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
Claim 18 is amended. Claims 8 and 22 are withdrawn. Claims 20 and 21 are cancelled. Claims 1-7 and 9-19 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered and are persuasive. The objection of 9/8/2025 is withdrawn.
Applicant’s arguments regarding the specification for incorporating new matter have been fully considered and are persuasive. The objection of 9/28/2025 is withdrawn. It is noted that the Office action of 9/8/2025 did not object to any allegedly improper use of trade name and/or marks used in commerce, but merely indicated instances in which applicant permissibly and properly used such names and/or marks.
Applicant’s arguments regarding the objection to the claims have been fully considered and are persuasive. The objection of 9/8/2025 is withdrawn.
Claim Interpretation
Regarding claim 18, the claim recites the limitation “the 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 there between,” which is considered to be a statement regarding the intended use of the claimed chamber since the article is separate from the device. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the claim will be interpreted as if it required a chamber into which a consumable could be inserted while maintaining an air gap.
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.
Claim 19 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.
Regarding claim 19, it is unclear what structure is required by the limitation “the hollow chamber comprises the first heating element or the second heating element.” Does this mean that one of the heating elements must be located within the hollow chamber, that the wall of the chamber is defined by one of the heating elements, or that the heating elements are located in contact with the wall of the heating chamber? The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if it required either the first or second heating elements to be located outside of the hollow chamber.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5-6, 10-11, 13-16 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thorsen (WO 2019/053268).
Regarding claims 1 and 14, Thorsen discloses an apparatus for heating smokable material to volatilize at least one component of the smokable material comprising a thermal insulator comprising an inner wall at least partially defining a heating zone for receiving the smokable material article and comprises heating material that is heatable by penetration with a varying magnetic field to heat the heating zone (figure 3, reference numeral 110) and an outer wall (figure 3, reference numeral 112) that, together with the inner wall, defines an insulation region that is evacuated to a lower pressure than an exterior region (abstract, figure 3, reference numeral 124). The body of smokable material may be shorter than the inner wall (page 26, lines 19-23). A second portion of the inner wall is heated by conduction to heat a portion of the smokable material (page 27, lines 31-33, page 28, lines 1-11). This portion of the inner wall that heats by conduction is considered to meet the claim limitation of a second heating element extending beyond the heating zone.
Regarding claim 2, Thorsen discloses that the evacuated insulation region is defined by an insulation region located between the inner and outer walls (abstract). The outer wall extends the entire length of the inner wall (page 13, lines 12-20), indicating that the insulation region extends past the entire heating zone.
Regarding claim 5, Thorsen discloses that the inner wall is made of a magnetically impermeable material (page 16, lines 12-22), indicating that it would not be heated by a varying magnetic field.
Regarding claims 6 and 11, Thorsen discloses that the magnetically impermeable material is glass (page 15, lines 21-33, page 16, lines 1-2).
Regarding claim 10, Thorsen discloses that the outer wall is made of a magnetically impermeable material (page 16, lines 12-22), indicating that it would not be heated by a varying magnetic field.
Regarding claim 13, Thorsen discloses that the heating material is a metal (page 3, lines 5-6), which is considered to be capable of being heated by conduction.
Regarding claim 15, Thorsen discloses that the varying magnetic field is created by a magnetic field generator (abstract).
Regarding claim 16, Thorsen discloses that the heating material is ferritic stainless steel (page 3, lines 8-11).
Regarding claim 18, Thorsen discloses that the article is inserted into an opening of the apparatus that forms a hollow tube defined by a wall (page 10, lines 22-32, figure 1, reference numeral 144), which is considered to meet the claim limitation of a hollow chamber. It is evident that an air gap could be formed between the article and the hollow tube if the article were of sufficient size to allow an air gap.
Regarding claim 19, Thorsen discloses that the heating materials are located outside of the chamber (figure 1).
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.
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Thorsen (WO 2019/053268) in view of Hupkes (US 2023/0165309).
Regarding claims 3 and 4, Thorsen discloses all the claim limitations as set forth above. Thorsen does not explicitly a gap between the inner wall and the heating materials.
