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 .
Terminal Disclaimer
The 9 terminal disclaimers filed on 01/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Numbers 18/314,321, 18/314,274, 18/314,271, 18/314,325, 18/315,073, 18/315,068, 18/315,063, 18/315,052, or 18/314,269 have been reviewed and are accepted. The terminal disclaimers have been recorded.
Response to Amendment
Applicant’s amendment to claims 1-3, 5-6, 11-12, and 15-16, cancellation of claim 20, addition of new claim 21, amendment to the drawings, and supporting remarks filed 01/20/2026 (“Amendment”) have been entered. Accordingly, the objection to the drawings, objections to the claims, and claim rejections for double patenting are withdrawn. However, the claim rejections under 35 USC 103 are maintained (albeit modified as necessitated by the amendment to claim 1), and a new rejection of claim 21 is set forth below.
Response to Arguments
Applicant's arguments with respect to the claim rejections under 35 USC 103 (Amendment p. 8-9) have been fully considered but they are not persuasive.
Applicant argues that Fuisz fails to disclose amended claim 1 because Fuisz discloses the stick 9 being inserted radially into the chamber 8, rather than axially as claimed, with reference to Fig. 6 (Amendment p. 8-9). The Examiner respectfully disagrees because such radial insertion is not clear from Fuisz’s disclosure. Fuisz discloses opening the cover radially to allow insertion of the stick 9 ([0058], Figs. 5-6), but nowhere does Fuisz explicitly state or illustrate how the stick 9 is directionally inserted. In fact, Figs. 5-6 together suggest the stick 9 is inserted downward into the chamber 8 (i.e., axially).
Regardless of whether Fuisz intends a user to insert the stick 9 radially or axially, Fuisz discloses embodiments of the chamber 8 having a diameter differential of 0-2 mm with the stick 9 [0088], which would provide space allowing axial insertion/removal of the stick 9. Therefore, the chamber 8 having positive diameter differentials is “configured to receive the elongate capsule via axial insertion” as claimed.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 63/438,643, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, claims 7-10 lack support. The provisional application is silent on receiving a user indication, a first/second smoking mode, vaporizing for a predefined period of time in the first mode, and vaporizing while receiving an active input from the user in the second mode (all per claim 7). Claims 8-10 depend from claim 7 and are therefore not supported. Application No. PCT/IB2023/052523 does support claims 7-10 (WO 2024/150037 A1 provided in IDS dated 08/22/2024 at p. 44 l. 22-p. 45 l. 10), and thus claims 7-10 have an effective filing date of 03/15/2023. Claims 1-6 and 11-20 have an effective filing date of 01/12/2023.
Claim Interpretation
Claim 1 recites an apparatus “for use with an elongate capsule that contains a smoking material containing one or more active agents, the smoking material being covered with a metallic foil”. The “capsule”, “smoking material”, “active agents”, and “metallic foil” are not positively recited components of the apparatus, and thus the quoted portion of the preamble is considered a mere statement of intended use which does not limit the structure of claims 1-20. See MPEP 2111.02(II); see also Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Furthermore, claim limitations directed to the capsule and components thereof are considered to have patentable weight only to the extent that they dictate the structure of the claimed apparatus. See MPEP 2115; see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claims 14-16 recite “wherein the electrodes are configured to flatten at least a part of a portion of the capsule [to various cross-sectional ratios]”. Any prior art smoking device which is configured to flatten at least a part of a capsule and alter its cross-section is considered to be structurally indistinguishable from claims 14-16, because the claimed cross-sections are achieved by a combination of (1) the smoking device which is configured to flatten but not further limited by specific structural elements in claims 14-16, and (2) the structure of the capsule, which does not form any part of the claimed apparatus.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a mechanism configured to bring the electrodes into pressurized contact with the capsule” in claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification discloses a mechanism 230 that is configured to bring electrodes 30 and/or mechanical elements 214 into pressurized contact with capsule 20 in order to enhance electrical contact between the electrodes and the heating element of the capsule and/or flatten a portion of the capsule. The mechanism 230 may include one or more compression springs 232 that are configured to generate a counterforce in response to being compressed, wherein the pressing of the button causes compression of the compression springs, such that upon release of the button, the compression springs bring the electrodes into pressurized contact with the capsule (p. 36-37, Figs. 29A-D).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-4, 6, 11-12, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1, provided in IDS dated 05/10/2023).
