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 and subject to this Office Action.
Response to Arguments
Applicant's arguments, pages 1-8, filed , with respect to the rejections of claims 1-20 under USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found art Chen, et al (WO2020001446A1) in view of Monsees, et al (US20130042865A1).
The following is a modified rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 9-11, 15 and 21are rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and further in view of Monsees, et al (US20130042865A1)
Regarding claim 1, Chen teaches an aerosol generating product, apparatus, and system [0001]; [0004]. The article includes a smoke body where the aerosol generating product is a product containing tobacco material that can generate aerosols via smoke or mist. [0026]
Chen teaches an electric heating element that can have a layered sheet-like two-dimensional structure that can be bent or rolled and has a thickness of 1 nanometer to 1 millimeter. [0058] The heating element material can be selected from a list of possible materials including electrically conductive heat-generating metals, alloys and metal compounds, citing a list of metals. [0059] The teaching of the thin metal material discussed above is considered to read on the claimed limitation of the heater being a metallic foil. The prior art teaches that the electrically heated element may be used as a tobacco paper or carrier tube supporting and containing the tobacco material. [0061]
The aerosol generating product includes a first product electrode and a second product electrode [0018] [0019] Chen teaches the first product electrode and second product electrode are connected and may be used to supply power to the resistive electric heating element by simply connecting two ends of the electric heating element directly to the device electrodes which will supply power to the heating element and heat the aerosol generating material. [0073]
Chen teaches that the electric heating element could be a layered structure that is a composite comprised of a metal layer and a polyimide layer. [0060] However, Chen is silent as to the function of the polyimide layer in the heating element.
Monsees, directed to the design of low temperature vaporizers, teaches the combination of polyimide and metal to form a heater where the polyimide is used as an insulating film that provides electrical and thermal insulation.[0069]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen by utilizing a layer structure having polyimide film as taught by Monsees because both Chen and Monsees are directed to heat-not-burn aerosol generating articles, Monsees teaches polyimide film is both thermally stable and electrically insulating [0069], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 2, Chen teaches the electrically resistive material can be a composite of materials where two materials are used to prepare the conductive heating element. The art teaches that of the materials may be selected from a list of materials that include both conductive polymers and synthetic polymers. Lin further expands on the list by providing specific examples of these materials and specifically notes the use for polyimide heating films. [0060]
Regarding claim 3, as discussed din claim 1, Chen as modified by Monsees teaches that the polyimide layer can by an insulating layer providing insulation that is stable at elevated temperatures. [0069]
Regarding claim 4, Chen is silent with respect to the polyimide layer providing additional mechanical strength to the capsule.
Monsees teaches that the polyimide layer provides excellent tensile strength, tear resistance, and dimensional stability. [0082]
Regarding claim 9, Chen teaches the conductive heating element can have the tobacco material stacked or layered on the heating element. The layered structure can then be rolled into a rod shape so that the electric heating element is a spiral in the tobacco material. [0062]
Regarding claim 10, Chen teaches electrodes can be formed on the surface of the electrically heated element by means of coating or spraying. [0073]
Regarding claim 11, Chen teaches the aerosol generating article can include a first and second product electrode configured to connect to the first and second device electrodes. Chen teaches in the location where the first and second device electrodes contact the aerosol generating product a dedicated electrode material may sprayed, coated, or printed on the electrical heating element (metal foil). [0073] The envisaged configuration, where there is a coating material, sprayed material, or printed material only on the aerosol generating product only at the location on the article where contact would be made with the device electrodes, would be considered to read on the claim limitations.
Regarding claim 15, Chen teaches the thickness of the electrically conductive heating element (metallic foil) can be from 1 nanometer to 1 millimeter. [0058] This teaching equated to the metallic foil having a thickness between 0.001 microns to 1000 microns. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 21, as discussed in claim 1, Chen discloses the metallic foil can be in direct contact with the first and second device electrodes during use and that the heating element may include an inner polyimide film [0073]; [0060].