Hupkes teaches a heater arrangement for an aerosol generating device having insulation that is wrapped around the heating chamber (abstract) with a gap between the heating chamber and the insulation so that heat transfer to the insulation is minimized [0010]. The gap is considered to meet the claim limitation of an air gap since it is not sealed to form a vacuum.
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 a space between the inner wall and heating materials of Thorsen. One would have been motivated do so since Hupkes teaches that providing a gap minimizes heat transfer to the insulation.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Thorsen (WO 2019/053268) in view of Anthony (US 9,148,040).
Regarding claim 7, Thorsen discloses all the claim limitations as set forth above. Thorsen does not explicitly disclose the inner wall being made from a polymer with a melting point of at least 250 °C.
Anthony teaches an electromagnetic component (abstract) having casing made from PEEK, a non-magnetic polymer (column 4, lines 60-67). Applicant’s specification discloses that PEEK mechanical stable at up to at least 250 °C (page 14, lines 11-27).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the inner wall of Thorsen from the PEEK of Anthony. One would have been motivated to do so since Anthony teaches that PEEK is suitable to form a non-magnetic casing. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Regarding claim 12, Thorsen discloses all the claim limitations as set forth above. Thorsen does not explicitly disclose the outer wall being made from a polymer with a melting point of at least 250 °C.
Anthony teaches an electromagnetic component (abstract) having casing made from PEEK, a non-magnetic polymer (column 4, lines 60-67). Applicant’s specification discloses that PEEK mechanical stable at up to at least 250 °C (page 14, lines 11-27).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the outer wall of Thorsen from the PEEK of Anthony. One would have been motivated to do so since Anthony teaches that PEEK is suitable to form a non-magnetic casing. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Thorsen (WO 2019/053268).
Regarding claim 9, Thorsen discloses all the claim limitations as set forth above. Thorsen additionally discloses that the pressure in the insulation is between 10-1 Torr to 10-7 Torr (page 12, lines 19-28). Thorsen does not explicitly disclose the claimed range being obvious.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Thorsen (WO 2019/053268) in view of Rossoll (US 11,399,564).
Regarding claim 17, Thorsen discloses all the claim limitations as set forth above. Thorsen does not explicitly disclose the heating material covered with a corrosion resistant coating.
Rossoll teaches a susceptor assembly for inductively heating an aerosol forming substrate that has an anti corrosion coating (abstract) to improve the aging characteristics of the susceptor (column 3, lines 42-56).
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 heating materials of Thorsen with the coating of Rossoll. One would have been motivated to do so since Rossoll teaches coating a susceptor to impart improved aging characteristics.
Response to Arguments
Regarding the rejection under 35 USC 112(b), applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that applicant’s specification indicates to one of ordinary skill in the art the meaning of the claim limitation, however, the portion of applicant’s specification that applicant refers to introduces even more confusion. That portion of the specification uses the term “comprises” but then goes on to describe the heating element being inside, outside, or integral with the hollow chamber. It is therefore unclear whether a heating element located as described in applicant’s specification would further limit claim 18. The rejection is therefore maintained.
Regarding the rejections under 35 USC 102, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the cited portion of Thorsen does not disclose the required separate heating elements and inner wall, (b) that the second heating element of Thorsen is not disclosed as extending from an axial end of the first heating element, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), applicant’s claims do not explicitly require that the heating element be a separate physical component. The term “inner wall” is interpreted as just the inside face of the heating element, which extends across the entire width of the inner wall that functions as a heating element of Thorsen.
Regarding (b), Thorsen discloses that second portion of the inner wall transfers heat to a portion of the body of smokeable material that is located towards the distal end of the body of smokeable material (page 27, lines 31-33, page 28, lines 1-11). This indicates that the second portion of the inner wall, which is considered to be the second heating element, would be located distal of the first heating element. The distal direction is of course an axial direction.
Regarding (c), all claims are rejected as set forth above.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the claims are allowable due to dependence on an allowable claim, however, all claims are rejected as set forth above.
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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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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755