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 Submission
Applicant’s submission filed on 2026 August 24 has been entered. Claims 1-5, 7, and 9-20 are pending. Claims 3-5 and 9-18 remain withdrawn. In particular, claims 3-5, 9-13, and 16-18 should be marked as “(Withdrawn)”.
Claims 1-2, 7, and 19-20 are presently examined.
Claim Objections
Claims 1-2, 7, and 19 are objected to because of the following informalities:
Claim 1: in lines 4-6, “to produce heat, to heat” should be “to produce heat to heat” or just “to heat”.
Claim 2: “to determine a temperature” should be “to permit determining a temperature”.
Claim 7: the claim depends on cancelled claim 6 and is interpreted as depending on claim 1 to make the claim examinable.
Claim 19: “the susceptor is constructed into a sheet, and comprises” should be “the susceptor is constructed into a sheet and comprises”.
Appropriate correction is required.
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.
Claims 1-2, 7, and 19-20 are 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 1: “the first sheet portion” and “the second sheet portion” lack proper antecedent basis and are interpreted as “a first sheet portion” and “a second sheet portion”.
Claims 2, 7, and 19-20 are rejected by dependence on claim 1.
By claim 1’s above interpretation, claim 7’s limitation “the susceptor comprises a first sheet portion and a second sheet portion opposite to each other in a thickness direction” reiterates interpreted claim 1 and is omitted from further examination.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19: the claim recites “the susceptor is constructed into a sheet and comprises a first surface and a second surface facing away from each other; and the induction coil is constructed into a planar helical coil located between the first surface and the second surface” which is recited in its entirety in parent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Bessant (WO 2019030363 A1) in view of Moloney ‘244 (WO 2020188244 A1).
Claim 1: Bessant teaches an aerosol generation device (fig. 2 and p. 13, lines 6-24, #12), configured to heat an aerosol generation product (14) to generate an aerosol, and comprising:
a cavity (18), configured to receive the aerosol generation product (14);
a susceptor (24), at least partially extending in the cavity (18), and configured to be penetrated by a changing magnetic field (alternating magnetic field) to heat the aerosol generation product (14) in the cavity (18);
and an induction coil (fig. 10 and p. 15, lines 6-12 show a specific induction assembly comprising an induction coil #233), arranged in the susceptor (624 comprising 427 and 627), and configured to generate the changing magnetic field (p. 13, lines 20-24);
wherein the susceptor (fig. 10 and p. 15, lines 6-12, #427 and #627) is constructed into a sheet, and comprises a first surface (topmost surface of 627) and a second surface (bottommost surface of 427) facing away from each other;
and the induction coil (233) is constructed into a planar helical coil located between the first surface (topmost surface of 627) and the second surface (bottommost surface of 427),
and wherein a first sheet portion (627) and a second sheet portion (427) are formed.
Bessant does not explicitly teach that the first sheet portion and the second sheet portion are formed by folding a sheet precursor in half around an axis.
Moloney ‘244 teaches an aerosol generation device (title) comprising a susceptor (fig. 11 and p. 18, line 30 – p. 19, line 2, #128) formed by folding a sheet precursor in half around an axis (the axis protruding from the page towards a viewer).
Bessant’s susceptor can have any shape (Bessant p. 8, lines 3-7) and heats an aerosol former (Bessant fig. 2 and p. 13, lines 6-7, #14), and Moloney ‘244’s susceptor heats an aerosol former (Moloney ‘244 p. 18, lines 30-36, susceptor #128 forms an atomizer #70) to yield expectation to succeed.
The instant specification ascribes no significance or functional difference to the susceptor sheet being folded [applicant 12 and 82-83]. Specifying Bessant’s susceptor sheet shape as a folded sheet would maintain the susceptor’s function and would be an obvious matter of choice, absent evidence to the contrary. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was an obvious matter of choice absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Bessant’s generic susceptor shape, Moloney ‘244’s specific folded susceptor shape, because doing so would be a simple substitution of susceptor shapes that heat an aerosol former and would otherwise be a patentably indistinct change in shape.
Claim 7: modified Bessant teaches the aerosol generation device according to claim 1, wherein the induction coil (fig. 10 and p. 15, lines 6-12, #233) is located between the first sheet portion (627) and the second sheet portion (427).
Claims 2 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bessant (WO 2019030363 A1) in view of Moloney ‘244 (WO 2020188244 A1) as applied to claim 1 in further view of Moloney ‘224 (WO 2021176224 A1).
