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
The amendments entered on 6/8/2026 have been accepted. Claims 1, 5-6 are amended. Claims 2-4 are canceled. Claims 1, 5-13, 15-16, 18, 20-21, 26, 28 are pending, and claims 21, 26, 28 are withdrawn from consideration. Applicant’s amendments to the claims, drawings, and specification have overcome the objections previously set forth.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoun (WO2018002083A1, citing to English Equivalent US2020/0229497A1, of record).
Regarding claim 1, Aoun teaches an apparatus configured to heat aerosolizable material to volatize at least one component of the material (see title, “apparatus for heating smokable material”, to volatize at least one component of the smokable material [abstract]), comprising:
a heating zone configured to receive at least a portion of an article that includes aerosolizable material (heating zone “111” for receiving at least a portion of an article comprising smokable material [0042, Fig. 1], wherein any part of “111” may be considered this heating zone, it being noted that the heating zone is merely required to be a portion that receives at least a portion of the article, such that 111b may reasonably be considered to be the heating zone that receives the inner portion of the article of the smokable material under the broadest reasonable interpretation of the claim);
a magnetic field generator including a helical inductor coil configured to generate a varying magnetic field (magnetic field generator “112” comprises a coil “114” which generates a varying magnetic field [0036, 0047-0049, Fig. 1]. The coil is a helical inductor coil [0049]),
the helical inductor coil defining an inductor zone within the inductor coil (the portion of Fig. 1 of which the coil “114” is present is considered the inductor zone. This includes the first section of the heating element “115a” which is heated by the coil),
an elongate heating element which is heatable by penetration with the varying magnetic field and arranged to heat the heating zone (heating element “115” [0042], and this is clearly elongate as in Fig. 1), wherein the elongate heating element extends between the heating zone and the inductor zone (as in Fig. 1, the heating element “115” clearly extends between an induction zone where the coil is and a heating zone which may be considered the portion “111b” of the apparatus which is spaced apart from the induction zone),
wherein the elongate heating element defines a longitudinal axis (see Fig. 1, and [0056] wherein the heating element is along the longitudinal axis), and the helical inductor coil is spaced from the heating zone in an axial direction (as in Fig. 1, the inductor zone around “114” is clearly spaced from other regions of the heating zone “111b” which does not overlap with the coil),
wherein the elongate heating element protrudes in the heating zone (as in Fig. 1, the heating element “115” clearly extends into the heating zone “111b”).
a receptable defining the heating zone wherein the coil does not overlap the receptable (the heating zone may be considered to be “111b” of the heating zone, wherein the coil “114” clearly does not extend to “111b” and only is in the section “111a”. The receptacle therefore may be considered to be only the portion of the walls which are located around “111b” and which would clearly not include the portions of the coil “114”, such that there would be no overlap thereof).
Regarding claim 20, Aoun teaches an apparatus, wherein the inductor zone has an axial length at least 25% of the heating zone (as in Fig. 1, the axial length of the coil “114” is clearly well above 25% of 111, and is at least 33% thereof. An enabling picture may be used to reject claims directed to an article to include: anticipating claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972)).
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, 5-13, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Courbat (US2021/0145062A1, of record) in view of Mironov (US2020/0060348A1, of record).
Regarding claim 1, Courbat teaches an apparatus to heat aerosolizable material to volatize at least one component of the material (see Fig. 2, wherein the aerosol-generating device is configured to generate aerosols from the article “14” which comprises aerosol forming substrate [abstract, 0001-0006, 0093]), the apparatus comprising:
a heating zone configured to receive at least a portion of an article that includes aerosolizable material (the heating zone may be considered to be the area of the device “12” in which the article “14” is inserted as in Fig. 2, where the heating zone is located around the substrate “34” in the figure),
a magnetic field generator including an inductor coil configured to generate a varying magnetic field (the device comprises an inductor coil “26” which is configured to generate an alternating magnetic field [0092, Fig. 2 and 3+]),
the inductor coil defining an inductor zone within the inductor coil (the portion of the device where the coil “26” is located, as in Fig. 2, 4, and 6, is considered to be the inductor zone),
the portion of Fig. 1 of which the coil “114” is present is considered the inductor zone. This includes the first section of the heating element “115a” which is heated by the coil),
an elongate heating element which is heatable by penetration with the varying magnetic field and arranged to heat the heating zone (susceptor element “24”, as in Figs. 2, 4, 6, is clearly elongate as it is longer than it is wide. The susceptor comprises an elongate portion “29” and a planar portion “27”. The susceptor’s planar portion is heated by the coil, and the elongate portion is heated by conduction [0092]), wherein the elongate heating element extends between the heating zone and the inductor zone (as in Fig. 2, the susceptor “24” clearly extends in the heating zone located around the article “34”, and extends in the inductor zone by its planar portion “27” which is in contact with the induction coil [see Fig. 4, 6].
