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 .
Election/Restriction Response
Applicant’s election of Group I with traverse (claims 1-16 and 18) in the reply filed on 01/05/2026 is acknowledged.
Note: it was confirmed with attorney Daniel Bruzzone on 04/10/2026 that claim 18 depends from claim 12. Therefore, group I includes claims 1-16 and 18.
Claims 17, 19, 24-25, and 28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The Applicant traverses on the ground(s) that:
On p. 6-7 of the Remarks, “The Office has asserted that the heating material comprising electroless plating on the support does not constitute a special technical feature because it is taught by Horrod. This assertion is not correct, as the pending claims specifically recite electroless plating Claim 19 is a method claim that positively recites electrolessly plating heating material
onto the support. Electroless plating is a chemical process that deposits an even layer of metallic
material on the surface of a solid substrate and does not require passing an electric current
through the bath and the substrate. (Application at 12.) The reduction of metal cations in solution
to metallic form is achieved by purely chemical means through an autocatalytic reaction.
(Application at 12.) This specific process creates an even layer of metal regardless of the
geometry of the surface and can be applied to non-electrically conductive surfaces. (Application
at 12.) This capability is a key technical advantage that distinguishes electroless plating from
generic chemical plating or electro-chemical plating methods. Electroless plating provides an
even layer of heating material that may provide a susceptor of substantially constant thickness,
providing improved heating properties with more even heating along the length of the susceptor.
(Application at 12.) Electroless plating also allows the metallic susceptor to be located on a
plastic support without need for an adhesive, which may otherwise increase distance from the
susceptor to the plurality of coils, thereby negatively impacting heating. (Application at 12.) Although Horrod describes some non-metallic substrates such as polyether ether ketone
or Kapton, it does not make clear that it contemplated using electroless plating as opposed to, for
example, vacuum evaporation to form the layer. (Horrod at 9.) Horrod states that nickel could be
applied by a chemical plating method, an electro-chemical plating method, or by vacuum
evaporation, and that cobalt also can be applied by plating. (Horrod at 8.) Horrod lists these as
separate alternatives and treats chemical plating method and electro-chemical plating method as
distinct processes. (Horrod at 8.) In fact, the specific term "electroless plating" never appears in
Horrod. Horrod' s generic disclosure of a chemical plating method, presented alongside electrochemical plating and vacuum evaporation as alternatives, does not anticipate the specific
electroless plating process presented in the pending claims with its unique characteristics of
autocatalytic reaction and absence of electrical current.
Although Groups I and II in the restriction are structures, they nonetheless recite
structures that similarly are made with electroless plating, and the claim element is limiting in the
method claim, such that the special technical feature is not taught by Horrod and the restriction
should be withdrawn. The electroless plating limitation defines not merely a method of
manufacture but a structure having specific properties achievable only through the electroless
plating process, including uniform coating thickness on non-conductive substrates and direct
adhesion without intermediary adhesives. These structural characteristics are not taught by
Horrod' s generic disclosure of chemical plating methods applied primarily to conductive
substrates such as stainless steel. Accordingly, the restriction requirement should be withdrawn
as all groups share the common special technical feature of electroless plating that is not taught
by the cited reference.”
Examiner’s Responses:
The applicant’s argument is respectfully not found persuasive because group I and II are directed to an apparatus. The limitation “heating material comprises an electroless plating on the support” of claims 1 and 17 is directed to a product-by-process claim, and based on MPEP 2113, the claim is not to be limited by the manipulation of the recited step(s). Horrod (WO 2019129553) discloses the resulting structure (i.e. even layer of coating 3b on the support 3a; fig. 3) implied by the claimed method (i.e. electroless plating). Moreover, Horrod discloses the plating of the coating 3b is performed by chemical plating method, which does not involve electricity (p. 08, 12 lines 25-27, 11-12 respectively). Respectfully, the Applicant’s argument that the electroless plating process creates an even layer of the metal regardless of the geometry of the surface and allow for the metal layer to be disposed on the plastic support without the need for an adhesive, is not part of the claim language.