Claim 2: modified Bessant teaches the aerosol generation device according to claim 1, wherein the induction coil (p. 13, lines 20-24, #26) and the susceptor (24) are thermally conductive to each other;
and the induction coil (26) is made of a material with a positive or negative temperature coefficient of resistance (the induction coil conducts electricity which indicates that the induction coil’s resistance changes to some extent in response to temperature, i.e., the induction coil has some temperature coefficient of resistance).
Modified Bessant does not explicitly teach that the induction coil permits determining a temperature of the susceptor during use by detecting a resistance of the induction coil.
Moloney ‘224 teaches an aerosol generation device (title) comprising an induction element (p. 3, line 28 – p. 4, line 2, induction element) and a susceptor (susceptor), wherein detecting a resistance of the induction element and a resistance of the susceptor determines a temperature of the susceptor (p. 3, line 28 – p. 4, line 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Moloney ‘224’s resistance sensor to Bessant such that Bessant can detect a resistance of the induction element and a resistance of the susceptor in order to determine a temperature of the susceptor, because doing so would enable Bessant to determine a temperature of the susceptor for the same benefit of Moloney ‘224.
Claim 19: modified Bessant teaches the aerosol generation device according to claim 2.
Claim 20: modified Bessant teaches the aerosol generation device according to claim 19, wherein the susceptor (fig. 10 and p. 15, lines 6-12, #427 and #627) comprises a first sheet portion (627) and a second sheet portion (427) opposite to each other in a thickness direction;
and the induction coil (233) is located between the first sheet portion (627) and the second sheet portion (427).
Double Patenting
Claims 1 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/293883 in view of Bessant (WO 2019030363 A1) and Moloney ‘244 (WO 2020188244 A1).
Claim 1: ‘883 recites an aerosol generation device (C1, aerosol generation device), configured to heat an aerosol generation product (aerosol-forming product) to generate an aerosol, and comprising:
a cavity (cavity), configured to receive the aerosol generation product;
a susceptor (susceptor), at least partially extending in the cavity, and configured to be penetrated by a changing magnetic field to produce heat, to heat the aerosol generation product in the cavity;
and an induction coil (induction coil), arranged in the susceptor (the susceptor wraps the induction coil), and configured to generate the changing magnetic field;
wherein the susceptor comprises a first surface and a second surface facing away from each other (the susceptor wraps the induction coil which requires two exterior surfaces facing away from each other);
the induction coil (induction coil) is located between the first surface and the second surface (exterior surfaces facing away from each other),
and wherein a first portion and a second portion (portions of the susceptor) are formed by folding a precursor around an axis (the susceptor wraps the induction coil).
‘833 does not recite that the susceptor is a sheet, the induction coil is planar, and the first portion and the second portion are sheet portions formed by folding a sheet precursor in half around an axis.
Bessant teaches an aerosol generation device (title) comprising a susceptor (fig. 10 and p. 15, lines 6-12, #427 and #627) constructed into a sheet and comprising a first sheet portion (627) and a second sheet portion (427) opposite each other;
and an induction coil (233) constructed into a planar helical coil located between the first sheet portion (627) and the second sheet portion (427), such that the planar shapes optimize heating of the susceptor by the induction coil (p. 4, lines 16-19).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as ‘833’s generic susceptor shape and induction coil shape, Bessant’s specific sheet susceptor and flat induction coil, because doing so would optimize heating of the susceptor by the induction coil.
Moloney ‘244 teaches an aerosol generation device (title) comprising a susceptor (fig. 11 and p. 18, line 30 – p. 19, line 2, #128) formed by folding a sheet precursor in half around an axis (the axis protruding from the page towards a viewer).
Bessant’s susceptor can have any shape (Bessant p. 8, lines 3-7) and heats an aerosol former (Bessant fig. 2 and p. 13, lines 6-7, #14), and Moloney ‘244’s susceptor heats an aerosol former (Moloney ‘244 p. 18, lines 30-36, susceptor #128 forms an atomizer #70) to yield expectation to succeed.
The instant specification ascribes no significance or functional difference to the susceptor sheet being folded [applicant 12 and 82-83]. Specifying modified ‘833’s susceptor sheet shape as a folded sheet would maintain the susceptor’s function and would be an obvious matter of choice, absent evidence to the contrary. See MPEP 2144.04(IV)(B): In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The courts have held that the configuration of the claimed disposable plastic nursing container was an obvious matter of choice absent persuasive evidence that the particular configuration of the claimed container was significant.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Bessant’s generic susceptor shape, Moloney ‘244’s specific folded susceptor shape, because doing so would be a simple substitution of susceptor shapes that heat an aerosol former and would otherwise be a patentably indistinct change in shape.
