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 Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive.
Applicant argues that although the embodiment of LIN’s Figs 3 and 4, referred to by the Office Action is described as heating the substrate. There is no disclosure of the substrate being an aerosol-forming substrate in which heating of the substrate generates an aerosol therefrom.
Examiner noted that LIN et al. did not explicitly disclose that the non-combustion type heating device actually generates an aerosol (See paragraph 11 of Non-Final Rejection dated 12/10/2025). LIN et al. discloses that a cigarette is heated in a non-combustion manner (Abstract) to be inhaled. KUHN et al. discloses that the cigarette is heated by radio waves to release aerosol (See paragraphs [0029], [0007], [0006]). Thus, the combination of KUHN et al. and LIN et al. provide a RF heating aerosol-generating device that heats a cigarette to generate an inhalable aerosol. The cigarette represents the aerosol-forming substrate.
The combination of references is not reliant on loosely related features. The cigarette itself is an aerosol generating material when heated to below its combustion temperature, which falls within the scope of the claimed invention.
Applicant notes that LIN’s “non-combustion smoking apparatus” does not teach or suggest aerosol generation at all, and KUHN et al. does not teach or suggest modifying LIN’s shielding cavity into a dielectrically loaded resonant chamber. The Office Action therefore reconstructs Applicant’s claimed device by selectively importing functionality from KUHN et al. into LIN et al. without any teaching or suggestion of any kind. A references that does not disclose aerosol generating cannot be retroactively transformed into an aerosol-generation device by importing that function from an unrelated device.
Examiner respectfully disagrees. The courts have generally held that the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." See, Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See, Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). MPEP 2111.02, II.
In the instant case, the only reference to aerosol within the body of the claim is to the cavity having a function of receiving an aerosol-forming substrate.
The aerosol-forming substrate is a material worked upon by the apparatus, and does not impart patentability to the claims. See, In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
Thus, the “aerosol” nature of the device is merely a recitation of intended use of the claimed device, which is limited by its structure, as outlined in the body of the claim. The only recitation with respect to “aerosol” in the body of the claim is to a function of the cavity.
Given that LIN et al. heats a cigarette to below combustion temperatures to produce an inhalable smoke, (Paragraph [0006], Abstract).
It is the Examiners position that the cavity of LIN et al. is capable of receiving an aerosol -forming substrate to be heated, simply by placing such a substrate in the cavity. In such an event, the device of LIN et al., alone, meets the functional language and intended use of the claimed device.
Applicant argues that LIN et al. also fails to disclose “a resonant chamber” as claimed. Instead, LIN et al. only describes Fig. 3 has having an “electromagnetic shielding body 70”. Such a structure could only be a resonant chamber if microwaves fed into the cavity via the transmission conductor to be reflected back and forth between the walls of the shielding body.
Examiner notes that LIN et al. discloses that the chamber reflects the waves in a manner to form standing waves (Paragraphs [0011], [0027] and [0035]). Thus, the chamber of LIN et al. meets the standard use of the phrase “resonant chamber” by performing the same function using overlapping structural details. MPEP 2114, I-III.
While the shielding body/cavity may be specifically designed to prevent leakage and to support transmission, it is still disclosed as reflecting the waves to form a standing wave. The claim does not require the shielding body/cavity to only have a resonance function to act as a resonance body.
The auxiliary medium in LIN et al. is described as air, plastic, PCB board or ceramic selected for isolation and support but not for electromagnetic interaction or resonance tuning. The claimed chamber has characteristics that are deliberately controlled.
The courts have generally held that Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP § 2173.05(g). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Thus the deliberate control of the characteristics is not apart of the structural elements of the claimed invention. There isn’t an explicitly claimed functional control claimed, either.
The materials of the filler of LIN et al. necessarily have a relative permittivity. This inherent feature of materials does not need a motivation to identify (by using other art). The claim merely claims a material property of the filling. The claims are not directed to the chamber dimensions, RF frequency composition and the filter composition and their relative material properties cooperate.
Thus, the mere identification of a filler material having a relative permittivity of greater than one is all that is necessary to meet the limitations related to the filling.
Applicant argues that the relative permittivity of the microwave absorbing agent of Zhou is not combinable with the teachings of LIN et al.