Courbat does not explicitly state that the inductor coil is a helical inductor coil. However, it is extremely common within the art of aerosol generating devices to utilize helical inductor coils, and it is common practice for the person of ordinary skill in the art to choose between using a helical inductor coil and a spiral (flat) inductor coil, wherein these are common alternatives depending on the design criteria of the device in question. Mironov, for example, presents an aerosol-generating device, wherein the inductor coils may be either helical or flat spiral inductor coils [0037]. Helical coils are utilized when one wishes to generate homogenous fields which leads to a more homogeneous heating process [0038], while flat spiral inductor coils are utilized to facilitate a compact design of the device [0039]. The choice between these two conventional types of coils is therefore well understood in the art. One of ordinary skill in the art would have found it obvious to modify the coil of Courbat so as to be a helical inductor coil, as suggested by Mironov. One would have been motivated so as to allow for more homogeneous fields to have a more homogenous heating process [Mironov, 0038]. This modification is considered to be a “simple substitution of one known element for another to obtain predictable results”, with the predictable results as stated above being the improved homogeneity of the heating process. See MPEP 2143 I. B.
Modified Courbat makes obvious the elongate heating element defines a longitudinal axis (see Fig. 2, wherein “24 is clearly elongate along the longitudinal axis of the device), and the helical inductor coil is spaced from the heating zone in an axial direction (as in Fig. 2, the helical inductor coil “26” would be spaced away from the elongate portion of the susceptor and away from the heating zone which is located around the elongate portion “29”, as the coil would be located on and/or around and below the portion “27” as in Fig. 2 of Courbat when modified by Mironov),
the elongate heating element protrudes in the heating zone (as in Fig. 2, the heating element “24” clearly protrudes into the heating zone which is located around the aerosolizable material “34”).
wherein a receptable defining the heating zone wherein the coil does not overlap the receptable (the heating zone is considered to be the portion of the device “12” of which the material “34” is inserted. As such, the heating zone’s receptacle would be considered the longitudinally innermost portion, touching the outside of the planar portion “27”, and the peripheral walls around “34” and “24” which contain the article. The receptacle therefore would clearly not overlap with the coil “26”, as the coil “26” is clearly located away from the aerosol generating substrate “34” and does not enter that portion of the device as in Figs. 2 and 4 of Courbat, and this would remain true with the simple substitution of having the helical coil).
Regarding claim 5, Courbat makes obvious an apparatus wherein the receptacle comprises an end wall defining a closed end of the heating zone and wherein the end wall is between the heating zone and the helical inductor coil (as in Figs. 2, 4, 6, the end wall may be considered to be the longitudinally innermost portion of the article that is inserted, wherein the article abuts against at least the wide planar/base portion “27” of the susceptor such that the article is locked into place such that the end wall must be present to form the receptacle that the article is inserted into. The end wall may also be considered to be this top portion of the planar portion “27” that prevents the article from being inserted further. In either case, the coil “26” is located longitudinally away from the article as in Fig. 2, such that the end wall would clearly be located between the heating zone as defined above and the inductor coil).
Regarding claim 6, Courbat makes obvious an apparatus wherein the receptacle comprises a peripheral wall defining the heating zone (as in Fig. 2, the top and bottom walls of the device in Fig. 2 located above/below the susceptor “24” may be considered the peripheral walls which define the heating zone), and wherein a spacing between the peripheral wall and the elongate heating element is greater than a spacing between the helical inductor coil and the elongate heating element (as in Fig. 2, the distance from the wall of the device to the heating element “24” is clearly larger than the spacing of the coil “26” to the susceptor. For when the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125.).
