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 .
Status of the Claims
Claims 1-20 are pending.
Claim 1, 9, 10 and 18 have been amended.
Response to Arguments
Applicant's arguments filed 10/2/2025 have been fully considered but they are not persuasive.
Applicant Argument:
The Applicant argues that Claim 1 has been amended to recite, in part, a heater material that is heatable via penetration with a varying magnetic field and to thereby heat the cavity, wherein the heater material comprises discontinuities or holes therein to control the degree to which different regions of the smokable material are heated in use. The specification describes that the discontinuities or holes in the heater material allow for these areas to "be heated to a lesser extent that areas without discontinuities or holes. This may help progressive heating of the smokable material, and thus progressive generation of vapor, to be achieved." Published Application at [0101]. None of the cited references teach or suggest the limitations of claim 1, alone or in combination. Davis is directed to a porous carbon heater with uniform macroscopic properties. The porous carbon heater is described as having a single density value, indicating that the porous structure is uniform throughout. For example, each of Examples 1, 2, 3 and 4 of Davis describe a porous carbon heater having a single, continuous density. Davis at [0129]-[0132]. It can also be seen in Figure 2 of Davis (reproduced below) that the structure of the porous carbon is completely uniform. By disclosing a single, continuous density heater material with no disclosure of differential heating, Davis fails to disclose the limitations of claim 1 having a discontinuities or holes that allow for controlling the degree different regions of the smokable material are heated. Accordingly, a person of ordinary skill in the art in view of Davis would not have been motivated to derive a heater material with discontinuities or holes to control the degree to which different regions of the smokable material are heated. This is because the uniform structure disclosed in Davis would lead to uniform heating and not allow for the "progressive heating of the smokable material, and thus progressive generation of vapor" described in the specification. Published Application at [0101]. Neither Li nor Davis teach discontinuities or holes in the heater material that allow for controlling the degree to which different regions of the smokable material are heated. Additionally, neither reference suggests benefits associated with such a design.
Applicant Response:
The Examiner respectfully disagrees. The instant specification states, “the heating material of the coil 22 may comprise discontinuities or holes therein. Such discontinuities or holes may act as thermal breaks to control the degree to which different regions of the smokable material are heated in use,” (page 28). The specification also states that the heater material may be conductive carbon (page 2). Thus the conductive porous carbon of Davis meets the structural limitations of the claimed heating material, wherein the holes in the conductive porous carbon of Davis could act as thermal breaks.
Furthermore, the Applicant is arguing limitations which are not claimed. The Applicant argues that modified Li teaches a porous carbon heater that has a single, continuous density and is completely uniform. However the claim just states that the heater material comprises discontinuities or holes, and does not require that heating material is not uniform and doesn’t have a single, continuous density.
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.
Claim(s) 1-8, 10-12 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20120234315 (LI hereinafter) in view of US 20150059780 (DAVIS hereinafter).
Regarding claims 1 and 5-7, LI teaches an article (Fig. 1) for use with an apparatus configured to heat smokable material to volatilize at least one component of the smokable material, the article comprising: a cavity (4) configured to receive a smokable material (1); and a heater material (2, “helix heater”) that is heatable via penetration with a varying magnetic field to thereby heat the cavity (“electromagnetic induction”, [0004]).
LI teaches that the heater material (2) is made of a conductive material ([0019]) and is heated by electromagnetic induction ([0004]), thus the heater material is inherently an electrically-conductive material.
LI does not expressly teach the specific material that makes up the heater.
DAVIS teaches a smoking article that employs heat produced by electrical energy ([0004]) wherein the heater material is electrically conductive porous carbon ([0006]). It would have been obvious for one of ordinary skill in the art at the time of filing to have made the heater material of LI out of electrically conductive porous carbon, as taught by DAVIS with a reasonable expectation of success and predictable results, namely effective heating ([0008]).
Regarding the limitation, “wherein the heater material comprises discontinuities or holes therein to control the degree to which different regions of the smokable material are heated in use” this is a functional limitation that is a property of the claimed heater material. The instant specification states, “the heating material of the coil 22 may comprise discontinuities or holes therein. Such discontinuities or holes may act as thermal breaks to control the degree to which different regions of the smokable material are heated in use,” (page 28). Therefore given that the heater material of modified Li meets the claimed structural limitations with respect to the heater material, the properties of the heater material of modified Li are expected inherently to be the same. The courts have held that recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims and that the Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. See MPEP 2112.
Regarding claim 2, Modified LI teaches a closed circuit of heater material (2, “helix heater”) that is heatable via penetration with a varying magnetic field (“electromagnetic induction”,[0004]), wherein the closed circuit includes the heater material (2, Fig. 1).
Regarding claim 3, Modified LI teaches that the heater material (2) is disposed in the cavity (4) (Fig. 1).
Regarding claim 4, Modified LI teaches that the cavity (4) is elongate (Fig. 1), and wherein the heater material (2) extends along a longitudinal axis that is substantially aligned with a longitudinal axis of the cavity (Fig. 1).
Regarding claim 8, Modified LI teaches that the heater material (2) is made of a conductive material ([0019]) and is heated by electromagnetic induction ([0004]), thus the heater material is inherently susceptible to eddy currents induced in the heater material when penetrated by a varying magnetic field.
Regarding claim 10, Modified LI does not expressly teach that a container (22) that defines the cavity is free of material that is heatable by penetration with the varying magnetic field.