Examiner disagrees. Zhou merely shows types of materials that absorb microwaves to generate heat, which is analogous to the filling material of LIN et al.. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, the combined filler with the tobacco isn’t necessary for the filler of LIN et al. Only the teaching that the filler will generate heat in microwaves.
It is also noted that the evidentiary reference is provided to show the relative permittivity of various materials. No modification is needed for the materials used in LIN et al.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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Claim(s) 16 -19, 21, 22 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over LIN et al. (CN 110652038 A, machine translation) in view of ZHOU et al. (US 2022/0232882) and KUHN et al. (EP 3747289A1), and evidenced by ELECTRONICS REFERNCE (Relative Permittivity Chart)
With respect to claim 16, LIN et al. discloses non-combustion smoking device (Abstract); the device comprising a microwave generator, 201, (e.g., electromagnetic field generator) (Paragraph [0027]) configured to generate a microwave signal output having a predetermined frequency and wave shape (e.g., composition) (Paragraphs [0029], [0030]); a shielding chamber, 40, comprising an outer wall, 70 (Paragraphs [0010]-[0012], [0018]; Figures 3 and 4) that prevents leakage of the electromagnetic energy (Paragraph [0010]).
Merriam-Webster defines “opaque” as blocking the passage of radiant energy and especially light. Given that the chamber prevents leakage (e.g., blocks the electromagnetic energy from escaping) the wall is implicitly opaque to the generated electromagnetic energy within the chamber.
The chamber is filled with a filling, 20, in the interior thereof and surrounding the cigarette (Paragraphs [0012]-[0014]; Figure 4). Therein which the cigarette itself implicitly represents the substrate cavity being circumscribed by the chamber wall.
The electromagnetic field generator is coupled to the chamber via a feed-in port (Paragraphs [0027], [0011]) to convey the electromagnetic radiation to the chamber (Paragraph [0011; Figure 3).
It is noted that the scope of the instant “resonance chamber” is a structure which creates standing waves therein using the electromagnetic radiation. LIN et al. discloses that the chamber also forms standing waves therein using the electromagnetic radiation (Paragraph [0035]). Thus, the chamber, 40, of LIN et al. also implicitly represents a resonance chamber.
LIN et al. further discloses that the filling is one of air, plastic, PCB board or ceramic (Paragraph [0012]), but does not disclose the relative permittivity of these materials and whether they fall within the claimed range.
ZHOU et al. discloses a heating method for tobacco products (Abstract). The absorbing agent (e.g., filling of LIN et al.) comprises ceramics such as silicon carbide, silicon nitride or aluminum nitride, as well as other materials and does not itself volatilize or undergo a chemical reaction (Paragraph [0036]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use silicon carbide, silicon nitride or aluminum nitride as the filler of LIN et al., as taught by ZHOU et al. so that the tobacco can be heated by the absorbing of the electromagnetic radiation while not volatilizing or chemically reacting the filler.
ELECTRONICS REFERNCE notes that the aluminum nitride has a relative permittivity of 9.3-11.5 and silicon nitride has a relative permittivity of 7-8. Thus, the scope of relative permittivity of the fillers of LIN et al. implicitly include values greater than one, as claimed.
LIN et al. does not explicitly disclose that the cigarette is an aerosol forming substrate, or that the electromagnetic field generator generates radio-frequency. Moreover, LIN et al. does not explicitly disclose specific materials of the filler.
KUHN et al. discloses a heating unit for aerosolizing solid aerosol forming sample of a smoking article (Abstract; Paragraph [0029]). The heating unit is either a microwave or radio frequency heating unit (Paragraph [0006]) so that an absorption material may be heated with a high degree of reliability (Paragraph [0007]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the cigarette of LIN et al. that produces aerosol, and to use radio frequency, as taught by KUHN et al., so that the fillers can be heated with a high degree of reliability.
With respect to claim 17, ZHOU et al. discloses that the fillers have a dielectric loss constant (Paragraph [0036]) and therefore the filler implicitly comprise a dielectric.
With respect to claim 18, LIN et al. discloses that the travelling wave generated in the resonance chamber is reflected between the first and second end thereof, such that a standing wave forms (Paragraph [0035]) (e.g., resonates). Thus, all features of the resonance chamber, such as the permittivity of the filling, frequency composition and dimensions of said chamber are implicitly such that the standing wave is formed.
With respect to claim 19, ELECTRONICS REFERNCE notes that the aluminum nitride has a relative permittivity of 9.3-11.5 and silicon nitride has a relative permittivity of 7-8.