Regarding claim 7, Courbat makes obvious an apparatus wherein a maximum width of the helical inductor coil is less than a maximum width of the heating zone (as in Fig. 2, the maximum width of the coil “26” is clearly less than the maximum width of the heating zone formed around the elongate heating element. For when the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125.).
Regarding claim 8, Courbat makes obvious an apparatus wherein the heating element comprises a first portion exposed to the heating zone, and a second portion external to the heating zone, wherein the helical inductor coil encircles the second portion (as in Figs. 4 and 6, the susceptor element includes an elongate portion “29” and a base/planar portion “27”. As in Fig. 2 showing the device, the elongate portion extends into the aerosol forming substrate and into what is defined as the heating zone, whereas the base portion “27” is external to the aerosol forming substrate and is considered to be external to the heating zone. The inductor coil may be formed so as to not enter the heating zone of the device [see Figs. 2-4], wherein the coil “26” is designed to heat the base portion “27” via induction, and wherein the elongate portion is heated via conduction from the base portion 27 [0092]. When the inductor coil is a helical inductor coil as modified in the rejection of claim 1 above via Mironov, the helical coil would definitionally have at least some extension in a longitudinal direction such that clearly at least a portion of the base portion would be “encircled” with the coil within the broadest reasonable interpretation thereof).
Regarding claim 9, Courbat makes obvious an apparatus wherein a radial width of at least part of the second portion is greater than a radial width of the first portion (as in Figs. 2, 4, 6, the portion “27” clearly has a larger radial width than the elongate portion “29”).
Regarding claim 10, Courbat makes obvious an apparatus wherein the second portion comprises a collar (the collar may be considered to be the radially extending wider width portion of “27”).
Regarding claim 11, Courbat makes obvious an apparatus wherein the second portion comprises a core and wherein the collar at least partially encircles the core (as in Figs. 2, 4, 6, the core may be considered to extend from the elongate member “29” inwards to the center portion of the base portion “27”, and wherein the collar portion is considered to be the wide width portion of “27” that clearly encircles the narrow width portion thereof).
Regarding claim 12, Courbat makes obvious an apparatus wherein the core is formed as a one part component with the first portion (as in Figs. 2, 4, 6, the core is clearly formed as a singular component between “29” and “27”, forming the overall device of the susceptor “24”. Additionally, it is noted that a prima facie case of obviousness exists for making components integral, wherein “the use of a one piece construction… would be merely a matter of obvious engineering choice”. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). See MPEP 2144.04 IV. B.).
Regarding claim 13, Courbat makes obvious an apparatus wherein the collar includes heater material that is heatable by penetration with the varying magnetic field (the base/planar portion “27” is heated by the inductor coil via alternating magnetic field [0091-0092], such that the collar would necessarily be made of material that is heatable by penetration by magnetic field. Specifically, the susceptor, which includes the portion “27”, may be made from any metal or other material fit for induction heating [0045]).
Regarding claim 15, Courbat makes obvious an apparatus wherein a thermal conductivity of at least a part of the first portion is greater than a thermal conductivity of at least part of the second portion (Courbat suggests that the susceptor element “24”, which comprises both the first elongate portion “29” and the second wide portion “27”, may be made from a variety of materials. Courbat suggests that the susceptor may have a non-metallic core with a metal layer on the non-metallic core [0046]. Courbat suggests that the susceptor may have a protective external layer such as a ceramic or glass layer so as to protect the inner material [0047]. Therefore, as Courbat suggests that the susceptor may include multiple components, the first and second portions would also comprise these same multiple components, wherein the different materials would necessarily have different thermal conductivity values because thermal conductivity is a physical property of matter. When a protective glass layer is used with a metal material for the susceptor for example, the metal portion of the first portion would clearly have a greater thermal conductivity than the glass portion of the second portion. In other words, the claim limitation would necessarily be satisfied when the susceptor is made from two materials with different thermal conductivities).
