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 1-4, 6-18 and 20-22 are pending.
Claim 1 has been amended.
Claims 5 and 19 have been cancelled.
Claims 21 and 22 are new.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Independent claim 1 has been amended (addition indicated by underline) to require that the heating element is "sleeved outside the sleeve in a full-contact, heat transfer arrangement and extending in an axial direction along the length of the sleeve."
Support for the added limitation "in a full-contact, heat transfer arrangement" is found in the specification as originally filed, for example, in the description of the heating element 20 being wrapped as a layer-shaped structure around the outside surface of the metallic sleeve 10 to form a cylindrical, axially extending heater that evenly warms the sleeve and the vaporizable material contained therein.
This amendment narrows the claim and captures the actual heat-transfer concept of the present invention, namely that the metallic heating element is in full, substantially continuous thermal contact with the outer surface of a metallic sleeve along the axial heating length, such that the sleeve itself functions as the primary heat-transfer body for the tobacco cigarette received in the sleeve.
As now claimed, the heating element is not merely "sleeved outside" a sleeve in a generic sense, but is required to be:
made of metal materials,
sleeved outside a metallic sleeve of matching cylindrical form,
disposed in a full-contact, heat-transfer arrangement with the sleeve, and
extending axially along the length of the sleeve to heat that sleeve.
In the present application, the heating element 20 is a thin, layer-shaped metallic sheet wrapped around the cylindrical sleeve 10 so as to form a close-fitting cylinder whose inner surface substantially fully contacts the outer surface of the sleeve over the heating length. The metallic sleeve 10 itself is specifically selected as a high-thermal-conductivity member and is intended to receive the tobacco cigarette directly, so that heat generated by the heating element 20 is efficiently transferred via metal-to-metal contact into the sleeve and then to the tobacco.
Thus, the "full-contact, heat-transfer arrangement" in Claim 1 denotes a structural and functional configuration in which:
there is substantially continuous circumferential contact between heater and
sleeve (not isolated or point contacts),
there is substantially continuous axial overlap between heater and sleeve
along the heating length, and
the purpose of that contact is to maximize conductive heat transfer into the
metallic sleeve that directly receives the cigarette.
Counts does not disclose such a configuration.
Examiner’s Response A:
The Examiner respectfully disagrees. The Applicant is imparting structural limitations into the limitation “full-contact, heat-transfer arrangement” that are not supported by the limitation “full-contact, heat-transfer arrangement”. The limitation “full-contact, heat-transfer arrangement” is not expressly defined in the specification and thus the broadest reasonable interpretation is applied to determine the scope of this limitation. The broadest reasonable interpretation of this limitation just requires contact and heat-transfer. There are no limitations that state that the sleeve extends the entire length of the heating element or that there is substantially continuous circumferential contact between the heating element and sleeve. There are no limitations that specify that the heating element is concentric with the sleeve, with the heating element located outside the sleeve, and that the sleeve extends the entire length of the heating element.
Applicant Argument B:
The Examiner relies on Counts' heater assembly 89, the heater elements 43, and the spacer 49 or combined member 49A, and takes the position that the heating elements are "sleeved outside the sleeve surface 97 and 97A ... and extend in an axial direction along the length of the sleeve." However, when the actual structure in Counts is reviewed, the "sleeve surfaces" 97, 97A are in fact outer surfaces of spacer/fixture components that support the heater array, not a metallic cigarette-receiving sleeve in direct heat-transfer contact with the heater to heat a tobacco cigarette positioned inside that same sleeve.
Counts is concerned with a radial array of discrete heater elements 43 that are bowed inward toward the cigarette and contact it at localized regions to deliver eight individual puffs; the structural arrangement is optimized for repeated cycling and aerosol management, not for creating a full-contact, axially continuous metallic interface to a metallic sleeve that itself receives the cigarette.
By contrast, in the present invention, the metallic sleeve 10 both:
defines the receiving chamber for the solid vaporizable material (e.g. a
tobacco cigarette), and
is concentrically enveloped by a layer-like metallic heating element 20 in
substantially full circumferential and axial contact, thereby forming a
full-contact, heat-transfer arrangement.
