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
Claims 6, 19-21, 23-25 and 27-28 are cancelled. Claims 7, 16-17 and 29 are withdrawn. Claims 1-5, 8-15, 18, 22 and 26 are presently examined.
Applicant’s arguments regarding the objection to the drawing have been fully considered and are persuasive. The objection of 11/7/2025 is withdrawn.
Applicant’s arguments regarding the use of a trade name and/or mark used in commerce have been noted. However, the Office cation of 11/7/2025 did not object to the specification for any allegedly improper use of trade names and/or marks used in commerce, but rather indicated an instance in which applicant permissibly and properly used such a name and/or mark.
Specification
The use of the term Kovar (page 15, line 29), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claims 1-3, 8-13 and 15 are rejected under 35 U.S.C. 103 as being obvious over Saleem (US 2015/0040925) in view of Peyton (US 3,146,005).
Regarding claims 1-2, Saleem discloses an apparatus configured to heat smokeable material using a film to volatilize at least one component of the smokable material for inhalation (abstract). The heater defines heating regions ([0074], figure 1, reference numeral 10), which are considered to meet the claim limitation of a heating zone. The heating regions are surrounded by thermal insulation ([0089], figure 12, reference numeral 18) that defines a core region having a lower pressure ([0098], figure 12, reference numeral 20), which is considered to meet the claim limitation of an insulation region, an inwardly facing section (figure 12, reference numeral 21), which is considered to meet the claim limitation of an inner wall, and an outwardly facing section ([0099], figure 12, reference numeral 22), which is considered to meet the claim limitation of an outer wall. The heating regions are surrounded by the thermal insulator [0089]. The insulator rests on smokable material ([0106], figure 12, reference numeral 5) and comprises a thermal bridge ([0106]; figure 12, reference numeral 23). Saleem does not explicitly disclose an internal reinforcement.
Peyton teaches a vacuum jacket insulated conduit (column 1, lines 69-72) with inner and outer tubular members that are separated by brackets that resiliently engage with the inner and outer tubes to maintain them substantially equidistant from each other (column 2, lines 50-59).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the brackets of Peyton within the insulation of Saleem. One would have been motivated to do so since Peyton teaches brackets that maintain two walls of vacuum insulation equidistant from each other.
Regarding claim 3, Saleem discloses that the inner and outer wall are separated by a vacuum [0102], which is considered to meet the claim limitation of an air gap.
Regarding claim 8, Saleem discloses that the vacuum is on the order of 10-7 Torr [0102].
Regarding claim 9, the brackets of modified Saleem are considered to meet the claim limitation of ridges.
Regarding claim 10, Peyton teaches that the brackets are equally spaced in the radial direction around the tube (column 2, lines 50-59, figure 3), which is considered to meet the claim limitation of the ridge being arranged radially.
Regarding claim 11, modified Saleem teaches all the claim limitations as set forth above. Peyton additionally teaches that various types of retaining means may be employed to separate the inner and outer walls (column 2, lines 50-59). Modified Saleem does not explicitly teach the brackets being in the form of studs.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the brackets of modified Saleem have the shape of studs. One would have been motivated to do so since Peyton teaches that various types of retaining means may be employed. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 12, Peyton teaches that the brackets are contact with both the inner and outer walls (figure 3).
Regarding claims 13 and 15, modified Saleem teaches all the claim limitations as set forth above. Modified Saleem does not explicitly teach the brackets being integral with the inner.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the brackets integral with the inner wall. The use of a one-piece, integrated construction instead of the structure disclosed or taught in the prior art would have been within the ambit of a person of ordinary skill in the art. See MPEP § 2144.04 II A.
Claims 4-5, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Saleem (US 2015/0040925) in view of Peyton (US 3,146,005) as applied to claim 1 above, and further in view of Allen (US 63,452).
Regarding claims 4-5 and 18, modified Saleem teaches all the claim limitations as set forth above. Saleem additionally discloses that the walls of the thermal insulation are made of metallic material [0098]. Modified Saleem does not explicitly teach the walls being made from aluminum.
Allen teaches that aluminum is a noncorrosive metal (page 2, third paragraph). Applicant’s specification discloses that aluminum is not heatable by a varying magnetic field (page 16, lines 8-31, page 17, lines 1-2).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum of Allen as the metal of modified Saleem. One would have been motivated to do so since Allen teaches that aluminum is a noncorrosive metal.
Regarding claim 14, modified Saleem teaches all the claim limitations as set forth above. Saleem additionally discloses that the walls of the thermal insulation are made of metallic material [0098]. Modified Saleem does not explicitly teach the walls and brackets being made from aluminum.
Allen teaches that aluminum is a noncorrosive metal (page 2, third paragraph).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum of Allen as the to make the walls and brackets of modified Saleem. One would have been motivated to do so since Allen teaches that aluminum is a noncorrosive metal.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Saleem (US 2015/0040925) in view of Peyton (US 3,146,005) as applied to claim 1 above, and further in view of Bilat (US 12,389,951), as evidenced by Rojo-Calderon (US 10,869,366).