Regarding claim 16, Courbat makes obvious an apparatus wherein at least a part of the first portion has a lower susceptibility than at least a part of the second portion (Courbat suggests that the susceptor element “24”, which comprises both the first elongate portion “29” and the second wide portion “27”, may be made from a variety of materials. Courbat suggests that the susceptor may have a non-metallic core with a metal layer on the non-metallic core [0046]. Courbat suggests that the susceptor may have a protective external layer such as a ceramic or glass layer so as to protect the inner material [0047]. Therefore, as Courbat suggests that the susceptor may include multiple components, the first and second portions would also comprise these same multiple components, wherein the different materials would necessarily have different magnetic susceptibility values because susceptibility is a physical property of matter. When a protective glass layer is used with a metal material for the susceptor for example, the metal portion of the first portion would clearly have a greater susceptibility than the glass portion of the second portion. In other words, the claim limitation would necessarily be satisfied when the susceptor is made from two materials with different susceptibilities).
In the alternate, claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat (US2021/0145062A1, of record) in view of Mironov (US2020/0060348A1, of record), as applied to claim 1 above, and further in view of Aoun (WO2018002083A1, citing to English Equivalent US2020/0229497A1, of record).
In the alternate regarding claim 5, Aoun discloses a heating zone “111” for receiving at least a portion of an article comprising smokable material that is to be heated [Fig. 1, 0042]. The heating zone clearly has peripheral walls located at top/bottom portions of Fig. 1, and an end wall which is located at a longitudinally inner portion of the heating zone [Fig. 1]. The elongate heating element extends into the heating zone to heat the article [Fig. 1]. The device for passing varying electrical current through the coil is located outside the end wall of the device [0047, Fig. 1]. One of ordinary skill in the art would have found it obvious to have an end wall as shown in Fig. 1 of Aoun, so as to define the inner longitudinal portion for receiving the article containing smokable material so as to properly fit the article [0042]. And as Courbat clearly has the coil located outside of the heating zone wherein the article and the elongate heating element are located, Courbat modified by Aoun would clearly have the end wall formed between the two.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat (US2021/0145062A1, of record) in view of Mironov (US2020/0060348A1, of record), as applied to claim 1 above, and further in view of Breiwa (US2014/0186015A1, of record).
Regarding claim 18, Courbat does not explicitly define the heating element comprising a heat pipe. However, heat pipes are known within the art of electronic-cigarettes. Breiwa teaches a tubular volatizing device which is used for heating tobacco [0059-0060]. The device may include a heat pipe “34”, as in Figs. 24-26 wherein the heat pipe functions as a thermal conduit between an external heat source and the chamber containing material (akin to Courbat’s heating element), so as to accelerate and improve heat flow [0038, 0043, 0045-0046, 0050]. One of ordinary skill in the art would have found it obvious to modify the device of Courbat to include a heat pipe as in Breiwa. One would have been motivated so as to accelerate and improve the heat flow [0038, 0043, 0045-0046, 0050].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat (US2021/0145062A1, of record) in view of Mironov (US2020/0060348A1, of record), as applied to claim 1 above, and further in view of Induction Heating Technology (NPL: “How to design an optimal induction coil”, of record).
Regarding claim 20, Courbat does not explicitly have the axial length of the inductor zone with an axial length of at least 25% of the heating zone. However, it is well known within the principles of inductor coil design and technology that the length of the coil (and thus the inductor zone) will affect the heating properties thereof, such that an axial length of at least 25% of the heating zone would have been an obvious optimization or design choice for the person of ordinary skill in the art. Induction Heating Technology NPL teaches these coil design fundamentals, wherein if “the total length of the induction coil is shorter, the output frequency of induction coil will be higher, and the heating speed will be faster” and that if the coil is too long or too short “the output power of the machine can’t be optimal” [pg. 1].
Therefore, Induction Heating Technology NPL clearly lays out that the length of the coil is an obvious parameter which can be adjusted and optimized, among others, which may lead to the desired output frequency and heating speed, depending on the exact criteria desired. The precise interval as claimed of an axial length at least 25% of the heating zone therefore would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the interval cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the axial length of the inductor zone in modified Courbat to obtain the desired balance between output frequency and heating speed (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).”
