CTFR 18/342,904 CTFR 82943 1747 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. DETAILED ACTION Information Disclosure Statement It is noted that the IDS filed 1/18/2025 contains an extremely large number of references for consideration by the Examiner. If the applicant and/or applicant's representative are aware of any particular reference or portion of a reference in the list which the examiner should take pay particular attention to it is requested that it be specifically pointed out in response to this Office action. Claim Rejections - 35 USC § 103 07-20-fti The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 07-21-fti Claim s 1, 3-5, 8-10 and 21-26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Monsees et al. (U.S Pub. No. 20090260641) in view of Satomi et al. (U.S Patent No. 5573140) . Regarding claim 1, Monsees discloses an apparatus comprising: an elongate heater (by reference sign 16, figs. 1-2) capable of heating smokeable material to volatize at least one component of the smokeable material; and a thermal insulation (see claim 35). Monsees also discloses the insulator could be a partially hollow shell containing a sealed vacuum [0045]. Satomi discloses a thermal insulation comprising: a boundary comprising a first boundary section, a second boundary section and a third boundary section which connects the first and second boundary sections together (see fig. 1 and column 3, lines 19-37); an internal insulating region (by reference sign 3, fig. 1) inside the boundary and configured to thermally insulate the first boundary section from the second boundary section; wherein the third boundary section follows an indirect path between the first and second boundary sections, (connecting by reference sign 1 to reference sign 5 of fig. 1); wherein the indirect path comprises a non-straight path, (section connecting by reference sign 1 and reference sign 5, fig. 1); the third boundary section is comprises metallic particles (Abstract and column 1, lines 31-37); therefore the thermal conductivity of the third boundary section is inherently higher than a thermal conductivity of the internal insulating region (vacuum) (Abstract and fig. 1); and the internal insulating region has a lower pressure than a pressure at the exterior of the boundary (fig. 1 and column 3, lines 19-37). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to improve the thermal insulation of Monsees with a thermal insulation comprising an internal insulating region as taught by Satomi. Monsees discloses the heater is a substantially elongate tube and extends along a longitudinal axis of a housing of the apparatus (by reference sign 16, figs. 1-2). Monsees discloses the insulation is located co-axially around the heater ([0045], figs.1-2 and claim 35). Satomi discloses the wall has a thickness 0.2mm (see Examples 2 and 3) it would have been obvious that the insulation thickness is within the claimed range of less than 1 mm. Regarding claim 3, Satomi discloses the first boundary section is substantially opposite the second boundary section (by reference signs 1 and 5 of fig. 1). Regarding claim 4, Satomi discloses wherein the third boundary section extends between the first boundary section and the second boundary section at an edge of the insulation (section connecting by reference sign 1 and reference sign 5, fig. 1). Regarding claim 5, Satomi discloses the third boundary section extends between an edge of the first boundary section and edge of the second boundary section (section connecting by reference sign 1 and reference sign 5, fig. 1). Regarding claim 8, Satomi discloses the indirect path comprises a winding path comprising a plurality of bends (section connecting by reference sign 1 and reference sign 5, fig. 1). Regarding claim 9, Satomi discloses sequential ones of the bends alternate in direction (section connecting by reference sign 1 and reference sign 5, fig. 1). Regarding claim 10, Satomi discloses the boundary comprises a wall and the boundary sections comprise sections of wall, wherein the wall comprises a metallic wall (section connecting by reference sign 1 and reference sign 5, fig. 1 and column 3, lines 19-37). Regarding claim 21, the combination of Monsees and Satomi taken together as a whole discloses the first boundary section is closer to the heater than the second boundary section, the second boundary section being separated from the heater by the internal insulating region (by reference sign 3, fig. 1 of Satomi). Regarding claim 22, Monsees discloses the smokable material heating chamber is located between the elongate heater and the insulation (see fig. 2 and Abstract). Regarding claim 23, Monsees discloses the elongate heater is elongate and extends a long a longitudinal axis of a housing of the apparatus (by reference sign 16, figs.1-2). Regarding claim 24, Monsees discloses the insulation is located co-axially around the heater (figs.1-2 and claim 35). Regarding claim 25, the apparatus of Monsees is capable of heating the smokable material without combusting the smokable material (Abstract). Regarding claim 26, Monsees discloses the insulation tube extends beyond an end of the elongate heater (see fig. 2 and claim 35), therefore combination of Monsees and Satomi taken together as a whole suggests that the third boundary section extends beyond an end of the heater. Regarding claim 27, Monsees discloses an apparatus comprising: a heater (by reference sign 16, figs. 1-2) capable of heating smokeable material to volatize at least one component of the smokeable material; and a thermal