Lastly, as set forth in the prior art rejection to claim 1 below, the electroless plating is conventional process known in the art as taught by Nakano’992 (US 20190124992) to apply conductive coating layer on a substrate (para. 0117).
Because the common technical feature shared among the groups I, II, and III is not special as it does not make a contribution over the prior art Horrod. Therefore, Group I, II, and III lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
The status of the 01/05/2026 claims, is as follows: Claims 20-23, and 26-27 have been canceled; and claims 1-19, 24-25, and 28 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in Application No. GB 2101464.2 filed on 02/03/2021.
Information Disclosure Statement
The (2) information disclosure statements (IDS) submitted on 06/24/2025 and 07/26/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement are being considered by the examiner.
Claim Objections
Claims 12-16 and 18 are objected to because of the following informalities:
In claim 12:
The phrase “the heater element comprises a heater element” in lines 1-2 should be read “the heater element comprises the heater element” because it has antecedent basis in claim 1 that recites “a heater element”.
The phrase “an aerosol provision device” in line 2 should be read “the aerosol provision device” because it has antecedent basis in claim 1.
In claim 18:
The phrase “an aerosol provision system” should be read “an aerosol provision device” because according to the specification, it appears that they refer to the same device.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
In claim 12 (similarly applying to claim 18):
The limitation “a heating assembly” in line 3
“assembly” is the generic placeholder.
“heating” is the functional language.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that, the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation:
The limitation “a heating assembly" in line 3 of claim 12 and claim 18 has been described in published specification in para. 0061 as the heating assembly 20; fig. 1 that comprises a plurality of heating coils 32.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 6-7, 10-12, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nuno Batista (US 20230105496, hereinafter Batista’496) in view of Nakano’992 (US 20190124992)
Regarding Claim 1, Batista’496 a heater element (heater; fig. 5) for an aerosol provision device (aerosol-generating article 50; fig. 6), the heater element comprising:
a support (flexible electrically insulating substrate) (“susceptor element 48 may be arranged on a fourth portion of the flexible electrically insulating substrate”, para. 0111); and
heating material (susceptor element 48) that is heatable by penetration with a varying magnetic field (alternating magnetic field) (para. 0111), wherein the heating material is disposed on the support (para. 0111).
Batista’496 does not disclose the heating material comprises an electroless plating on the support.
However, Nakano’992 discloses a conductive coating layer is applied to a substrate (porous body) by means of electroless plating process (para. 0117).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heater element of Batista’496 such that the heating material formed on the support is performed by electroless plating as taught by Nakano’992, in order to apply known technique (i.e. electroless plating) to a known device (i.e. aerosol provision device) to yield a predictable result, that is to apply the heater material onto the surface of the substrate such that the heater material generates heat in the presence of the magnetic field.
Regarding Claim 2, Batista’496 the heater element (heater; fig. 5), wherein the support (flexible electrically insulating substrate) comprises a non-electrically conductive material (“susceptor element 48 may be arranged on a fourth portion of the flexible electrically insulating substrate”, para. 0111).
Regarding Claim 3, Batista’496 the heater element (heater; fig. 5), wherein the support (flexible electrically insulating substrate) comprises a material (polyimide film) with a melting point greater than 300°C (from 250° C. to 350° C) (para. 0006).
Regarding Claim 6, Batista’496 the heater element (heater; fig. 5), wherein the support (flexible electrically insulating substrate) comprises a tubular support (para. 0111; fig. 5).
Regarding Claim 7, Batista’496 the heater element (heater; fig. 5), wherein the heating material (susceptor element 48) is disposed on a radially inwardly facing face of the support (flexible electrically insulating substrate) (para. 0111 and 0102; figs. 2 and 5) (it is noted the susceptor element 48 is laid on the substrate. The substrate is rolled into a tube as shown in figs. 2 and 5 that results in the susceptor element 48 is disposed on the radially inwardly facing face of the support).