Regarding claims 1-2, Fuisz is directed to a vaporizer for smoking cigarettes (Title). The vaporizer (a “smoking device” as claimed) includes a chamber 8 (“receptacle”) for receiving a tobacco stick 9 (“elongate capsule”) [0181]. Air flows primarily through the stick 9 and along its length ([0065], Fig. 6, reproduced below). The chamber 8 may have a diameter differential between the chamber 8 and stick 9 of 0-2 mm [0088], which one of ordinary skill in the art would recognize allows the stick 9 to be inserted into and removed axially from the chamber 8 because the chamber 8 is wider than the stick 9 in such embodiments (and thus the chamber 8 reads on “the receptacle defining a slot configured to receive the elongate capsule via axial insertion of the elongate capsule into the slot”; compare Fuisz’s Figs. 5-6 with Applicant’s Figs. 1C-D showing slot 202 for receiving article 20). The chamber 8 has active contact semi-rings 14 (“first and second electrodes”) which are coupled to heaters 10 on the stick 9 to provide current thereto and resistively heat the stick 9 ([0183-184] Figs. 1-2, 5, 9-12). The heaters 10 may include metal foil (“metallic foil”) [0179, 0186].
Fuisz fails to explicitly disclose the distance between the semi-rings 14 and therefore fails to explicitly disclose “the first electrode driving a current toward the second electrode along a length of the metallic foil of more than 5 mm in an axial direction along a length of the capsule” per claim 1 and “more than 15 mm” per claim 2. As shown in Figs. 5 (reproduced below) and 9-12, two or three semi-rings 14 may be provided and may be spaced apart from one another, such as Figs. 5 and 8-9 showing outermost semi-rings 14 spaced approximately half the height of the chamber 8 from one another. Fuisz also discloses similar prior art devices having chamber lengths of 27.5 mm and 77.5 mm [0086-87]. Thus, one of ordinary skill in the art would expect Fuisz’s chamber 8 to have a similar length of approximately 27.5-77.5 mm. One of ordinary skill would further expect the semi-rings to be spaced apart along approximately half such length as shown in the Figures, which is approximately 13.75-38.75 mm. This length overlaps the claimed lengths of “more than 5 mm” per claim 1 and “more than 15 mm” per claim 2 and therefore renders them obvious. See MPEP 2144.05(I); see also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
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Regarding claim 3, the stick 9 may be cylindrical [0180]. The chamber 8 has a portion (“cylindrically-shaped insertion port”) which is cylindrical, as shown in Figs. 5-6. A body portion 11 and flip cover portion 12 (together a “non-cylindrical housing”) define air ducts 13 in the chamber 8 which form a non-cylindrical portion, as shown in Figs. 5-6 [0182].
Regarding claim 4, the active contact semi-rings 14 may include or be pogo pins with springs (“mechanism configured to bring the electrodes into pressurized contact with the capsule”) [0138, 0183].
Regarding claim 6, the stick 9 and metal foil 10 therein may be wrapped in paper (“paper covering”) [0116]. The active contacts 14 may have a pointed end (“needle shaped”) to pierce the paper [0121, 0138, 0183].