Counts' heater array on the outer surface 97/97A of a spacer is therefore structurally and functionally different from Applicant's axially continuous metallic sleeve/heater combination.
Examiner’s Response B:
The Examiner respectfully disagrees. The instant claims do not claim that the metallic sleeve “is concentrically enveloped by a layer-like metallic heating element 20 in substantially full circumferential and axial contact” although the quoted language is supported by the specification and does convey the Applicant’s inventive concept.
Applicant Argument C:
While Counts mentions that parts of the heater assembly can be formed from metal-based or polymer-based materials and that heater elements are made from high-temperature alloys, it does not teach that:
the cigarette is received in a metallic sleeve that itself is the main thermal
interface, nor
the heater forms a substantially full-contact, metal-to-metal interface around
that sleeve along its axial length for efficient conduction into the sleeve.
In fact, Counts emphasizes avoiding direct electrical contact between metallic carriers and heater elements by providing insulation and barrier structures, so as to prevent shorting and contamination. In the present application, by contrast, the metallic sleeve and metallic heater are intentionally brought into close metal-to-metal thermal contact (with an electrical insulating layer where needed) to maximize heat flux into the sleeve and produce even axial heating of the cigarette.
The Examiner's position that it is "inherent" or "obvious" in Counts that the heating element is configured to heat such a sleeve, because both parts are "metal" and "in contact," overlooks this difference in structural configuration and intended thermal function. Counts' discrete heater elements contacting either an inner cigarette wall or a thin overwrap at localized regions are not equivalent to a layer-like heating element wrapped in continuous, full-contact fashion around a metallic sleeve along the heating length.
Examiner’s Response C:
The Examiner respectfully disagrees. The structural configurations that the Applicant is arguing are not claimed limitations. The broadest reasonable interpretation is applied to the instant claims.
Applicant Argument D:
The full-contact, axial arrangement in amended claim 1 is not an arbitrary positional detail; it produces a specific technical effect that is neither taught nor suggested by Counts.
In particular:
The metallic sleeve 10 is designed as a uniform heat-spreading body around
the tobacco; it receives heat from the heater 20 in a substantially uniform
circumferential and axial manner due to the full contact between the two metal
components.
The various through-hole patterns and heating zones in the heating element
are configured specifically to equalize resistance and current density so that
the sleeve is heated evenly, both circumferentially and axially, thereby
overcoming the uneven heating problem identified in the background (FIG. 1
and associated description).
The full-contact, sleeve-encompassing arrangement allows the heating length to be carefully matched to the sleeve length and to the tobacco segment, providing a consistent low-temperature bake rather than localized or spot heating at a few discrete peripheral regions.
Counts' radially distributed discrete heaters are designed instead to deliver a series of localized heating events to limited peripheral regions of the tobacco web for each puff, with deliberate limitations on conduction and aerosol back-flow. Counts does not teach or suggest that one should convert that architecture into a continuous, full-contact, sleeve-encompassing heater/sleeve configuration, nor does it recognize the problem of achieving uniform, low-temperature baking along a metallic sleeve receiving a whole cigarette, as solved by Applicant.
Examiner’s Response D:
The Applicant is arguing that Counts does not teach the inventive concept, however, the inventive concept is not being examined, only the instant claims. The instant claims currently do not capture the inventive concept which includes a continuous, full-contact, sleeve-encompassing heater/sleeve configuration and that the metallic sleeve “is concentrically enveloped by a layer-like metallic heating element 20 in substantially full circumferential and axial contact”.
Applicant Argument E:
Even if one were to start from Counts and consider generic "optimization," there is no teaching or suggestion that a person of ordinary skill would:
replace the radially spaced discrete heaters and the spacer 49/49A
arrangement with a thin sheet-like metallic heater wrapped in full contact
around a dedicated metallic sleeve that receives the cigarette, and
configure that heater and sleeve such that the heating length axially matches
the sleeve length and applies substantially uniform, full-contact conductive
heating along that length.