Regarding Claim 10, the modification discloses substantially all of the claimed features as set forth above, except the heater element comprises a plurality of regions of the heating material, the plurality of regions spaced apart on the support.
However, Batista’496 discloses in another embodiment shown in fig. 1 the heater element (heating element 16) comprises a plurality of regions of the heating material (two resistive heating tracks 18), the plurality of regions (two resistive heating tracks 18) spaced apart on the support (flexible electrically insulating substrate) (para. 0102).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating element of Batista’496 to comprise the plurality of regions of the heating material, the plurality of regions spaced apart on the support as further taught by Batista’496, in order to provide plurality of heating zones formed by the plurality of the heating materials to achieve desired heating output to generate aerosol based on the desired application.
Regarding Claim 11, Batista’496 the heater element (heater; fig. 5), wherein the heater element defines a chamber (cavity 54) for receiving a consumable comprising aerosol-generating material (aerosol-forming substrate) when the heater element is located within the aerosol provision device (“consolidating cavity 54 wall layer 44 may be arranged directly adjacent the inner layer of the heater comprising the susceptor element”, para. 0111 and also 0112; fig. 5).
Regarding Claim 12, Batista’496 the heater element (heater; fig. 5), wherein the heater element comprises a heater element (heater; fig. 5) for use in an aerosol provision device comprising a chamber and a heating assembly for applying heat to a consumable comprising aerosol-generating material to generate aerosol from the aerosol-generating material when the consumable is located in the chamber and wherein the heater element is for selective insertion into the chamber to at least partially line the chamber (it is noted the limitation “for use in an aerosol provision device comprising a chamber and a heating assembly for applying heat to a consumable comprising aerosol-generating material to generate aerosol from the aerosol-generating material when the consumable is located in the chamber and wherein the heater element is for selective insertion into the chamber to at least partially line the chamber” is the statement of intended use. The heater of Batista’496 is configured for use with the aerosol-generating device as shown in fig. 6 by inserting into the device).
Regarding Claim 16, Batista’496 the heater element (heater; fig. 5), wherein the heater element is resiliently deformable (“one of these layers may be provided on the flat flexible electrically insulating substrate sheet and subsequently rolled to form the heater.”, para. 0111).
Regarding Claim 18, Batista’496 discloses an aerosol provision system (aerosol-generating device 50) comprising a chamber (cavity 54) (para. 0112; fig. 6), a heating assembly (induction coil 42) for applying heat to a consumable comprising aerosol-generating material (aerosol-forming substrate) to generate aerosol from the aerosol-generating material when the consumable is located in the chamber (para. 0112 and 0048), and the heater element as claimed in Claim 12 (heater; fig. 5) (para. 0111-0112).
Claims 4, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Nuno Batista (US 20230105496, hereinafter Batista’496) and Nakano’992 (US 20190124992) as applied to claim 1, further in view of Batista’894 (US 20220295894)
Regarding Claim 4, the modification discloses substantially all of the claimed features as set forth above, except wherein the heating material comprises at least one of nickel or cobalt.
However, Batista’894 discloses the heating material (susceptor arrangement) comprises at least one of nickel or cobalt (nickel) (para. 0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating material of Batista’496 to comprise the nickel as taught by Batista’894 because it is conventionally known to utilize nickel as the material for the susceptor such that it generates heat in the presence of magnetic field.
Regarding Claim 8, the modification discloses substantially all of the claimed features as set forth above, except wherein the heater element comprises a further heating material attached to the heating material, the further heating material comprising a different material than the heating material, the heating material disposed between the further heating material and the support.
However, Batista’894 discloses the heater element (susceptor arrangement) comprises a further heating material (second susceptor material) attached to the heating material (first susceptor material) (para. 0066), the further heating material comprising a different material (nickel) than the heating material (steel), the heating material (steel) disposed between the further heating material (nickel) and the support (ceramic core or substrate) (para. 0065-0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heater element of Batista’496 to comprise the further heating material attached to the heating material, wherein the heating material is disposed between the further heating material and the support as taught by Batista’894, because it is conventionally known to utilize two-layer material as the susceptor such that the two-layer material yield desired heat output to generate aerosol in the presence of the magnetic field.