Regarding claims 11-12, Fuisz fails to explicitly disclose the length of the chamber 8 and the stick 9 and therefore fails to explicitly disclose “wherein the smoking device is configured to receive an elongate capsule having a length of between 15 mm and 150 mm” per claim 11 and “between 50 mm and 90 mm” per claim 12. Fuisz discloses similar prior art devices having chamber lengths of 27.5 mm and 77.5 mm for accommodating sticks with lengths of 45.2 mm and 83 mm, respectively [0086-87]. Thus, one of ordinary skill in the art would expect Fuisz’s chamber 8 to have a similar length of approximately 27.5-77.5 mm and to at least be capable of accommodating a stick 9 within the length range of approximately 45.2-83 mm, which lies within the claimed ranges and therefore renders them obvious. See MPEP 2144.05(I); see also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 21, Fuisz discloses the active contact semi-rings 14 as set forth above in the discussion of claim 1. One of ordinary skill in the art would expect semi-rings to partially surround the exterior of the stick 9, and indeed Figs. 5-6 show that each semi-ring 14 comprises a half-ring 14 on the device body and another half-ring 14 on the cover 12 (that is, each upper and lower semi-ring 14 comprises “two electrodes” as claimed). Furthermore, the semi-rings 14 correspond to contact rings 17 on the stick 9 [0187], and Figs. 1-2 and 5-6 show that such rings 17 extend around “both sides” of the stick 9 as claimed. Thus, the semi-rings 14 read on “wherein the first and second electrodes each comprise two electrodes arranged on either side of the receptacle, such that the first electrode drives the current toward the second electrode along both sides of the capsule”.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, in view of Raichman (WO 2016/147188, provided in IDS dated 05/10/2023).
Fuisz discloses the active contact semi-rings 14 as set forth above, but fails to disclose them being “configured to move axially along a length of the capsule” as claimed.
Raichman is directed to vaporizing devices (Title). Raichman discloses an electrode-movement mechanism, which facilitates high-quality and low-resistance electrical contact (p. 31 l. 4-14). The mechanism may slide the electrodes across a capsule to at least partially remove a coating that has developed on the capsule (p. 31 l. 27-p. 32 l. 4).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Fuisz to include the electrode-movement mechanism of Raichman, because both Fuisz and Raichman are directed to vaporization devices, Raichman teaches that this advantageously removes a coating from the capsule, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, in view of Dr. Dabber (2023, Jan. 27. Switch user manual. Dr. Dabber Knowledge Base. https://drdabber.helpscoutdocs.com/article/76-switch-user-manual, copy provided herewith).
Fuisz discloses the vaporizer as set forth above, which includes an electronic control and power unit 3 (“control component”) and a control button 4 [0181]. Fuisz also discloses a warm-up mode [0098] and puff activation of the heater [0073]. However, Fuisz fails to disclose that the control unit 3 is configured to “receive an indication from a user indicating whether they wish to smoke the active agents in a first mode or a second mode; in response to receiving an indication that the user wishes to smoke the active agents in the first mode, heat the smoking material to a vaporization temperature of the one or more active agents for a predefined period of time; and in response to receiving an indication that the user wishes to smoke the active agents in the second mode, only heat the smoking material to the vaporization temperature while receiving an active input from the user that they wish for the smoking material to be heated” as claimed.
Dr. Dabber is a user manual directed to the Dr. Dabber Switch vaporizer product (p. 1-2). Dr. Dabber discloses various modes of operation which are accessible to a user via buttons and switches (“receive an indication from a user”) (p. 7-8, 13-14). The modes include an Oil Mode, a Leaf Mode, and an Advanced Mode (each of which reads on the “first mode” as claimed), wherein the device holds a heating profile for 15 seconds in the standard oil/leaf modes and 5-30 seconds in the advanced mode (“a predefined period of time”) (p. 7-8, 13). Dr. Dabber discloses a Train Your Hold Time feature (“second mode”) wherein the user presses and holds a Go button, causing the device to hold a heating profile until the user releases the button (“only while receiving an active input”) (p. 14). These features provide the device with precise power controls and carefully calibrated temperature profiles to optimize the user experience (p. 3-4).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Fuisz by configuring the control unit 3 and control button 4 such that a user may select between a first mode wherein power is continuously supplied for a time period such as 15 or 5-30 seconds, or a second mode wherein power is supplied upon button press and until release, as taught by Dr. Dabber, because Fuisz and Dr. Dabber are directed to vaporizers, Dr. Dabber teaches that this optimizes the user experience, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) and Dr. Dabber as applied to claim 7, further in view of Lim (KR 20190049389 A, English translation provided herewith).