Claim 7: modified ‘833 teaches the aerosol generation device according to claim 1, wherein the induction coil (induction coil) is located between the first sheet portion and the second sheet portion (the susceptor wraps the induction coil).
Claims 2 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/293883 in view of Bessant (WO 2019030363 A1) and Moloney ‘244 (WO 2020188244 A1) as applied to instant claim 1 in further view of Moloney ‘224 (WO 2021176224 A1).
Claim 2: modified ‘883 teaches the aerosol generation device according to claim 1, wherein the induction coil (C1, induction coil) and the susceptor (susceptor) are thermally conductive to each other (the susceptor wraps the induction coil, so the susceptor and the induction coil conduct heat between each other to some extent);
and the induction coil is made of a material with a positive or negative temperature coefficient of resistance (the induction coil conducts electricity which indicates that the induction coil’s resistance changes to some extent in response to temperature, i.e., the induction coil has some temperature coefficient of resistance).
Modified ‘883 does not explicitly teach that the induction coil permits determining a temperature of the susceptor during use by detecting a resistance of the induction coil.
Moloney ‘224 teaches an aerosol generation device (title) comprising an induction element (p. 3, line 28 – p. 4, line 2, induction element) and a susceptor (susceptor), wherein detecting a resistance of the induction element and a resistance of the susceptor determines a temperature of the susceptor (p. 3, line 28 – p. 4, line 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Moloney ‘224’s resistance sensor to Bessant such that Bessant can detect a resistance of the induction element and a resistance of the susceptor in order to determine a temperature of the susceptor, because doing so would enable Bessant to determine a temperature of the susceptor for the same benefit of Moloney ‘224.
Claim 19: modified ‘833 teaches the aerosol generation device according to claim 2.
Claim 20: modified ‘833 teaches the aerosol generation device according to claim 19, wherein the susceptor (C1, susceptor) comprises a first sheet portion and a second sheet portion (the susceptor wraps the induction coil which requires two portions opposite each other with respect to the induction coil; Bessant motivated making the portions sheet portions) opposite to each other in a thickness direction;
and the induction coil (induction coil) is located between the first sheet portion and the second sheet portion (the susceptor wraps the induction coil).
Response to Arguments
Applicant’s arguments of 2026 August 24 have been carefully considered but are not persuasive.
The examiner’s grounds of rejection rely on both Moloney ‘224 (WO 2021176224 A1) and Moloney ‘244 (WO 2020188244 A1).
Applicant argues (p. 2-3, “Rejection over Bessant”) that Bessant has not been shown to anticipate amended claim 1. The examiner agrees.
Applicant argues (p. 3, “Rejection over Bessant and Moloney”) that Moloney ‘224 has not been shown to teach forming a susceptor by folding a sheet precursor in half around an axis. The examiner agrees.
Applicant argues (p. 4, “Rejection over Bessant and Moloney2”) that Moloney ‘244 teaches an induction coil separate from a folded susceptor (Moloney ‘244 fig. 11, #128) rather than an induction coil arranged in a folded susceptor. However, Bessant already teaches an induction coil (Bessant fig. 10 and p. 15, lines 6-12 show a specific induction assembly comprising an induction coil #233), arranged in the susceptor (624 comprising 427 and 627), and Moloney ‘244 merely teaches a specific folded susceptor shape (Moloney ‘244 fig. 11, #128) to achieve the same heating outcome.
Applicant argues (p. 4, [final paragraph]) that the claimed folded shape is not arbitrary or ornamental. However, applicant has not shown that the folded shape imparts any functional difference to break the examiner’s proposed modification. One of ordinary skill would be suggested to substitute Moloney ‘244’s folded shape for Bessant’s folded shape to achieve the same heating outcome, per MPEP 2143(B) bolstered by MPEP 2144.04(IV)(B)’s In re Dailey. Such a specific shape effectively sandwiches the susceptor around material arranged therein (Moloney ‘244 p. 19, lines 4-5).
Double Patenting: applicant argues (p. 6-7) that 18/293883 and the art of record do not teach a folded susceptor. However, as in the above analysis, Moloney ‘244 teaches a folded susceptor.
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 Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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