Regarding Claim 9, Batista’894 discloses the further heating material (second susceptor material) comprises nickel (para. 0066).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the modification of Nuno Batista (US 20230105496, hereinafter Batista’496) and Nakano’992 (US 20190124992) as applied to claim 1, further in view of Horrod (WO 2019129553A1)
Regarding Claim 5, the modification discloses substantially all of the claimed features as set forth above, except the heating material comprises a thickness of no more than 100 microns in a direction orthogonal to a surface of the support.
However, Horrod discloses the heater element (heating element 10/3; figs. 5 and 3), wherein the heating material (coating 3b) comprises a thickness of no more than 100 microns in a direction orthogonal to a surface of the support (support 3a) (thickness of about 10 microns) (p. 11, lines 11-16).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating material of Batista’496 (i.e. susceptor element 48) to comprise the thickness of no more than 100 microns in a direction orthogonal to a surface of the support as taught by Horrod, because it is conventionally known to utilize the heating material having such thickness to be applied to the substrate such that heat is effectively generated by the susceptor element 48 in the presence of the magnetic field.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over the modification of Nuno Batista (US 20230105496, hereinafter Batista’496) and Nakano’992 (US 20190124992) as applied to claim 12, further in view of Batista’565 (US 20200367565)
Regarding Claim 13, the modification discloses substantially all of the claimed features as set forth above, except wherein the heater element is formable into a first configuration in which the heater element is wound with a first diameter, and formable into a second configuration in which the heater element is wound with a second diameter greater than the first diameter, the heater element movable from the first configuration to the second configuration when inserted into the chamber to at least partially line the chamber.
However, Batista’565 discloses the heater element (elastic susceptor element 26) is formable into a first configuration (prior to being stretched) in which the heater element is wound with a first diameter (diameter of the element 26 prior to being stretched), and formable into a second configuration (after being stretched when substrate 36 is inserted into the susceptor element 26) in which the heater element is wound with a second diameter (diameter of the element 26 after being stretched) greater than the first diameter (para. 0094), the heater element movable from the first configuration to the second configuration when inserted into the chamber (chamber 20) to at least partially line the chamber (para. 0094).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating element of Batista’496 to be made of elastic material such that it is movable from the first configuration to the second configuration when inserted in the chamber, wherein the diameter of the heater in the second configuration is greater than the diameter of the heater in the first configuration as taught by Batista’565. Doing so would allow the heater element to stretch and deforms to accommodate the different size of the aerosol-generating article when inserted into the cavity. Advantageously, this may optimize contact between the heater element and the aerosol-generating article, thereby optimizing heat transfer from the heater element to the aerosol-generating article during use (para. 0016 of Batista’565).
Regarding Claim 14, Batista’565 discloses the heater element (elastic susceptor element 26) is expandable by at least partial unwinding when inserted into the chamber (chamber 20) to move from the first configuration (prior to being stretched) to the second configuration (after being stretched) (para. 0094 and 0027) (according to Dictionary, https://www.dictionary.com/browse/unwind, “unwind” is interpreted to mean reduce tension. It is noted as the aerosol-generating article 14 is inserted into the chamber 20, the aerosol-forming substrate 36 is received within the elastic susceptor 26. The susceptor 26 relieves the tension as it is being pushed by the substrate 36 by stretching or deforming such that the substrate 36 is in intimate contact with the susceptor 26).
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Regarding Claim 15, the modification discloses the heater element (heater; fig. 5 of Batista’496), wherein the heater element comprises open longitudinal ends in the first configuration (prior to being stretched) and the second configuration (after being stretched) (para. 0111; figs. 6 and 2 of Batista’496).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, IBRAHIME ABRAHAM can be reached on (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761
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