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 .
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 13-15 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 13 recites the limitation "the one or more heating elements" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the “one or more heating elements” will be interpreted as “the metallic foil” in claim 1 because the metallic foil is heated by the electrodes.
Claims 14-15 are rejected for being dependent on the rejected claim 13.
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 non-obviousness.
Claims 1, 4, 6, 11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779).
Regarding claim 1, Fuisz teaches an apparatus for use with a smoking device that includes at least first and second electrodes and one or more batteries (Figure 5, tobacco stick 9 for vaporizer with semi-rings 14 and battery 2 (see Figure 10), [0181]-[0183]), the apparatus comprising:
a capsule (Figure 2, tobacco stick 9, [0181]) comprising:
a smoking material containing one or more active agents (tobacco stick contains nicotine (active agent), [0078]);
and metallic foil surrounding the smoking material (Figure 2, individual heater 10 made of foil, [0188]),
and the metallic foil being configured to be heated via resistive heating by the electrodes driving a current into the metallic foil (Figure 2, individual resistive heater 10 heats through conductive lines and contact rings 17, [0190]).
Fuisz fails to disclose wherein an overall resistance to the current that is provided by the capsule is configured to substantially match an internal resistance of the one or more batteries of the smoking device.
Liu teaches a similar battery assembly and atomizing assembly of an electronic cigarette wherein an overall resistance to the current that is provided by the capsule is configured to substantially match an internal resistance of the one or more batteries of the smoking device (battery assembly and atomizing assembly need to match and the atomizing device cannot generate smoke when heating coil has different resistance value (so they need to “substantially match”), [0004]). Liu also teaches that when the heating coil has a different resistance value damage to the electronic cigarette including battery overheat or leakage may occur [0004].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Liu to have the battery and atomizing assembly match in resistance value because if they do not match damage to the electronic cigarette including battery overheat or leakage may occur, as recognized by Liu [0004].
Regarding claim 4, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz discloses in a different embodiment wherein the metallic foil is shaped such that at least a portion of the metallic foil is embedded within the smoking material (Figure 15, metal foil resistance heater 18” is rolled together with the tobacco substrate 22, [0222]). Fuisz also discloses that this increases the contact area of the heater with the tobacco substrate and allows for the use of a lower temperature to completely heat the substrate [0222].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fuisz as presented in the rejection in claim 1 above to incorporate the teachings of a separate embodiment of Fuisz to have the metal foil resistance heater rolled together with the tobacco substrate because doing so would increase the contact area of the heater with the tobacco substrate and allow for the use of a lower temperature to completely heat the substrate, as recognized by Fuisz [0222].
Regarding claim 6, modified Fuisz discloses the apparatus according to claim 1, wherein the metallic foil has a first configuration at locations at which the electrodes are configured to contact the metallic foil (Figure 2, contact rings 17, [0188]),
and a second configuration along a region in which the metallic foil surrounds the smoking material that is between the locations at which the electrodes are configured to contact the metallic foil (Figure 2, heating surface 18 has longitudinal stripes, which is a different configuration than the flat surface of the contact rings 17, [0188]).
Regarding claim 11, modified Fuisz discloses the apparatus according to claim 1, wherein the capsule further comprises a paper covering that covers the metallic foil (stick has heater (the metallic foil) inside the tipping paper, [0116]),
the paper covering defining openings via which the electrodes are configured to make electrical contact with the metallic foil (tipping paper may be pierced by electrical device contacts so a circuit can be made with device contacts, [0121]).
Regarding claim 13, modified Fuisz discloses the apparatus according to claim 1, wherein at least a portion of the capsule is configured to be flattened by the smoking device prior to the one or more heating elements being heated by the smoking device (the “smoking device” is not positively cited, making this an “intended use” limitation. See MPEP 2114.II. “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” Examiner holds that this is the case with this limitation, since Fuisz teaches a tobacco stick (see rejection for claim 1 above) for use with a vaporizing device that would be capable of flattening it).
Regarding claim 14-15, modified Fuisz discloses the apparatus according to claim 13, wherein the capsule has a circular cross-sectional shape (tobacco stick may be cylindrical, [0180])
and is configured to be flattened to define a non-circular cross-sectional shape, such as to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape ( this is an “intended use” limitation. See MPEP 2114.II. “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” Examiner holds that this is the case with this limitation, since Fuisz teaches a tobacco stick (see rejection for claim 1 above) with a circular cross-section that is capable of being flattened to a non-circular cross-section with the claimed ratio).
Regarding claim 16, modified Fuisz discloses the apparatus according to claim 1, wherein the capsule comprises an elongate capsule having a length of between 15 mm and 150 mm (Figure 2, tobacco stick 9 is elongate ([0181]) and may have a length of 45.2 mm or 83 mm, [0086]-[0087]).