With respect to claim 21, ZHOU et al. discloses that the filling comprises alumina (Paragraph [0036]).
With respect to claim 22, LIN et al. does not explicitly disclose the claimed air inlet and fluid flow path, per se. ZHOU et al. discloses that the device comprises an air inlet, 211, configured to receive air from outside of the device in fluid connection with the chamber, 250, through a fluid flow path, 251, such that when a user inhales (e.g., negative differential pressure) between the cavity and the air inlet, airflow is induced from the air inlet, along the path and into the cavity (Paragraphs [0045]-[0046]; figure 2). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the claimed inlet and fluid flow path in the device of LIN et al., as taught by ZHOU et al., so that when the user inhales, the outside air can enter the cavity and carry the aerosol to the user’s lungs.
With respect to claim 31, modified LIN et al. discloses a system comprising the device according to claim 16 (See rejection of claim 16) and the cigarette, which, according to the rejection of claim 16 is the aerosol generating article.
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Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over LIN et al. (CN 110652038 A, machine translation) in view of ZHOU et al. (US 2022/0232882) and KUHN et al. (EP 3747289A1), and evidenced by ELECTRONICS REFERNCE (Relative Permittivity Chart) as applied to claims 16 -19, 21, 22 and 31 above, and further in view of OSAWA et al. (US 5,702,501) and evidenced by MATMAKE (Relative Permittivity of Common Dielectric Materials).
With respect to claim 20, modified LIN et al. does not explicitly disclose that the relative permittivity is between 40 and 50. OSAWA et al. discloses various microwave-absorbing heat-generating maters, such as active carbon, silicon carbide, boron carbide, aluminum nitride and barium zirconate (Column 7, lines 6-20). These materials quickly generate heat when absorbing microwaves (Column 8, lines 43-55). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use barium zirconate as the filler of modified LIN et al., as taught by OSAWA et al., so that heat can be quickly generated when the microwaves are absorbed.
Barium zirconate has a relative permittivity of 43, and thus the relative permittivity of modified LIN et al. falls within the claimed range of between 40 and 50.
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Claim(s) 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over LIN et al. (CN 110652038 A, machine translation) in view of ZHOU et al. (US 2022/0232882) and KUHN et al. (EP 3747289A1), and evidenced by ELECTRONICS REFERNCE (Relative Permittivity Chart) as applied to claims 16 -19, 21, 22 and 31 above, and further in view of WORM et al. (US 2013/0037041).
With respect to claim 29, modified LIN et al. discloses that the cavity diameter is larger than the cigarette (Paragraph [0040]), but does not explicitly disclose the size of the chamber.
WORM et al. discloses a smoking article for yielding inhalation materials (Abstract). The inner diameter of the receiving chamber is sized sufficiently small so that the cartridge (e.g., aerosol generating material) fits snugly into the chamber and frictional forces prevent the relative movement therebetween (Paragraph [0073]). The diameter of the cartridge is about 25 mm (Paragraph [0074]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the chamber of modified LIN et al. with an interior diameter of 25 mm or greater, as taught by WORM et al. so that these components will fit snugly together and prevent relative movement therebetween.
With respect to claim 30, with an interior diameter of the chamber being 25 mm or greater, the disclosed range overlaps with the claimed range of 25-35 mm. See, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) , MPEP 2144.05, I.
Allowable Subject Matter
Claims 23-28 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.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 23, the art does not necessarily disclose a sleeve arranged as to continuously circumscribe the cavity, per se. As seen in figure 3 of LIN et al., there are no further structures within the inner surface of the filling, per se.
With respect to claim 24, while the filling can exists as powders (Paragraph [0029]), there is not teaching or suggestion in the art that these exists as clusters spaced apart from each other, as claimed, per se.
With respect to claim 25, as with claim 23, the art does not necessarily disclose a liner arranged between the filling and the substrate cavity. As seen in figure 3 of LIN et al., there are no further structures within the inner surface of the filling, per se.
With respect to claim 28, as seen in LIN et al., the peripheral wall, 70, of the resonate chamber is on the outside surface of the filler material, 20. Thus, if the peripheral wall were transparent to RF, then the radiation would be permitted to exit the chamber, not enter it. LIN et al. teaches away from radiation exiting the chamber (See rejection of claim 16).
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 ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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