Regarding claims 8-9, modified Fuisz discloses the control unit 3 and control button 4 as set forth above. Fuisz further discloses a heating algorithm which includes preheating at lower temperatures before puff-activated heating at higher temperatures ([0251-0254, 0260-0262], Figs. 25-26). However, modified Fuisz fails to explicitly disclose the control unit 3 and button 4 being configured to preheat “prior to receiving the indication from the user indicating whether they wish to smoke the active agents in the first mode or the second mode” per claim 8 and “automatically, in response to the capsule being inserted into the smoking device” per claim 9.
Lim is directed to an apparatus for generating aerosols and a method for controlling the apparatus (Title). The device has an insertion hole to receive a cigarette, and the device enters an ON mode when the controller determines the insertion hole is open [0009]. In an embodiment, once the controller determines that a cigarette is inserted, the controller performs preheating to a preset temperature (which reads on claims 8 and 9) [0011, 0098]. This advantageously minimizes the time that a user has to wait for the device to heat [0098].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Fuisz by configuring the control unit 3 to carry out Fuisz’s preheating upon determining that a cigarette stick is inserted as taught by Lim, because both Fuisz and Lim are directed to aerosolization devices, Lim teaches that this advantageously reduces the user’s waiting time, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 10, modified Fuisz discloses preheating as set forth immediately above, but fails to disclose the control unit 3 being configured to preheat “in response to an input from the user”.
Lim discloses the device which enters an ON mode when the controller determines the insertion hole is open [0009], as set forth immediately above. In an embodiment, the controller preheats to a preset temperature upon receiving a user input through a button [0010, 0095]. One of ordinary skill in the art would recognize that such a configuration advantageously provides a user with additional control over the device (see [0037], explaining that the user may preset the temperature as desired).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Fuisz by configuring the control unit 3 and control button 4 to carry out Fuisz’s preheating upon the user activating the button 4 as taught by Lim, because both Fuisz and Lim are directed to aerosolization devices, one of ordinary skill in the art would recognize that this advantageously provides more user control, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Johaentges (WO 2022/189452 A1, provided in IDS dated 08/22/2024).
Regarding claim 13, Fuisz discloses the active contact semi-rings 14 as set forth above, which may be mechanically pressed against the heaters 10 of the stick 9 with sufficient force to reliably fix the stick 9 in the chamber 8 [0134, 0199]. However, Fuisz fails to disclose that such active contacts 14 are configured to “change a shape of the capsule” as claimed.
Johaentges is directed to an electrically conductive consumable for an aerosol generating device (Title, Abstract). The device includes first and second electrodes 4a, b for heating the consumable 1 (p. 12 l. 8-21, Fig. 1a, reproduced below). The electrodes 4a, b compress the consumable 1 to a thickness 8 similar to the largest dimensions of conductive particles 7 in the consumable 1 (which reads on “change a shape”) (p. 13 l. 12-p. 14 l. 6). The thickness 8 may be 0.5-3 mm (p. 12 l. 22-p. 13 l. 3). Reducing the thickness 8 advantageously reduces the contact resistance between the electrodes 4a, b and conductive particles 7 (p. 4 l. 15-20, p. 12 l. 22-p. 13 l. 3).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Fuisz by configuring the semi-rings 14 to press against the heaters 10 and compress the stick 9 to a thickness of 0.5-3 mm as taught by Johaentges, because both Fuisz and Johaentges are directed to aerosolization devices and consumables therefor, Johaentges teaches that this lowers electrical contact resistance and therefore improves heating, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claims 14-16, modified Fuisz fails to explicitly disclose the semi-rings 14 being configured to flatten “such that the part of the portion of the capsule that contains the smoking material defines 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” per claim 14, “more than 3:1” per claim 15, and “more than 4:1” per claim 16.