Counts focuses on reusability of discrete heater elements, prevention of aerosol condensation on permanent components, and electronic control of individual heater activations; its heater geometry and fixture design are tailored to those goals. There is no teaching in Counts that full-contact, metal-to-metal, sleeve-encompassing heating would be desirable, let alone that it would solve the specific problem of uneven heating of a cylindrical vaporizer as described in the present application.
Moreover, the present application's use of through-hole patterns in different heating zones to equalize resistance and hence heat distribution over a full-contact, axially extending sleeve is a coordinated design that depends on the heater being in full contact with the sleeve; the hole patterns are not merely decorative but are tailored to the full-contact geometry. Counts neither discloses nor suggests this combination of features and functional relationships.
Examiner’s Response E:
The Examiner respectfully disagrees. The Applicant is arguing a hypothetical rejection with Counts as the primary reference, however, that is not the instant rejection. The instant claims, which do not capture many of the structural limitations that the Applicant is arguing, are unpatentable over Counts.
Applicant Argument F:
When properly construed in light of the present specification, amended claim 1 recites:
a metallic sleeve that defines a receiving chamber for a tobacco cigarette,
a metallic heating element sleeved outside the sleeve in a full-contact,
heat-transfer arrangement and extending axially along the length of the
sleeve, and
a multi-zoned through-hole configuration in the heating element that adjusts
local resistance and ensures even heating.
Counts does not disclose a metallic sleeve that both receives the cigarette and is fully and continuously contacted by a metallic heating element along its length for efficient conductive heating. Counts teaches a fundamentally different heater architecture based on discrete, radially arranged heater elements, spacer/fixture sleeves, and aerosol barrier structures, which does not provide the full-contact, axial heat-transfer arrangement required by amended claim 1.
Accordingly, the differences between amended claim 1 and Counts are not matters of routine optimization, but instead reflect a distinct structural and functional solution to the uneven-heating problem identified in the present application. For these reasons, Applicant respectfully submits that amended claim 1 is not obvious over Counts, and withdrawal of the § 103 rejection of claim 1 (and the claims depending thereon) is warranted.
Examiner’s Response F:
The Examiner respectfully disagrees. The Applicant is arguing structural features from the specification, not the instant claims. These differences have been particularly pointed out in previous Examiner Responses.
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) 1-3, 7, 8, 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts (US 5388594).
Regarding claims 1 and 15, Counts teaches a low-temperature baked vaporizer (39), comprising: a sleeve (49, Fig. 3A and 49A, Fig. 5), for receiving a tobacco cigarette, wherein the sleeve has a receiving chamber configured for receiving the tobacco cigarette (cavity associated with 49, Fig. 3A and 49A, Fig. 5; col. 11, lines 14-20). Counts teaches that the sleeve is part of the heater assembly (col. 11, lines 10-14) and that the heater assembly is made of metal materials (col. 14, lines 3-9).
Counts teaches a heating element (89), made of metal materials (col. 14, lines 3-9) and sleeved outside the sleeve (surface 97 and 97A which is the exterior surface of sleeve 49 and 49A, respectively) and extending in an axial direction along the length of the sleeve (Fig. 3A and Fig. 5; col. 11, lines 28-31). The heating elements (89) are sleeved outside the sleeve (surface 97 and 97A which is the exterior surface of sleeve 49 and 49A, respectively) in a “full-contact, heat transfer arrangement” because the heating elements are in contact and thus enable heat transfer.
Counts teaches portions of the heating element (89) are secured around an exterior surface (97) of the sleeve (49), that the sleeve is part of the heater assembly (col. 11, lines 10-14) and that the heater assembly is made of from metal materials (col. 14, lines 3-9). While Counts does not expressly teach that the heating element is configured for heating the sleeve, given that both are metal, both are part of the heater assembly and both are in contact it is inherent that the heating element is configured for heating the sleeve, or in the alternative, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the heating element configured for heating the sleeve since the sleeve is part of the heater assembly, thus heating the sleeve via the heating elements would have been efficient.
