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 .
Response to Amendment
Amendment filed 6/10/2026 has been entered and fully considered. Claims 1, 4-7, 9-14 and 16-24 are pending. Claim 24 is new. Claims 2, 3, 8 and 15 are cancelled. Claims 1 and 10 are amended. No new matter is added.
Response to Arguments
Applicant's arguments filed 6/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the amendments overcome the 35 U.S.C. 102(a)(2) rejections.
Examiner agrees. The amendments includes features that were individually rejected under 35 U.S.C 103. Moreover, the claims contain a combination of limitations not previously presented. Specifically, claim 1 now contains the limitations from claim 3, and a partial limitation from claim 10 and these dependent claims did not depend from each other. Thus, the scope of the invention has changed.
Applicant argues that Feng’s stated arrangement is a substrate selected so that heat is kept in the heating layer rather than conducted through the substrate to the liquid absorbing surface. Feng’s design difference is established. Moreover, Feng also discloses that the thermal conductivity is 0.5 to 0.8 W/mK.
Examiner notes that rationale different from applicant’s is permissible. See, MPEP 2144, IV. Moreover, legal precedent can provide the provide the rationale supporting obviousness. MPEP 2144, III. Finally, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). MPEP 2144.05, I.
In the instant case Feng et al. discloses that the thermal conductivity is up to about 1.0 W/mk (Paragraph [0030]). The “about 1.0 W/mk” includes values slightly higher than 1.0 W/mk, as noted above. Thus, the ranges overlap.
Applicant argues that Feng does not discloses a porous ceramic substrate in which the liquid absorbing surface reaches a temperature greater than or equal to 80 C during operation. Fengs data includes temperatures of the heating wire. The values are not of the liquid absorbing surface.
Examiner notes that the courts have generally held that an "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) . MPEP 2114, I.
The recitation of the temperature achieved during operation is a recitation of a function of porous ceramic body, and the temperature of the heater, during a manner of operating the device. Only an explanation that the prior art device is capable of achieving the outcome is necessary to meet the burden of proof.
Feng discloses that the diameter of the ceramic substrate includes a value of 10 mm (Paragraph [0040]) (which equals an area of 0.00007854 m2), a thickness of 2 mm (Paragraph [0029]) (which converts to 0.002 meters), and has a thermal conductivity of 1 W/mk. The watts supplied to the heater is between 6.5 and 18 W (Paragraph [0033]). As seen in Table 1.4, sample 1-4 heats the surface of the ceramic substrate to 280 C.
For a finite thickness, the formula for thermal conductivity is Q=k *A*(ΔT/L) where Q is the total heat transfer rate in Watts, k is the thermal conductivity in W/mK, ΔT is the temperature different across the thickness in Celsius, and L is the thickness of the material. Entering in all the values noted above gives Q= 1 W/mK(0.00007854 m2)((280C-80C)/.002m). Q calculates to 7.854 Watts and falls with the disclosed Watts of 6.5 and 18Watts. Thus, the ceramic substrate of Feng necessarily has the ability to heat the liquid absorbing surface to 80 C when heating the vaporization surface to 280 C at the disclosed Wattage, with the disclosed ceramic substrate size and thickness, and with the disclosed thermal conductivity.
Applicant argues that the thermal conductivity range recited in claim 1 sits above Feng’s disclosed values. Feng’s preferred values cap at about 1.0 W/mK.
Examiner notes that rationale different from applicant’s is permissible. See, MPEP 2144, IV. Moreover, legal precedent can provide the provide the rationale supporting obviousness. MPEP 2144, III. Finally, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). MPEP 2144.05, I.
In the instant case Feng et al. discloses that the thermal conductivity is up to about 1.0 W/mk (Paragraph [0030]). The “about 1.0 W/mk” includes values slightly higher than 1.0 W/mk, as noted above. Thus, the ranges overlap.
Applicant argues that Feng does not disclose the claimed ISO standard.
Examiner notes that the combination of features now recited in claim 1 have not been previously required. The ISO standard will be addressed hereinafter.
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 1, 4-7, 9-14 and 16-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites an “ISO22007-2.2” standard for measuring thermal conductivity. This does not appear to be a proper standard. The standard (See attached ISO 22007-2:2022 document) appears to include date code after “ISO22007-2” not a simple “2”. Thus, it is unclear which standard Applicant is referring too. It is unclear if this is a separate undefined standard or a mistyped date code for the standard. Either way, it is unclear which standard is being referenced.
Claims 4-7, 9-14 and 16-24 are rejected for depending from claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 7, 9-14 and 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over FENG et al. (US 2023/0413907) in view of PREBE et al. (US 2018/0291172
With respect to claim 1, FENG et al. discloses an atomizing core (Abstract) comprising a single porous ceramic body, 110, (Paragraphs [0029]-[0031]; Figure 1) having a vaporization surface (e.g., surface on which heater, 120, is placed) on a first side thereof and a liquid absorbing surface (e.g., surface opposite said first surface) capable of absorbing liquid (Paragraph [0019]). The thickness of the porous ceramic substrate is between 1.5 and 2 mm (Paragraph [0029]) and the thermal conductivity of the porous ceramic substrate is between, 0.8 W/mk to about 1.0 W/mk (Paragraph [0030]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). MPEP 2144.05, I.