Regarding claim 17, modified Fuisz discloses the apparatus according to claim 16, wherein the elongate capsule has a length of between 50 mm and 90 mm (length of 83 mm exemplified in [0087]).
Regarding claim 18, modified Fuisz discloses modified Fuisz discloses the apparatus according to claim 16, wherein the capsule is configured such that airflow through the capsule is substantially in an axial direction along a length of the capsule (object to try to maximize airflow through tobacco plug, which is largely in the axial direction of the tobacco stick, [0065]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Worm et al. (US 2019/0289908).
Regarding claim 2, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to disclose wherein the capsule further comprises a collapse-prevention element configured to facilitate electrical contact between the electrodes and the metallic foil, by preventing the capsule from collapsing.
Worm teaches a similar aerosol source member wherein the capsule further comprises a collapse-prevention element configured to facilitate electrical contact between the electrodes and the metallic foil, by preventing the capsule from collapsing (interior of the aerosol source member contains a support to prevent collapsing, [0058]). Worm also teaches that a support on the interior of the aerosol source member prevents collapsing due to any outward pressure of the heating member exerted on the outside of the aerosol source member [0058].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Worm to provide a support (i.e. collapse-prevention element) such as the one taught by Worm because doing so would prevent collapsing due to any outward pressure of the heating member exerted on the outside of the aerosol source member, as recognized by Worm [0058].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Bowen et al. (US 2020/0037669).
Regarding claim 3, modified Fuisz discloses the apparatus according to claim 1, and wherein the metallic foil comprises a plurality of regions (Figure 2, heating surfaces 18 in form of several longitudinal stripes, [0188]). Fuisz fails to disclose each of the regions having a respective, different electrical resistance profile, such that upon a given current being driven through the metallic foil each of the regions heats to a respective, different temperature.
Bowen teaches a vaporizer cartridge with a heating element made out foil wherein each of the regions having a respective, different electrical resistance profile, such that upon a given current being driven through the metallic foil each of the regions heats to a respective, different temperature (foil can be treated (by perforation, varying thickness, etc.) to create different electrical resistance areas that can affect the temperature reached when heating the foil, [0071]). Bowen also teaches that this allows for different temperatures to be reached in different parts of the foil as desired [0071].
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Bowen to treat the foil to create different electrical resistance areas because doing so would allow for different parts of the foil to be heated to different temperatures as desired, as recognized by Bowen [0071].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Saygili (US 2023/0346019).
Regarding claim 5, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to disclose wherein the capsule further comprises an electrical-contact coating that coats the metallic foil at locations at which the electrodes are configured to contact the capsule.
Saygili teaches a similar cartridge for an aerosol generating device wherein the capsule further comprises an electrical-contact coating that coats the metallic foil at locations at which the electrodes are configured to contact the capsule (heater element may comprise first and second electrical contact portions and the heater sheet may be a foil ([0018] and [0020]), and the heater portion may be coated or plated with an electrically conductive material, [0030]). Saygili also teaches that the coating provides for improved thermal conductivity for faster heating and cooling as well as reduce the electrical resistance if necessary [0030].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Saygili to coat the electrical contacts with an electrically conductive material because doing so would improve the thermal conductivity for faster heating and cooling as well as reduce the electrical resistance if necessary, as recognized Saygili [0030].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Althorpe (US 2017/0360092).
Regarding claim 7, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to disclose wherein the capsule further comprises an inner lining that lines an inside of the metallic foil, the inner lining being configured to diffuse heat that is generated by the metallic foil.
Althorpe teaches a similar electronic nicotine delivery system that uses resistive heating wherein the capsule further comprises an inner lining that lines an inside of the metallic foil, the inner lining being configured to diffuse heat that is generated by the metallic foil (electrically resistive material may be a foil between two layers of a heat diffusing material, [0060]). Althorpe also teaches that the heat diffusing material evens out the heat profile generated to prevent the formation of localized hot spots on the heater surface [0043].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Althorpe to include a heat diffusing material at least on the inside of the metallic foil because doing so would even out the heat profile generated to prevent the formation of localized hot spots on the heater surface, as recognized by Althorpe [0043].
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052).
Regarding claim 8, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (stick has heater (the metallic foil) inside the tipping paper, [0116]). Fuisz fails to disclose wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape, and wherein an electrically insulating material is disposed along the band of overlap, to isolate an inner layer of the metallic foil from the electrodes.
