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 .
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites “Use of an axially extending tube that circumferentially surrounds an aerosol-generating substance to achieve substantially homogenous heating of the aerosol-generating substance”. The claim is considered a process of using as said claim merely recites a use without any active, positively recited steps delimiting how the use is actually practiced, which renders these claims indefinite.
For the purposes of examination and compact prosecution, claims will be examined according to the structural limitations recited, without any active step of use. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(q).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “ ’Use’ claims that do not purport to claim a process, machine, or composition of matter fail to comply with 35 USC 101…one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 USC 101. MPEP 2173(q) “Use” Claims.
Claim 15 is considered to recite a use, per se, because the claim does not appear to have an active, positively recited, step delimiting how the use is practiced. Instead, the claims appear to be directed to all uses, which falls outside the four categories of patent eligible subject matter.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: Claims 1-14 are allowed.
Regarding claims 1, 11, and 12, the closest prior art Susa et al. (EP 0857431 A1, cited on 10/06/2023 IDS) discloses an aerosol-generating device comprising: an axially extending heating space configured to at least partially receive an aerosol-generating article (a flavor generation article that corresponds to a pipe 62 incorporating a formed body 88 (an aerosol-generating article) as a flavor generation medium) (Fig. 1; col. 5, l. 40-44); a heat receiving surface (an outer surface of the heat conduction tube 66) provided outside the heating space; a heat storage body provided between the heat receiving surface and the heating space (A laminated heat reservoir 86 is disposed in the heat conduction tube 66 to cover the entire inner surface of the heat conduction tube 66) (Fig. 1; col. 8, l. 4-6).
Susa does not disclose or reasonably suggest an inner heat conduction body provided between the heat storage body and the heating space; wherein a material of the heat storage body has a higher specific heat capacity than a material of the inner heat conduction body; and wherein the material of the inner heat conduction body has a higher thermal conductivity than the material of the heat storage body (claims 1 and 11); an inner heat conduction body provided between the heat storage body and the aerosol-generating article, wherein a material of the heat storage body has a higher specific heat capacity than a material of the inner heat conduction body (claim 12).
Therefore, for the above reasons, it is unclear how one of ordinary skill in the art can arrive at the claimed invention without the use of hindsight.
Matsuura et al. (US 6,089,857 A) teaches an aerosol-generating device comprising: an axially extending heating space configured to at least partially receive an aerosol-generating article (a flavor generation piece 110; a formed body 132 of a solid material for generating a flavor or the like to be inhaled by the user is detachably stored in the heat conduction tube 114) (Fig. 6; col. 5, l. 18-22, 42-44); a heat receiving surface (an outer surface of the heat conduction body 114) provided outside the heating space; a heat storage body provided between the heat receiving surface and the heating space (Fig. 7 shows a flavor generation piece 180 with common portions as shown in Fig. 6; a characteristic feature resides in that the inner surface of a heat conduction tube 114 is covered with a heat accumulation layer 154) (Fig. 7; col. 6, l. 50-60).
Matsuura does not teach or reasonably suggest an inner heat conduction body provided between the heat storage body and the heating space; wherein a material of the heat storage body has a higher specific heat capacity than a material of the inner heat conduction body; and wherein the material of the inner heat conduction body has a higher thermal conductivity than the material of the heat storage body (claims 1 and 11); an inner heat conduction body provided between the heat storage body and the aerosol-generating article, wherein a material of the heat storage body has a higher specific heat capacity than a material of the inner heat conduction body (claim 12).
Therefore, for the above reasons, it is unclear how one of ordinary skill in the art can arrive at the claimed invention without the use of hindsight.
Claim 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and under 35 U.S.C 101, set forth in this Office action.
Regarding claim 15, the prior art does not teach or reasonably suggest an axially extending tube that circumferentially surrounds an aerosol-generating substance, wherein a thermal resistance for heat transport through the tube along a radial direction varies along at least one of the axial direction and a circumference of the tube by at least 10 percent of a minimum value of the thermal resistance for heat transport through the tube along a radial direction.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/KATHERINE A WILL/Primary Examiner, Art Unit 1747