With respect to the limitation that the through holes of the heating element are configured for adjusting resistance of the heating element, this is a property of the apparatus claims. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Counts teaches that the heating element comprises a plurality of through holes (openings in the heating element as seen in Fig. 3A, Fig. 5 and Fig. 8). Counts also teaches that other patterns other than the one expressly disclosed in Counts can be employed and also provide a compact and efficient heater element (col. 15, lines 49-53). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the plurality of through holes in different heating zones have at least one of different shapes, different sizes and different distances between themselves since the courts have held that it is not inventive to optimization within prior art conditions or through routine experimentation, unless there is evidence of criticality. See MPEP 2144.04 IIA.
Regarding claims 2 and 3, Counts teaches that the plurality of through holes are divided to first through holes and second through holes, wherein the first through holes and second through holes are axially dispersed on the heating element and several first through holes and several second through holes are symmetrically arranged respectively (Fig. 6, wherein through holes that directly oppose each other on the heating element are labeled first through hole and second through hole).
Regarding claim 7, Counts teaches that the heating element comprises a cut (between two 43), a first electrode and a second electrode (95), the first electrode and the second electrode are disposed at two sides of the cut (Fig. 5).
Regarding claims 8 and 12, Counts teaches that the heating element comprises a first heating area and a second heating area extending along an axial direction thereof (labeled in Figure below), and each heating area comprises electrode connecting parts (95); the first and second heating areas both comprise several sets of through holes to be circumferentially arrayed (see Figure below). Counts teaches that the first heating area and the second heating area are in serial connection via a connector (121 in Fig. 6).
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Regarding claims 10 and 11, Counts teaches that the heating element comprises a plurality of through holes (openings in the heating element as seen in Fig. 3A, Fig. 5 and Fig. 8). Counts also teaches that other patterns other than the one expressly disclosed in Counts can be employed and also provide a compact and efficient heater element (col. 15, lines 49-53). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the plurality of through holes in different heating zones have at least one of different shapes, different sizes and different distances between themselves since the courts have held that it is not inventive to optimization within prior art conditions or through routine experimentation, unless there is evidence of criticality. See MPEP 2144.04 IIA.
Regarding claims 13 and 14, Counts teaches that the heating element comprises a plurality of through holes (openings in the heating element as seen in Fig. 3A, Fig. 5 and Fig. 8). Counts also teaches that other patterns other than the one expressly disclosed in Counts can be employed and also provide a compact and efficient heater element (col. 15, lines 49-53). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the plurality of through holes in different heating zones have at least one of different shapes, different sizes and different distances between themselves since the courts have held that it is not inventive to optimization within prior art conditions or through routine experimentation, unless there is evidence of criticality. See MPEP 2144.04 IIA.
Regarding claim 16, Counts teaches a low-temperature baked smoking set, comprising: the vaporizer according to claim 1 (see rejection of claim 1, above); and a power supply (37) configured for supplying power to the vaporizer (col. 5, lines 23-24).
Regarding claims 17 and 20, Counts teaches a heating element of the vaporizer according to claim 1 (see rejection of claim 1, above), comprising: a metal sheet (Fig. 7) having several heating zones (boxes in replicated Fig. 7 below) with each heating zone having several through holes in array-arrangement.
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With respect to the limitation that the through holes of the heating element are configured for adjusting resistance of the heating element, this is a property of the apparatus claims. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Counts teaches that the heating element comprises a plurality of through holes (openings in the heating element as seen in Fig. 3A, Fig. 5 and Fig. 8). Counts also teaches that other patterns other than the one expressly disclosed in Counts can be employed and also provide a compact and efficient heater element (col. 15, lines 49-53). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the plurality of through holes in different heating zones have at least one of different shapes, different sizes and different distances between themselves since the courts have held that it is not inventive to optimization within prior art conditions or through routine experimentation, unless there is evidence of criticality. See MPEP 2144.04 IIA.
Regarding claim 18, Counts teaches that the heating element is cylindrical (Fig. 6), the heating element has a first side edge and a second side edge; the first side edge and the second side edge are close but contactless with each other in the circumferential direction (see Fig 6 below).