Ademe teaches a similar smoking article including a metal foil wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape, and wherein an electrically insulating material is disposed along the band of overlap, to isolate an inner layer of the metallic foil from the electrodes (Figures 1 and 2, elongate paper sheet 80 is arranged to form an overlap zone 95 and an adhesive 98 is applied in the overlap zone to secure the paper sheet to itself to form a generally cylindrical shape (see figures) around the metal foil 60 (therefore isolating it), [0048]). Ademe teaches that the adhesive secures the wrapping material in a tubular fashion around the foil [0048].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to form an overlap zone with the tipping paper and use an adhesive to form a cylindrical shape around the metallic foil because doing so would secure the wrapping material in a tubular fashion around the foil [0048].
Regarding claim 12, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to explicitly disclose wherein the metallic foil has a thickness of between 1 micron and 20 microns.
Ademe teaches a similar smoking article including a metal foil wherein the foil strip has a thickness of 0.0005 mm to 0.05 mm (0.5 microns to 50 microns, [0076], this overlaps with the claimed range). Ademe also teaches that the foil strip enhances the heat transfer between the heat generation segment and the aerosol forming materials [0077].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to have made the foil a thickness of between 0.5 microns and 50 microns (which overlaps with the claimed range) because this foil enhances the heat transfer between the heat generation segment and the aerosol forming materials, as recognized by Ademe [0077].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052) and Bowen et al. (US 2020/0037669).
Regarding claim 9, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (stick has heater (the metallic foil) inside the tipping paper, [0116]). Fuisz fails to disclose the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape.
Ademe teaches a similar smoking article including a metal foil wherein the paper covering being adhered to itself along a band of overlap, such as to form a cylindrical shape (Figures 1 and 2, elongate paper sheet 80 is arranged to form an overlap zone 95 and an adhesive 98 is applied in the overlap zone to secure the paper sheet to itself to form a generally cylindrical shape (see figures) around the metal foil 60 (therefore isolating it), [0048]). Ademe teaches that the adhesive secures the wrapping material in a tubular fashion around the foil [0048].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Ademe to form an overlap zone with the tipping paper and use an adhesive to form a cylindrical shape around the metallic foil because doing so would secure the wrapping material in a tubular fashion around the foil [0048].
Fuisz also fails to disclose wherein the metallic foil is treated along the band of overlap, in order to increase resistance of the metallic foil along the band of overlap.
Bowen teaches a vaporizer cartridge with a heating element made out foil wherein is treated along the band of overlap, in order to increase resistance of the metallic foil along the band of overlap (foil can be treated (by perforation, varying thickness, etc.) to create different electrical resistance areas that can affect the temperature reached when heating the foil (meaning resistance can be increased where desired), [0071]). Bowen also teaches that this allows for different temperatures to be reached in different parts of the foil as desired [0071].
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Bowen to treat the foil (including the band of overlap as taught by the combination of Fuisz and Ademe above) to create different electrical resistance areas (including increased resistance where desired) because doing so would allow for different parts of the foil to be heated to different temperatures as desired, as recognized by Bowen [0071].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz et al. (US 2022/0218023, cited in IDS dated April 27, 2023) in view of Liu (US 2016/0309779) as applied to claim 1 above, and further in view of Jang (US 2022/0110368, cited in IDS dated August 12, 2024).
Regarding claim 10, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Fuisz fails to disclose wherein the capsule is shaped to define a cross- sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape.
Jang teaches a similar aerosol generating device wherein the capsule is shaped to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape (Figure 5, substrate portion 21 pressed so that the diameter is within a range of 10% to 50% of a diameter of the aerosol-generating article 2, [0057] and [0059], this would at least overlap with the claimed range of the ratio). Jang also teaches that pressing the aerosol-generating substrate allows for temperature differences between portions of the aerosol-generating substrate to be minimized and that the aerosol-generating substrate can be rapidly heated to a target temperature [0017].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fuisz to incorporate the teachings of Jang to have pressed the substrate so that the diameter is within a range of 10% to 50% of the original diameter because doing so allows for temperature differences between portions of the aerosol-generating substrate to be minimized and allows for the aerosol-generating substrate to be rapidly heated to a target temperature, as recognized by Jang [0017].
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 (+ Claim 1) of co-pending Application No. 18/307,524 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 3 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 7 (+ Claim 1) of co-pending Application No. 18/308,162 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 9 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 9 (+ Claim 1) of co-pending Application No. 18/312,070 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 6 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 7 (+ Claim 1) of co-pending Application No. 18/312,061 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 5 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 10 (+ Claim 1) of co-pending Application No. 18/312,058 reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam Z. Baratz whose telephone number is (703)756-1613. The examiner can normally be reached Monday-Thursday 6:30 - 4:30 CT.
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/A.Z.B./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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