Joahentges’ electrodes 4a, b compress the consumable 1 to a thickness 8 of 0.5-3 mm, as set forth above. One of ordinary skill in the art would recognize that such compression produces a consumable 1 with a cross-section having a long and short side. Although Johaentges does not disclose specific cross-sectional ratios, the disclosure nevertheless renders claims 14-16 obvious. First, the electrodes 4a, b are structurally indistinguishable from the claimed electrodes because the claimed cross-sectional shape ratios may at least partially be attributed to features of the capsule, which forms no part of the claimed apparatus (see Claim Interpretation above). Second, Johaentges discloses that the thickness 8 (which directly affects the cross-sectional shape ratio) is a result-effective variable regarding the contact resistance (p. 4 l. 15-20, p. 12 l. 22-p. 13 l. 3), and thus one of ordinary skill in the art would be motivated to optimize the thickness 8 such that the long:short side ratios are within the claimed ranges. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Applicant’s specification p. 4 (explaining that when a capsule is flattened, smoking material is disposed closer to the heating element than in a circular cross-section), which supports the proposition that routine optimization of Johaentges would lead one of ordinary skill in the art toward the claimed ranges because Johaentges and Applicant cite similar rationales.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Fuisz’s semi-rings 14 to perform the compression such that the stick 9 has a cross-sectional shape with long:short side ratios of greater than 4 to 1, for the same reasons as discussed above with respect to claim 13, and further because such a cross section would be achieved by mere routine optimization of the compression disclosed by Johaentges.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Monticone (WO 2023/170182, provided in IDS dated 08/22/2024).
Fuisz discloses the vaporizer with chamber 8 for receiving stick 9, as set forth above. The stick 9 is sufficiently compressed to be retained within the chamber, but is not mechanically deformed [0199-0200]. Thus, Fuisz fails to disclose “wherein the smoking device is configured to flatten at least part of a portion of the capsule that contains the smoking material” per claim 17, and “roller wheels that are configured to flatten…upon the capsule being inserted into the smoking device” per claim 18.
Monticone is directed to an aerosol-generating device comprising a compression device and method for compressing an aerosol-generating article (Title). The compression device preferably includes opposing compression rollers (which read on “roller wheels” per claim 18, and the flattening of claim 17) defining a gap therebetween (p. 3 l. 8-32). Compressing the article advantageously increases heating efficiency (p. 1 l. 20-27, p. 2 l. 23-p. 3 l. 2), and this configuration compresses the article outside the oven, so that the article is advantageously compressed upon entry (p. 3 l. 26-32).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Fuisz to include Monticone’s compression rollers at the entrance to Fuisz’s chamber 8, because both Fuisz and Monticone are directed to aerosolization devices, Monticone teaches that the rollers allow for advantageously compressing the article for better heat transfer, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 2022/0218023 A1) as applied to claim 1, further in view of Jang (EP 3,984,387 A1, provided in IDS dated 08/22/2024).
Fuisz discloses the vaporizer with chamber 8 for receiving stick 9, as set forth above. The stick 9 is sufficiently compressed to be retained within the chamber, but is not mechanically deformed [0199-0200]. Thus, Fuisz fails to disclose “wherein the smoking device is configured to flatten at least part of a portion of the capsule that contains the smoking material” per claim 17 and “a funnel that is configured to flatten…upon the capsule being inserted into the smoking device” per claim 19.
Jang is directed to an aerosol-generating device having improved heating efficiency (Title). The device includes an adapter (which reads on the “funnel” of claim 19 and the flattening of claim 17) which deforms a portion of an inserted article to a desired pressed shape, to improve heating efficiency (Abstract). The adapter 13 has a cross-sectional area which decreases from one end 131 to the other 132 ([0068], Fig. 6).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Fuisz to include Jang’s adapter 13 to deform a portion of Fuisz’s inserted stick 9 to a desired pressed shape, because both Fuisz and Jang are directed to aerosolization devices, Jang discloses that compressing the article shape improves heating efficiency, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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.
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/ERIC YAARY/Examiner, Art Unit 1755