However, it would have been obvious for one of ordinary skill in the art at the time of filing to have made the container free of material that is heatable by penetration with a varying magnetic field so that container does not get heated such that the user is not able to or is uncomfortable holding the container to be able to inhale the volatilized material.
Regarding claim 11, Modified LI teaches further comprising the smokable material (1) received in the cavity (4) (Fig. 1 and [0024]).
Regarding claim 12, Modified LI teaches the heater material (2) is in contact with the smokable material (1) ([0019]).
Regarding claim 14, Modified LI teaches further comprising a mouthpiece (end by “suction vent”, 16) that defines a passageway (16, “suction vent”) that is in fluid communication with the cavity (4) ([0020]).
Regarding claim 15, Modified LI teaches that the cavity (4) is sealed from an exterior of the article, specifically the cavity is sealed by “holder” (17) and “high-frequency generator” (6) (Fig. 1).
Regarding claim 16, Modified LI does not expressly teach an air-permeable membrane configured to admit air into the cavity from an exterior of the article during use.
However, it would have been obvious for one of ordinary skill in the art at the time of filing to have placed an air-permeable membrane on air-inlets (8 and 9, Fig. 1) in order to allow the influx of air, but to prevent dust particles or liquid from entering the article and contaminating the article which would lead to malfunction of the article.
Regarding claim 17, Modified LI does not expressly teach a seal disposed on the exterior of the article, wherein the seal seals the exterior of the article, and the seal is removable from the article.
However, it would have been obvious for one of ordinary skill in the art at the time of filing to have included a removeable seal on the exterior of the article to preserve the smokable material within the article such that air does not get into the article when the article is not in use, and would keep the smokable material within the article fresh for a longer period of time.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Davis, as applied to claim 1, above, and further in view of CN 203952405 (Zhao hereinafter).
A machine translations for CN 203952405 has been applied. All citations to ‘Zhao’ refer to the machine translation.
Regarding claim 13, Modified LI does not expressly teach that the smokable material is pipe tobacco.
Zhao teaches a similar device to Modified LI, specifically an article for use with an apparatus configured to heat tobacco (abstract), the article comprising: a container defining a cavity (26) which receives a smokable material (page 4, paragraph 4); and a heater (25), wherein the heater material comprises iron (page 4, paragraph 2) (Fig. 1) and that is heatable via penetration with a varying magnetic field and to thereby heat the smokable material to volatilize at least one component of the smokable material (page 4, paragraph 5). Zhao teaches that the smokable material is pipe tobacco (Zhao, page 4, paragraph 1).
It would have been obvious for one of ordinary skill in the art at the time of filing to have made the smokable material of Modified LI pipe tobacco as taught by Zhao with a reasonable expectation of success and predictable results.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of DAVIS as applied to claim 1 above, and further in view of WO 2015/177294 (Mironov hereinafter).
Regarding claim 9, Modified LI does not expressly teach that the first portion of the heater material is more susceptible to eddy currents induced therein by penetration with the varying magnetic field than a second portion of the heater material.
Mironov teaches an aerosol-generating article with a multi-material susceptor wherein the first material is directly adjacent the second material (abstract) in a direction perpendicular to the longitudinal direction of the heater material (2 and 3 in Fig 1), wherein the first material is aluminum or a ferrous material such as stainless steel and the second material is nickel or certain nickel alloys (page 3, lines 7-20). These two materials have different material densities. It would have been obvious for one of ordinary skill in the art at the time of the invention to have made the heater material of Modified LI comprised out of multiple materials, as taught by Mironov, with a reasonable expectation of success and predictable results, namely, the immediate proximity of the first and second susceptor materials provides accurate temperature control (page 4, lines 1-3).
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI in view of DAVIS as applied to claim 1 above, and further in view of Transformers of Induction Heating (UIHM hereinafter).
Regarding claim 18, Modified LI teaches a system comprising:
an article (“2nd housing”, 18) including a cavity (4) configured to receive a smokable material (1); and a heater material (2, “helix heater”) that is heatable via penetration with a varying magnetic field to thereby heat the cavity (“electromagnetic induction”, [0004]). As the heater material (2, “helix heater”) is a helix, a helix by definition comprises discontinuities therein, specifically helix has openings between the loops of the helix.
an apparatus (“1st housing”, 13) having an interface (4) configured to cooperate, via “plugging” (15, Fig. 1), with the article (“2nd housing”, 18) ([0008],[0017] and [0019]), and
a magnetic field generator (6) having a coil (3) configured to generate the varying magnetic field that penetrates the heater material of the article when the interface is cooperating with the article (“electromagnetic induction”, [0004], [0008], [0010]).
Modified LI does not explicitly state that an impedance of the heater material of the magnetic field generator is equal, or substantially equal, to an impedance of the heater material of the article.
However, impedance matching is necessary to obtain the full rated power dissipation from a heater (“Impedance matching”, UIHM, pages 22-24).
It would have been obvious for one of ordinary skill in the art at the time of filing to have matched the impedance of the heater material of the magnetic field generator to the impedance of the heater material of the article in Modified LI because, as taught by UIHM, impedance matching is necessary to obtain the full rated power dissipation from a heater (“Impedance matching”, UIHM, pages 22-24).
Regarding claim 19, Modified LI teaches that the interface (4) defines a recess configured to receive at least a portion of the article (1) (Fig. 1).
Regarding claim 20, Modified LI teaches that the recess (4) is elongate, and wherein the coil (3) of the magnetic field generator (6) extends along a longitudinal axis that is substantially aligned with a longitudinal axis of the recess (4) (Fig. 1).
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755