wherein the method by which the insulation is produced renders the claim as a product by process wherein the apparatus/product does not depend on its method of production but by its product/structure itself. MPEP 2113.
With respect to claim 5, Hajaligol discloses that flexible heating element including the substrate that can be provided in the form of a sheet or in a cylindrical tube (column 11, lines 7-21) that receives a cigarette (23) having a diameter of 7.5 mm and 8.5 mm (which respectively has a radius of 3.75 mm and 4.25 mm; also, see column 9, lines 47-51) that meets the claimed citation of at least .5 mm, and it would also have been obvious to adapt Hajaligol with the bending radius having the claimed range or any other suitable bending radius, lacking criticality, as a matter of optimization to form various shapes or diameters of the cylindrical tube to receive varying sizes of cigarettes as desired by the user.
With respect to claim 6, Hajaligol discloses the substrate metal foil (300) that is made of an aluminum alloy (column 11, lines 6-21; column 14, lines 35-36).
With respect to claim 8, Hajaligol discloses the heating structure (122) that is applied directly on the insulation layer (310). Also, see Figure 5.
With respect to claim 9, Hajaligol discloses the heating structure that is formed between two substrate portions as the two substrate portions 3being formed by folding or bending of the substrate (300) which is shown by a tubular form as illustrated in Figure 4.
With respect to claim 10, Hajaligol discloses the heating structure having at least two contact pads (shown by 128) connected to the heating structure (also, see Figures 5 and 6A) wherein the contact pads are formed on the side of the insulation layer away from the substrate (300).
With respect to claim 11, Hajaligol discloses the method including a substrate that is formed of a metal foil (300) that is provided with an insulation layer (310) formed thereon, and a heating structure (122) applied to the side of the insulation layer facing away from the substrate (300).
With respect to claim 13, Hajaligol discloses the method including the heating structure that is applied by thermal printing or spraying a film or an ink containing metal. Also, see column 13, line 57 to column 14, line 10.
With respect to claim 15, Hajaligol discloses the flexible heating element used in an electrical smoking device.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajaligol as applied to claims 1-6, 8-11, 13 and 15 above and further in view of Gotoh et al (US 2016/0255680).
Hajaligol discloses the flexible heating element including the substrate metal foil that is made of NiCr or aluminum alloy but does not show the substrate being a steel including a FeCrAl alloy.
Gotoh shows it is known to provide a metal that can be made of NiCr or a steel such as FeCrAl which is known to produce a high heating temperature with a good oxidation resistance (para 0052).
In view of Gotoh, it would have been obvious to one of ordinary skill in the art to adapt Hajaligol with the substrate metal foil that can be made of steel including FeCrAl alloy or any other suitable steel as an alternative material that can provide high heating while providing a good oxidation resistance for prolong use of the heating element as known in the art.
Claim(s) 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hajaligol as applied to claims 1-6, 8-11, 13 and 15 above and further in view of Kim et al (US 2015/0014297).
Hajaligol discloses the method claimed including the insulation layer (310) that is thermally sprayed or deposited on the substrate (300; column 13, lines 23-28) but does not show by means of the ADM, CVD, or PVD method.
Kim shows it is known form an insulating layer by thermal spraying wherein the insulating layer can also be formed by physical vapor deposition PVD or chemical vapor deposition CVD (para 0038).
In view of Kim, it would have been obvious to one of ordinary skill in the art to adapt Hajaligol with the insulating layer that can alternatively formed by the CVD or PVD method as a simple substitution or as applying a known technique that can also adequately and alternatively form the insulation layer as known in the art.
With respect to claim 14, Kim further discloses that it is known to provide a passivation layer (130 shown by an insulation ceramic layer) over an heating structure (120), and it would have been obvious to provide an passivation layer such as an insulation layer over the heating structure of Hajaligol for the protection the heating structure as known in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG Y PAIK whose telephone number is (571)272-4783. The examiner can normally be reached 9:00-5:30; M-F.
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/SANG Y PAIK/Primary Examiner, Art Unit 3761