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Regarding claim 19, Counts teaches that the metal sheet is made of nickel-chrome alloys (col. 14, lines 3-11).
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts as applied to claim 1, respectively, above, and further in view of EP 0822760 (Baggett hereinafter).
Regarding claim 4, Counts does not expressly teach an insulating layer disposed around the sleeve.
Baggett teaches a low-temperature baked vaporizer (39) comprising: a sleeve (71) for receiving vaporizable materials ([0063]), and a heating element (39). Baggett also teaches an insulating layer is disposed around parts of the heating element, wherein the insulating layer would be between the heating element and the sleeve (Baggett, [0161]). While Baggett teaches that the insulating layer is disposed around parts of the heating element, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the insulating layer disposed around the sleeve instead of around the heating elements because there are a limited number of options for locations of the insulating layer. Namely, the insulating layer needs to be around the sleeve, around the heating elements, around both the sleeve and the heating elements or attached to neither the sleeve nor the heating elements and just placed between the two structures, and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
With respect to the limitation that the insulation is configured for avoiding electrical conduction between the sleeve and the heating element, this is a property of the apparatus claim. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts in view of Baggett as applied to claim 4, respectively, above, and further in view of US 4947875 (Brooks hereinafter).
Regarding claim 5, modified Counts teaches a ceramic insulating layer (Baggett, [0161]), but does not expressly disclose polyimide resin.
Brooks teaches flavor delivery articles that use an electrical heating element and electrical power source to provide a flavored aerosol for inhalation (abstract). Brooks teaches that the insulative spacer adjacent the heating element can be an insulative ceramic material or a heat resistant plastic material such as a polyimide (col. 7, lines 7-11).
Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the insulating material of modified Counts from ceramic to polyimide with a reasonable expectation of success because it has been held that simple substitution of one known element (i.e. the ceramic) for another (i.e. polyimide) to accomplish the same result (insulation) is obvious to one of ordinary skill in the art (See MPEP 2141 and 2143).
Claims 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts as applied to claim 8 above, and further in view of US20110155718 (Greim hereinafter).
Regarding claim 9, Counts teaches that the heating area comprises a first side edge and a second side edge that are contactless with each other (See Fig. 6 below) and the electrode connecting parts (95 in Fig. 3A and 5) disposed between the first side edge and the second side edge and comprises a first electrode connecting part and a second electrode connecting part disposed at two axial ends of the heating area.
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Counts does not expressly teach that between the first electrode connecting part and the second electrode connecting part defines multiple different circuits along a circumferential direction of the heating area.
Greim teaches a heater for a vaporizer, the electrode connecting parts disposed between the first side edge and the second side edge, and comprises a first electrode connecting part and a second electrode connecting part disposed at two axial ends of the heating area (103); between the first electrode connecting part and the second electrode connecting part defines multiple different current circuits along an circumferential direction of the heating area (Fig. 4 and 5); each current circuit has same resistance ([0082]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have applied the electrode connecting parts of Greim to Counts with a reasonable expectation of success and predictable results, specifically to control the resistance in the electrode connecting parts.
Allowable Subject Matter
Claims 6, 21 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 21 and 22, respectively, are dependent upon claim 6 and are rejected by virtue of dependency upon claim 6.
No prior art discloses the specific components of the power supply module and their configuration. Specifically, the vaporizer further comprises a power supply module, electrically connected with the heating element, configured for supplying power to the heating element; the power supply module comprises an USB interface, a battery, a control unit, a charge circuit, a discharge circuit, a voltage detecting circuit, two switches and a battery management circuit; the battery is respectively connected with the charge circuit and the discharge circuit; two switches are respectively disposed between the battery and the charge circuit, and between the battery and discharge circuit; the charge circuit and the discharge circuit are both electrically connected with the USB interface, the discharge circuit is electrically connected with the battery management circuit; the battery management circuit is electrically connected with the heating element; the voltage detecting circuit is electrically connected with the USB interface; the control unit is connected with the two switches and the voltage detecting circuit respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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