insulation (see claim 35). Monsees does not expressly disclose an internal insulating region of the thermal insulation. Satomi discloses a thermal insulation comprising: a boundary comprising a first boundary section, a second boundary section and a third boundary section which connects the first and second boundary sections together (see fig. 1 and column 3, lines 19-37); an internal insulating region (by reference sign 3, fig. 1) inside the boundary and configured to thermally insulate the first boundary section from the second boundary section; wherein the third boundary section follows an indirect path between the first and second boundary sections, (connecting by reference sign 1 to reference sign 5 of fig. 1); wherein the indirect path comprises a non-straight path, (section connecting by reference sign 1 and reference sign 5, fig. 1); the third boundary section is comprises metallic particles (Abstract and column 1, lines 31-37); therefore the thermal conductivity of the third boundary section is inherently higher than a thermal conductivity of the internal insulating region (vacuum) (Abstract and fig. 1); and the internal insulating region has a lower pressure than a pressure at the exterior of the boundary (fig. 1 and column 3, lines 19-37). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to improve the thermal insulation of Monsees with a thermal insulation comprising an internal insulating region as taught by Satomi. Monsees discloses the heater is substantially cylindrical and extends along a longitudinal axis of a housing of the apparatus (by reference sign 16, figs. 1-2). Monsees discloses the insulation is located co-axially around the heater (figs.1-2 and claim 35). Monsees discloses the apparatus comprises a smokable material heating chamber is located between the elongate heater and the insulation ([0031], [0045], Abstract and fig. 2). Furthermore, since Monsees discloses using thermal conduction for heating [0021]; it would have been obvious to one of ordinary skilled in the art to rearrange parts so that the heater (shapes are 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 was significant) heat up the heating chamber within the insulator (see In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)) . 07-22-fti Claim s 15-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Monsees et al. (U.S Pub. No. 20090260641) in view of Satomi et al. (U.S Patent No. 5573140) as applied to claim 1 above and further in view of Herrick et al. (U.S Patent No. 3225954) . Regarding claims 15-16, the combination of Monsees and Satomi discloses a vacuum insulation region for thermal insulation but does not expressly disclose the pressure range of the region; Herrick discloses the pressure varies between around of 10 -6 to 10 -3 mm Hg (column 1, lines 27-34) overlapping with the claimed ranges. In case of overlapping ranges, it would also be obvious to one of ordinary skill in the art at the time the invention was made to arrive to the claimed range through routine experimentation . Response to Arguments 07-37 AIA Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive. In response to applicant's argument that Satomi et al. (U.S Patent No. 5573140) is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker , 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Satomi is in the insulating art and the claimed invention is also toward insulating. Applicant further essentially argues that the shape of the insulation of Satomi is specific to the different purpose of Satomi, removing Satomi’s insulation from its context, as the PTO proposes by modification of Monsees, would leave a person of ordinary skill in the art without motivation to incorporate the same shape of Satomi’s insulation into the devide of Monsees (does not include or necessitate such a neck); a person skill in the art would thus not be motivated to combined the insulation of Satomi with the device of Monsees. This argument is not persuasive because Satomi discloses the third boundary having an indirect, non-straight path between inner surface (1, fig.1) and outer surface (5, fig. 1) and the purpose of the insulation is to minimize the heat transfer between the inner surface and the outer surface; therefore it would have been obvious to one of skilled in the art to make the third boundary of Monsees to have an indirect, non-straight path between inner surface and outer surface. Applicant further argues that the vaporization chamber (15) in a preferred embodiment of Monsees is in the center of the device and therefore not positioned between an elongate heater and insulation. This argument is not persuasive because Monsees discloses the vaporization chamber 15 of a heater 16 is surrounded by insulator (24, fig. 2) meeting the claimed that the chamber is between the heater and the insulator. Conclusion 07-40 AIA 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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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /PHU H NGUYEN/Examiner, Art Unit 1747 Application/Control Number: 18/342,904 Page 2 Art Unit: 1747 Application/Control Number: 18/342,904 Page 3 Art Unit: 1747 Application/Control Number: 18/342,904 Page 4 Art Unit: 1747 Application/Control Number: 18/342,904 Page 5 Art Unit: 1747 Application/Control Number: 18/342,904 Page 6 Art Unit: 1747 Application/Control Number: 18/342,904 Page 7 Art Unit: 1747 Application/Control Number: 18/342,904 Page 8 Art Unit: 1747 Application/Control Number: 18/342,904 Page 9 Art Unit: 1747
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