Claims 5, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and Monsees, et al (US20130042865A1), as applied to claim 1, further in view of Jang, et al (US20220110368A1, from IDS dated 08/12/2024).
Regarding claim 5, Chen and Monsees both teach that the inner layer/ liner extends the length of the substrate. Neither of the prior pieces of art suggest a mechanical pressure being applied to the substrate to transfer energy to the article.
Jang, directed to the design of aerosol generating devices, teaches that the aerosol generating substrate is mechanically pressed in the device. (Abstract) Jang teaches that when the cover of the device is closed the aerosol generating article that is going to be heated is pressed between the two heaters. ([0053], Fig 3)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by pressing the aerosol generating article in the device as taught by Jang because Chen, Monsees, and Jang are directed to heat-not-burn aerosol generating articles, Jang teaches by doing this the temperature differences between portions of the aerosol-generating substrate can be minimized, and the aerosol-generating substrate can be rapidly heated to a target temperature and the preheating time of an aerosol generation device can be reduced, an initial taste of tobacco smoke can be improved, and a lack of vapor production can be addressed. [0017], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 16, Chen and Monsees are both silent to the possibility of compressing or flattening the smoking article.
Jang, directed to the design of aerosol generating devices, teaches that the aerosol generating substrate is mechanically pressed in the device. (Abstract) Jang teaches that when the cover of the device is closed the aerosol generating article that is going to be heated is pressed between the two heaters. ([0053], Fig 3)
Regarding claim 17, neither Chen nor Monsees disclose the smoking article would be flattened or that the deformation would have a ratio.
As discussed in claim 16, Jang teaches that the aerosol generating article that is flattened by the device prior to heating. Jang further teaches that the pressed portion of the substrate has a diameter in a range of 10%-50% of the diameter of the original aerosol generating article.(Figures 5-7; [0057]) The value of pressed aerosol generating article being 50% of the diameter of the diameter of the original article is considered to read on the 2:1 ratio of the instant claim.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by pressing the aerosol generating article in the device as taught by Jang because Chen, Monsees, and Jang are directed to heat-not-burn aerosol generating articles, Jang teaches Within these numerical ranges, the phenomenon in which the cigarette paper ruptures may be reduced, and the preheating time may be significantly reduced [0057], and this involves the use of known technique to improve similar products in the same way.
Claims 6-7, 18-19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and Monsees, et al (US20130042865A1), as applied to claim 1 and 21, further in view of Sebastian, et al (US20200154784A1).
Regarding claim 6, neither Chen nor Monsees teaches the lining would diffuse one or more chemicals.
Sebastian, directed to the design of aerosol generating articles, teaches the cover layer that comprises an aerosol precursor composition. ([0071], [0110])
Therefore before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by including an aerosol precursor composition or a flavorant in the layer around aerosol generating article as taught by Sebastian because Chen, Monsees, and Sebastian are directed to heat-not-burn aerosol generating articles, Sebastian teaches this allows for the addition of constituents such as aerosol precursors and flavorants [0007], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 7, Chen and Monsees are silent with respect to using a phase change material
Sebastian teaches the use of a phase change material in an aerosol generating article to reduce the temperature. [0047] Sebastian specifically describes the use of phase change materials as being used to cool the air; however, a person having ordinary skill in the art would recognize that phase change materials can be used for cooling in general as the thermodynamics associated with the phase change use the energy that has been created in the article.
