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 arguments filed 04/06/2026.
Claims 16-32 are pending and are subject to this Office Action.
Claims 22-32 are previously withdrawn.
Response to Arguments
Applicant’s arguments, see pages 2-10, filed 04/06/2026, with respect to the 102 rejection(s) of claim 16 have been fully considered but they are not persuasive.
On pages 2-5 the Applicant argues that prior art Rostami does anticipate each and every element of claim 16. Specifically, the Applicant states that Fig. 6 of Rostami teaches air being conveyed axially along the cavity after passing through elements 20, rather than air being radially channeled through an annular portion of the tubular wall as claimed. The Applicant further argues that Rostami does not appropriately teach an annular air-permeable band as claimed.
The Examiner disagrees.
Regarding the radially channeled air flow, Rostami Fig. 6 depicts air entering the cavity through the air-permeable band 20, and depicts with arrows the airflow path upon entry. The Examiner also notes that air entry is depicted through two holes 30a, 30c (Fig. 5A; [0023-0024]) of the air permeable band 20, but the other two openings 30b, 30d would also channel air into the cavity. These other holes 30b, 30d would be expected to channel air that is perpendicular to that of openings 30a, 30c, and thus would be considered to radially channel an air flow into the cavity around a periphery of the tubular wall of the cavity. The Examiner further notes that in order to obtain the flow profile depicted in Fig. 6, such that the flow converges to the center of the cavity, at least some portion of the entering airflow would be expected to be in the radial direction.
Regarding the air-permeable band, Rostami teaches an air permeable portion (flow distributing elements 20; Figs. 3A, 5A) of the wall of the cavity (cylindrical sleeve or housing 200; Fig. 6). This air permeable portion comprises an annular air-permeable band (wall 20c; [0023]; Figs. 3B depicts that 20c is annular and comprises air permeable openings 30a-d). Thus, Rostami is interpreted to meet the claim as recited.
On pages 5-6 the Applicant argues that subsequent 103 rejections of the dependent claims are not appropriate, as Rostami does not accurately teach independent claim 16. The Examiner disagrees, and maintains, as above, that Rostami does teach each and every claim limitation of claim 16, including the air-permeable band. Thus, Rostami does teach an appropriate structure to modify to reach the claimed inventions of the dependent claims.
On pages 6-10 (Additional Remarks) the Applicant appears to argue that the rejection relies upon impermissible hindsight reasoning and lacks motivation to modify and reasonable expectation of success. However, the Applicant does not specify the portion of the rejection to which this argument refers. It is therefore unclear if the Applicant is arguing against the Examiner’s rejection or merely taking note of these concepts. As explained above, the Examiner maintains that the prior art rejection of claim 16 is appropriate.
The following is the maintained rejection.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-19 and 21 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Rostami et al. (US 20060070633 A1).
Regarding claim 16, Rostami teaches an aerosol-generating device (lighter 25; Fig. 1; [0005]) configured for heating an aerosol-generating article (cigarette 23; [0005]) so as to generate an inhalable aerosol from an aerosol-forming substrate of the aerosol-generating article, the aerosol-generating device comprising:
a housing (outer barrel or sleeve 300 or housing 31; Fig. 1, Fig. 6; [0021]) comprising a cavity (orifice 27; [0005]) configured to receive the aerosol-generating article 23 ([0006]), the housing being configured to define a cooling air flow path extending from outside of the housing, through an interior of the housing (via openings 302, 304; Fig. 6), to an air-permeable portion (flow distributing elements 20) of a wall of the cavity (cylindrical sleeve or housing 200) (see Fig. 6),
wherein the wall of the cavity is tubular (cylindrical sleeve 200; Fig. 6), the air-permeable portion of the wall of the cavity comprising at least one annular air-permeable band (flow distributing elements 20), the at least one annular air- permeable band 20 being configured to radially channel an air flow from the cooling air flow path into the cavity around a periphery of the tubular wall of the cavity (Fig. 6; [0022]).
Regarding claim 17, Rostami teaches the aerosol-generating article being docked in the cavity ([0005]).
The Examiner notes that, according to the claim language, the aerosol generating device is merely “configured for heating an aerosol generating article”. As such, the aerosol generating article is not within the scope of the aerosol-generating device. Thus, the aerosol generating article and its configuration are not required and the device of Rostami anticipates the claim.
Regarding claim 18, Rostami teaches that the cavity is provided with an open end (Fig. 2; [0020]) and a closed end (spacer 49; [0006]), and the aerosol-generating device is further configured to receive the aerosol-generating article via the open end of the cavity (Fig. 2; [0020]).
Regarding claim 19, Rostami teaches that the air-permeable portion 20 of the wall of the cavity comprises a plurality of holes (holes 30a-d; Figs. 3A, 3B and 4; [0023]).
Regarding claim 21, Rostami depicts that the aerosol-generating device is further configured to urge a flow of air from outside of the housing along the cooling air flow path towards the air-permeable portion of the wall of the cavity (see Fig. 6).
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Rostami et al. (US 20060070633 A1) as applied to claim 16 above, and further in view of Hepworth (US 20200345075 A1).
Regarding claim 20, Rostami teaches the at least one annular air-permeable band comprises a first annular air-permeable band and a second annular air-permeable band ([0024]). Rostami further teaches that number and location of the air-permeable bands may vary ([0027]).
Rostami does not explicitly teach that the first and the second annular air-permeable bands are axially-spaced apart from each other along a longitudinal axis of the cavity and have distinct first and second permeabilities to air flow therethrough.
Hepworth, directed to an aerosol generating device (aerosol provision device 104; [0030]) comprising a housing (housing 110; [0034]) comprising a cavity (Fig. 1) configured to receive an aerosol generating article (consumable article 102; [0031]), teaches multiple air permeable bands (112, 402) axially spaced (see Fig. 4) that have distinct air permeabilities ([0078] teaches that the amount of air into 402 is controllable). Hepworth teaches that this is to control draw resistance and ventilation ([0081]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Rostami by adding multiple axially-spaced air permeable bands with distinct air permeabilities to account for different sections of the smoking article (and different draw resistance and ventilation requirements for each of those sections) as taught by Hepworth because both Rostami and Hepworth are directed to aerosol generating devices comprising cavities with air permeable bands, Hepworth teaches the use of multiple air permeable bands to control draw resistance and ventilation, and this involves applying a known teaching to a similar device to yield predictable results.
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.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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