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 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 14 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.
Claim 15 is rejected for being dependent on the rejected claim 14.
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 1-7, 9-10, and 13-18 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 Saygili (US 2023/0346019).
Regarding claim 1, Fuisz discloses an apparatus for use with a smoking device that includes at least first and second electrodes (Figure 5, tobacco stick 9 for vaporizer with semi-rings 14 (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 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 containing foil to heat the smoking material 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 (synonymous with the contact rings of Fuisz which are the claimed “electrodes”), and the heater sheet may be a foil ([0018] and [0020]), and the electrical contact portion(s) may be coated or plated with an electrically conductive material, [0029]). Saygili also teaches that the coating provides improved contact resistance with an external power supply and provide greater strength to the electrical contact portion(s) [0029].
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 semi-rings of Fuisz (the “electrodes”) with an electrically conductive material because doing so would provide improve contact resistance with an external power supply and provide greater strength to the electrical contact portion(s), as recognized by Saygili [0029]. Even though the foils of Fuisz and Saygili are different in the relationship to the smoking material, both are still positioned in order to heat the smoking material, therefore the teaching of the coating in Saygili is relevant to Fuisz for all of the benefits above that Saygili teaches.
Regarding claims 2 and 3, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Modified Fuisz fails to explicitly disclose wherein the electrical-contact coating coats an outside or inside of the metallic foil. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have coated either the outside or inside (or both) of the metal foil because Saygili teaches that coating the metal foil provides improved contact resistance with an external power supply as well as improved resistance to corrosion ([0029] and [0030] of Saygili) and it would be desirable to realize these benefits as much as possible.
Regarding claim 4, modified Fuisz discloses the apparatus according to claim 1, wherein the electrical-contact coating has a lower resistance than a resistance of the metallic foil (Saygili, coating can reduce electrical resistance, [0030]).
Regarding claim 5, modified Fuisz discloses the apparatus according to claim 1, wherein the electrical-contact coating is configured to prevent generation of hotspots at the locations at which the electrodes are configured to contact the capsule (Saygili discloses the use of at least gold or copper as the coating material in [0029] and in the as-filed specification of the instant application on page 100 states that the coating may be gold or copper and this coating prevents the generation of hotspots, so the coating of Saygili would prevent hotspots as well).
Regarding claims 6 and 7, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Modified Fuisz fails to explicitly disclose wherein the electrical-contact coating comprises a ring-shaped coating at each of the locations at which the electrodes are configured to contact the capsule and wherein an edge of the electrical-contact coating is zigzagged at a side at which the coating contacts the metallic foil to thereby conduct electrical current to the metallic foil in a uniform manner. However, see MPEP 2144.04.IV.B. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).” There does not appear to be any evidence in the as-filed specification that either of the claimed shapes of the coating are significant.
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 changed the shape of the coating to a ring-shape or zigzag shape (for example) because doing so would only be a matter of choice to a person of ordinary skill in the art. See MPEP 2144.04.IV.B.
Regarding claim 9, 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 10, Fuisz discloses the apparatus according to claim 1, wherein the smoking device includes one or more batteries (Fuisz Figure 5, vaporizer has battery 2 (see Figure 10), [0181]-[0183]), and 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 (the “smoking device” (and the batteries therein) are not positively cited limitations, 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 for use with a vaporizing device comprising a battery and heated with resistive heating as shown above.).
Regarding claim 13, modified Fuisz discloses the apparatus according to claim 1, wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, 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 (Fuisz, tipping paper may be pierced by electrical device contacts so a circuit can be made with device contacts, [0121]).
Regarding claim 14, 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 15, modified Fuisz discloses the apparatus according to claim 14, wherein the capsule is configured to be flattened to define a non-circular 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 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]).
Regarding claim 18, modified Fuisz discloses the apparatus according to claim 16, wherein the metallic foil is configured to be heated via resistive heating by the first electrode driving a current to the second electrode (process explained in at least [0190]). Fuisz fails to explicitly disclose that the current is driven along a length of more than 5 mm in an axial direction along the metallic foil, however as can be seen in at least Figure 6 as well as the fact that the tobacco stick can be 83 mm ([0087]) it would be obvious to one of ordinary skill in the art that the distance between the semi-rings 16 (i.e. in contact with the electrodes) is at least 5 mm, and most likely much more. Alternatively, see MPEP 2144.04.IV.A. “In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that that the current is driven along a length of more than 5 mm in an axial direction along the metallic foil because either the fact that the tobacco stick of Fuisz is very long (83mm) and the rings are shown in Figure 6 as being far apart (almost certainly much farther than 5 mm) or because the only difference in the claimed device and the device of Fuisz is relative dimensions and the devices would not perform differently (see MPEP 2144.04.IV.A.).
Claim 8 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 Saygili (US 2023/0346019) as applied to claim 1 above, and further in view of Worm et al. (US 2019/0289908).
Regard Regarding claim 8, 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].
Claims 11 and 19-20 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 Saygili (US 2023/0346019) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052).
Regarding claim 11, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, stick has heater (the metallic foil) inside the tipping paper, [0116]). Modified 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 claims 19-20, modified Fuisz discloses the apparatus according to claim 1, as set forth above. Modified Fuisz fails to explicitly disclose wherein the metallic foil has a thickness of between 1 micron and 20 microns or 3 microns to 10 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 ranges). 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 ranges) because this foil enhances the heat transfer between the heat generation segment and the aerosol forming materials, as recognized by Ademe [0077].
Claim 12 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 Saygili (US 2023/0346019) as applied to claim 1 above, and further in view of Ademe (US 2015/0157052) and Bowen et al. (US 2020/0037669).
Regarding claim 12, modified Fuisz discloses the apparatus according to claim 1, and wherein the capsule further comprises a paper covering that covers the metallic foil (Fuisz, stick has heater (the metallic foil) inside the tipping paper, [0116]). Modified 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].
Modified 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].
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 9 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 6 (+ Claim 1) of co-pending Application No. 18/307,534 (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 13 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 (+ 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 10 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 (+ Claim 1) of co-pending Application No. 18/308,173 (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 8 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 (+ Claim 1) of co-pending Application No. 18/308,170 (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 18 (+ Claims 1 and 16) 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. 18/307,516 (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 12 (+ Claim 1) is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 6 (+ 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 11 (+ 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. 18/312,066 (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
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/A.Z.B./Examiner, Art Unit 1747
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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