Therefore before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by including a phase change material in the aerosol generating article as taught by Sebastian because Chen, Monsees, and Sebastian are directed to heat-not-burn aerosol generating articles, Sebastian teaches these materials can be used for cooling the air [0047], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 18, Sebastian teaches that the substrate component has a length of between approximately 10mm to 30mm. [0105] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by using lengths for the aerosol generating article similar to those of traditional cigarettes as taught by Sebastian because Chen, Monsees, and Sebastian are directed to heat-not-burn aerosol generating articles, Sebastian teaches this length provides physical feel and visual cues of a traditional cigarette [0029], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 19, Lin teaches the aerosol generating product is comprised of a filter at one axial end which is located at the airflow outlet while the airflow inlet is located at the opposite axial end of the product. ([0082])
Regarding claim 22, Sebastian teaches a liner may extend the full length of the aerosol generating substrate or the liner may circumscribe only a portion of the length of the substrate. [0084]
Therefore before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by including a liner that extends only partially up the length of the aerosol generating article where the electrodes are not located as taught by Sebastian because Chen, Monsees, and Sebastian are directed to heat-not-burn aerosol generating articles, Sebastian teaches the lining facilitates heat transfer axially but restricting radially outward heat conduction [0084], and this involves the use of known technique to improve similar products in the same way.
Claims 8 and 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and Monsees, et al (US20130042865A1), as applied to claim 1, further in view of Crillo, et al (US20190008208A1).
Regarding claim 8, Both Chen and Monsees are silent as to the use of an absorbent material for absorbing chemicals generated by pyrolysis.
Crillo, directed to smoking systems, teaches that the cartridge can contain material including polyamide-imide and cellulose acetate. [0088] A person having ordinary skill would recognize that cellulose acetate is commonly used in the tobacco arts as a filter material to absorb the chemicals produced during pyrolysis.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by using both cellulose acetate and polyamide in the aerosol generating article as taught by Crillo because Chen, Monsees, and Crillo are directed to aerosol generating articles, Crillo teaches both are fire resistant [0088], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 14, Chen teaches that the aerosol generating article can include an outer layer of paper but does not teach that the article would have openings for electrodes.
Crillo, directed to smoking systems, teaches that a smoking article can have one or more electrode holes that house electrodes on the cartridge to proximate the electrode to the combustible substance. [0119]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by the using the openings for electrodes by Crillo because Chen, Monsees, and Crillo are directed to aerosol generating articles, Crillo teaches this thickness allows the electrodes to be proximate to the substance [0119], and this involves the use of known technique to improve similar products in the same way.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and Monsees, et al (US20130042865A1), as applied to claim 1, further in view of Iwanaga, et al (US20210235747A1).
Regarding claims 12 and 13, Chen teaches the aerosol generating article can include a carrier tube that is made from cigarette paper [0034] that encloses the entire smoke material. [0045] A person having ordinary skill in the art would recognize that the paper covering the foil layer that would cover the band of overlap on the foil would insulate the overlapping area as paper is an insulating material.
Chen is silent with respect to how the paper covering would be joined around the article.
Iwanaga, directed to non-combustible smoking articles, teaches the use of a vinyl acetate emulsion adhesive and/or a starch based glue that is used for bonding sheets of material [0038] Iwanaga teaches that in a preferred embodiment both the vinyl acetate and the starch based glue are used for joining different sheets within the article. [0061] A person having ordinary skill would recognize that both starches and vinyl acetate are insulating materials.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by using electrodes to generate a resistive heating element as taught by Iwanaga because Chen, Monsees, and Iwanaga are directed to heat-not-burn aerosol generating articles, Iwanaga teaches these types of adhesives can achieve a strong wrapping that does not separate [0061], and this involves the use of known technique to improve similar products in the same way.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, et al (WO2020001446A1, hereinafter referring to the English machine translation provided) and Monsees, et al (US20130042865A1), as applied to claim 1, further in view of Park, et al (US20190000133A1).
Regarding claim 20, Chen teaches that the electrical connection for heating would occur between device electrodes and product electrodes but is silent with respect to possible distance between the electrode pairs.
Park teaches that the thermally conductive portions can be spaced longitudinally between 1-10mm. [0004]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen and Monsees by distance between electrodes as taught by Park because Chen, Monsees, and Park are directed to heat-not-burn aerosol generating articles, Park teaches the placement of the conductive portions forms discreet sections of thermally conductive material [0039] and this involves the use of known technique to improve similar products in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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