Regarding claim 22, modified Saleem teaches all the claim limitations as set forth above. Saleem additionally discloses that the heater is an elongate ceramic heater [0041]. Modified Saleem does not explicitly teach (a) the elongate heater element made from zirconia and (b) zirconia being heatable by a varying magnetic field.
Regarding (a), Bilat teaches an aerosol generating article (abstract) having a heater substrate made from zirconia to provide a mechanically stable support for the heating element over a wide range of temperatures (column 9, lines 42-53).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the elongate ceramic heaters of modified Saleem with the zirconia substrate of Bilat. One would have been motivated to do so since Bilat teaches a substrate that withstands the temperatures of aerosol generating articles.
Regarding (b), Rojo-Calderon teaches that zirconia is a susceptor material (column 3, lines 19-26), indicating to one of ordinary skill in the art that it would be heatable by penetration with a varying magnetic field.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Saleem (US 2015/0040925) in view of Peyton (US 3,146,005) as applied to claim 1 above, and further in view of Jia (US 11,304,452).
Regarding claim 26, modified Saleem teaches all the claim limitations as set forth above. Modified Saleem does not explicitly teach a hollow chamber surrounding the smokeable material that defines an air channel.
Jia teaches a direct heating vaporizer having a tube (figure 3, reference numeral 3), which is considered to meet the claim limitation of a hollow chamber, that surrounds a material chamber (column 3, lines 12-18, figure 1, reference numeral 1) and define an air path in the form of a gap layer between them (column 3, lines 12-18), which is considered to meet the claim limitation of an air channel. Jia additionally teaches that this arrangement allows a higher heating efficiency since external air is heated in the tube (column 3, liens 12-18).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tube and gap layer of Jia around the smokeable material of modified Saleem. One would have been motivated to do so since Jia teaches that this arrangement allows a higher heating efficiency since external air is heated in a surrounding tube.
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.
Claims 1 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-19 of copending Application No. 18/245,203 (hereafter referred to as Warren) in view of Peyton (US 3,146,005).
Regarding claim 1, Warren claims a non consumable aerosol provision device for heating aerosol generating material to volatilize at least one component of the aerosol generating material, the non combustible aerosol provision device comprising a first heating element at least partially defining a heating zone for receiving at least a portion of a consumable comprising the aerosol generating material, a thermal insulator comprising an inner wall, an outer wall, and an insulation region bound by the inner wall and the outer wall, wherein the insulation region is evacuated to a lower pressure than an exterior of the insulation region, and the thermal insulating being arranged to extend around at least part of the first heating element (claim 1). Warren does not explicitly claim at least one reinforcement.
Peyton teaches a vacuum jacket insulated conduit (column 1, lines 69-72) with inner and outer tubular members that are separated by brackets that resiliently engage with the inner outer tubes to maintain them substantially equidistant from each other (column 2, lines 50-59).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the brackets of Peyton within the insulation of Warren. One would have been motivated to do so since Peyton teaches brackets that maintain two walls of vacuum insulation equidistant from each other.
Regarding claim 2, Warren claims the thermal insulator being arranged to surround at least part of the first heating element (claim 2).
Regarding claim 3, Warren claims an air gap being present between the inner wall of the thermal insulator and the first heating element (claim 3).
Regarding claim 4, Warren claims the inner wall of the thermal insulator not being heatable by penetration with a varying magnetic field (claim 5).
Regarding claim 5, Warren claims the inner wall comprising metal (claim 6).
Regarding claim 8, Warren claims the insulation region being evacuated to a pressure of 10-3 Torr or lower (claim 9).
Regarding claim 9, the brackets of modified Warren are considered to meet the claim limitation of ridges.
Regarding claim 10, Peyton teaches that the brackets are equally spaced in the radial direction around the tube (column 2, lines 50-59, figure 3), which is considered to meet the claim limitation of the ridge being arranged radially.
Regarding claim 12, Peyton teaches that the brackets are contact with both the inner and outer walls (figure 3).
Regarding claim 22, Warren claims the first heating element being heatable by penetration with a varying magnetic field (claim 14).
Regarding claim 26, Warren claims the device comprising a hollow chamber surrounding at least a portion of the consumable when the consumable is inserted into the non-combustible aerosol provision device, and wherein an inner wall of the chamber and the at least the portion of the consumable define an air channel therebetween (claim 18).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Saleem does not teach an external reinforcement, (b) that Peyton does not teach the claimed internal reinforcement, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the claims do not require an external reinforcement at all. The external reinforcement is only claimed an alternative to the internal reinforcement. Applicant’s arguments, while they may be correct about the disclosure of Saleem, therefore fail to support patentability.
Regarding (b), applicant’s claims do not require that the internal reinforcement maintain the inner and outer walls at a fixed distance apart. Furthermore, one of ordinary skill in the art would recognize that the brackets of Peyton reinforce the outer wall since they prevent inward movement of the outer wall due to their physical structure. This would reinforce the outer wall against bending if the device was dropped or suffered an external blow.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Regarding the double patenting rejections, applicant’s arguments have been fully considered but they are not persuasive since one of ordinary skill in the art would recognize that the brackets of Peyton would reinforce the outer wall against deformation from external shocks due to their structure that reaches the outer wall.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755