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
Claims 1-11 and 15 are withdrawn. Claim 12 is amended. Claim 25 is cancelled. Claims 12-14 and 16-24 are presently examined.
Applicant’s arguments regarding the objection to the abstract have been fully considered and are persuasive. The objection of 2/26/2026 is withdrawn.
Response to Amendment
Regarding claim 19, the claim recites the limitation “a pervious area through which light passes between the plurality of pores,” which is considered to be a limitation regarding the intended use of the claimed pores. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a pervious area through which light can pass.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12-14, 16-21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/138045) in view of Qi (US 2025/0295171, hereafter referred to as Qi ‘171).
Regarding claim 12, Batista discloses an aerosol generating device comprising a light source (figure 3a, reference numeral 38) and a heating surface having metallic nanoparticles (figure 3a, reference 34) that receives light from the light source through a light transmitting core so that heat is generated by surface plasmon resonance (abstract, figure 3a, reference numeral 32). The heating element is shaped as a flat blade (page 3, lines 32-33, figure 3a) that penetrates into an aerosol generating article (page 4, lines 25-36, page 5, lines 1-2), which is considered to meet the claim limitation of a piercing member adapted to pierce. Batista does not explicitly disclose a foam.
Qi ‘171 teaches a porous heating module for an aerosol generating apparatus in which the heating occurs in a porous body (abstract, figure 4, reference numeral 22). The porous body is a metal foam made of a mixture of metal and gas so that the heating efficiency is increased [0079].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the heating surface of Batista from the metal foam of Qi ‘171. One would have been motivated to do so since Qi ‘171 teaches a metal foam porous body that improves heating efficiency in an aerosol generating apparatus.
Regarding claim 13, Batista discloses that the light source emits light having a wavelength between 380 nanometers and 700 nanometers (page 8, lines 5-6).
Regarding claim 14, modified Batista teaches all the claim limitations as set forth above. Batista additionally discloses that the light source has multiple light sources (page 6, lines 22-26) that heat different portions of the metallic nanoparticles (page 7, lines 3-9). Modified Batista does not explicitly teach the different portions of the nanoparticles being on different sides of the heating element.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the different portions on different sides of the heating element. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding claim 16, it is evident that the foam and particles must form a substrate since Batista discloses that the heating element has a defined outer surface (figure 3a).
Regarding claim 17, the metal and gas foam of Qi ‘171 is a different material from the metallic nanoparticles of Batista since the metallic nanoparticles do not contain any gas.
Regarding claim 18, Batista discloses that the particles have an average maximum diameter of less than about 100 nanometers (page 9, lines 10-14), which is considered to meet the claim limitation of nanoscale.
Regarding claim 19, Qi ‘171 teaches that the pores of the porous body (figure 3, reference numeral 22) are exposed to the accommodation cavity ([0044], figure 3, reference numeral 22), indicating that, in the combination, the pores would also be exposed to the cavity of Batista so that light could pass though the pores.
Regarding claim 20, Qi ‘171 teaches that the pores are exposed to the accommodation cavity ([0044], figure 3, reference numeral 22), indicating that they are in fluid communication through the cavity.
Regarding claim 21, Qi ‘171 teaches that the pores are exposed to the accommodation cavity ([0044], figure 3, reference numeral 22), which is considered to be outside of the foam.
Regarding claim 24, Batista discloses that the upper portion of the heating element converges to a point that defines a cavity within it (figure 3a). The point is considered to be defined by the foam since, in the combination, the heating element is defined by the foam.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (WO 2019/138045) in view of Qi (US 2025/0295171, hereafter referred to as Qi ‘171) as applied to claim 12 above, and further in view of Qi (US 12,357,027, hereafter referred to as Qi ‘027).
Regarding claim 22, modified Batista teaches all the claim limitations as set forth above. Modified Batista does not explicitly teach a reflecting body.
Qi ‘027 teaches a smoking article comprising a tube that contains aerosol forming matrix that is heated using infrared radiation rays (abstract). The tube is surrounded by an infrared reflecting layer that prevents rays from being transmitted beyond the matrix to improve the heat utilization rate (column 6, lines 9-17, figure 3, reference numeral 114).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position a reflecting layer on the opposite side of the planar heating portion from the light source of modified Batista. One would have been motivated to do so since Qi ‘027 teaches a reflecting layer that prevents rays from being transmitted beyond a heating area so that the heat utilization rate is improved.
Regarding claim 23, Batista discloses that the side of the heating element that does not directly receive light from the light source is the outer side of the heating element (figure 3a), which is considered to be a periphery area.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection are entered as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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