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant argues that amended claim 1 overcomes the rejection of Aoun, as Applicant argues that the heating zone 111 has portions which overlaps the helical inductor coil.
The Examiner respectfully disagrees. As noted in the rejections, the heating zone is required to be a portion that is made to “receive at least a portion of an article”, such that the heating zone is not required to encompass the entirety of an article inserted portion into the apparatus. The heating zone of Aoun defines the heating zone “111b” which would be located at the innermost portion around an inserted article, and as in Fig. 1 of Aoun this heating zone is clearly located separate from the heating zone “111a” and does not overlap with the helical coil “114”. The receptacle therefore may be considered to be the surrounding walls of the inner portion of the cavity that surround the heating zone “111b”. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a receptacle/heating zone that surrounds the entirety of the elongate heating member and encompasses all of the surrounding inserted article portion) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, within the broadest reasonable interpretation of the claims and with a fair reading of Aoun, it would be considered that the heating zone and the receptacle may be considered to be the portion “111b” and the surrounding walls of “111b” which would not overlap with the helical coil. If Applicant wishes to claim further specific dimensionality requiring for the heating zone to encompass the radial area surrounding the elongate heating member or for the heating zone to surround the entirety of an inserted article, such limitations must be positively recited in the claim as they are not currently required. As it currently stands, the claim stands anticipated by Aoun.
Applicant argues the coil of Courbat does not satisfy the limitations of the coil defining an inductor zone within the inductor coil. Applicant argues that the elongate heating element would not extend between the heating zone and the inductor zone. Applicant argues that one would not modify the coil of Courbat to be a helical coil, and that if one did modify the coil, it would appear as shown in Fig. 5 and not in the manner in the rejection.
The Examiner respectfully disagrees. 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). As noted in the rejections, the location of the induction zone would be the portion located around the helical inductor coil, such that the inductor zone and coil would clearly be separated from a heating zone. The induction area would be located within the path of the helical inductor coil.
The Examiner disagrees with the notion that a helical induction coil must be arranged as shown in Fig. 5. Fig. 5 is an entirely different embodiment from what is shown and relied upon in the rejections of record. Fig. 5 utilizes a helical coil located around the elongate portion 29, and utilizes a flat coil 26 in addition. In the rejections of record, Courbat is reasonably modified by Mironov so as to do a simple substitution of one known element for another to obtain predictable results, that being a more homogenous heating process compared to a compact design of the device [Mironov, 0038-0039]. In making this modification, it is not modified to have a helical induction coil extending across the entire extent of the elongate heating member as Applicant contends. Rather, the helical induction coil would be located spaced away from the elongate portion of the susceptor and would be located on/touching the portion “27”, in line with the embodiments of Fig. 4 of Courbat which are relied upon. And as the heating element “24” may be considered to encompass both the portion “29” and “27”, and as the helical coil as modified would be located near and/or around the portion “27”, the heating element would clearly thus extend between the heating zone and the inductor zone as required under the broadest reasonable interpretation of the claim, and the coil would not extend up along the path of “29” as in Fig. 4. Applicant’s attacks on the references are unsupported and are against what they would reasonably suggest to the person of ordinary skill in the art.
Further, the Examiner disagrees with the notion that one would not make the modifications suggested. As noted in the rejections, it is well understood in the art and Mironov provides the explanation of why one would utilize a helical coil vs. a planar coil in the context of heating aerosolizable material in a vaporizer. MPEP 2143 provides examples of rationales that may support a conclusion of obviousness, including that of (B) Simple substitution of one known element for another to obtain predictable results. In this case, as supported by Mironov, the changing of a planar coil to a helical coil is known in the art to result in a more homogenous heating compared to a more compact design, such that the results of such a substitution would have been predictable. Furthermore, applicant has failed to account for the level of ordinary skill in the art. Examiner notes that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and “a person of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). In this case, the modification to have a helical coil located in the manner claimed would have been such a case. Applicant’s arguments are not sufficient for overcoming the prima facie case of obviousness.
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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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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