In the instant case Feng et al. discloses that the thermal conductivity is up to about 1.0 W/mk (Paragraph [0030]). The “about 1.0 W/mk” includes values slightly higher than 1.0 W/mk, as noted above. Thus, the ranges overlap.
Examiner notes that the courts have generally held that an "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) . MPEP 2114, I.
The recitation of the temperature achieved during operation is a recitation of a function of porous ceramic body, and the temperature of the heater, during a manner of operating the device. Only an explanation that the prior art device is capable of achieving the outcome is necessary to meet the burden of proof.
Feng discloses that the diameter of the ceramic substrate includes a value of 10 mm (Paragraph [0040]) (which equals an area of 0.00007854 m2), a thickness of 2 mm (Paragraph [0029]) (which converts to 0.002 meters), and has a thermal conductivity of 1 W/mk. The watts supplied to the heater is between 6.5 and 18 W (Paragraph [0033]). As seen in Table 1.4, sample 1-4 heats the surface of the ceramic substrate to 280 C.
For a finite thickness, the formula for thermal conductivity is Q=k *A*(ΔT/L) where Q is the total heat transfer rate in Watts, k is the thermal conductivity in W/mK, ΔT is the temperature different across the thickness in Celsius, and L is the thickness of the material. Entering in all the values noted above gives Q= 1 W/mK(0.00007854 m2)((280C-80C)/.002m). Q calculates to 7.854 Watts and falls with the disclosed Watts of 6.5 and 18Watts. Thus, the ceramic substrate of Feng necessarily has the ability to heat the liquid absorbing surface to 80 C when heating the vaporization surface to 280 C at the disclosed Wattage, with the disclosed ceramic substrate size and thickness, and with the disclosed thermal conductivity.
FENG et al. is silent as to the standard used to measure thermal conductivity. PREBE et al. discloses thermally conductive material and they are measured following the ISO 22007-2:2008-12 standard (Paragraph [0170]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use the ISO standard as taught by PREBE et al. for measuring the thermal conductivity of FENG et al. so that the thermal conductivity can be measured by a recognized standard.
With respect to claim 4¸ FENG et al. discloses that the porous ceramic substrate has a porosity between 40-50% (Paragraph [0021]).
With respect to claim 7, FENG et al. discloses that the pore size is between 15 and 25 microns (Paragraph [0020]).
With respect to claim 9, FENG et al. discloses a ceramic heating body comprising the porous ceramic substrate (See rejection of claim 1). The heating element comprises a heater, 120, on the vaporization surface configured to vaporize the aerosol generating substrate and the liquid absorbing surface is configured to absorb the substrate (Paragraphs [0019], [0029]-[0030]).
With respect to claim 10¸ FENG et al. discloses that the heating body is capable of reaching a temperature greater than 80C (Paragraphs [0043], [0052]) and the liquid absorbing surface is necessarily capable of being raised by the conducted heat given its thermal conductivity.
With respect to claim 11, FENG et al. discloses an electronic vaporization device comprising the heating body of claim 9 (Abstract; Title) (See rejection of claim 9).
With respect to claim 12, FENG et al. discloses that the porous ceramic substrate has a porosity up to about 50% (Paragraph [0021]).
The courts have generally held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). MPEP 2144.05, I.
With respect to claim 13, FENG et al. does not explicitly disclose that the porous ceramic substrate is a sheet shape. The courts have generally held that mere changes in shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence to the contrary. See MPEP 2144.04, IV, B. Thus, it would have been obvious to one having ordinary skill in the art, to provide the porous ceramic body in a sheet shape so as to provide it in a form factor to fit within the confines of an electronic vaporizing device. The heating element comprises a heater, 120, on the vaporization surface configured to vaporize the aerosol generating substrate and the liquid absorbing surface is configured to absorb the substrate (Paragraphs [0019], [0029]-[0030]).
With respect to claim 14¸ the aerosol-generating substrate is a material worked upon and its inclusion does not impart patentability to the claims. See, MPEP 2115.
With respect to claim 17, FENG et al. discloses that the liquid flows through the pores of the ceramic (Paragraphs [0019], [0029]-[0030]), thus it is capable of transferring the liquid via capillary force to the heating element.
With respect to claim 18, the aerosol-generating substrate is a material worked upon and its inclusion does not impart patentability to the claims. See, MPEP 2115.
With respect to claim 19, the aerosol-generating substrate is a material worked upon and its inclusion does not impart patentability to the claims. See, MPEP 2115. FENG et al. discloses that the substrate is a liquid (Paragraphs [0019], [0029], [0030]).
With respect claim 20, FENG et al. discloses an electronic cigarette comprising the heating body of claim 19, (Paragraph [0034]).
With respect to claim 21, FENG et al. discloses that the liquid flows through the pores of the ceramic (Paragraphs [0019], [0029]-[0030]), thus it is capable of transferring the liquid via capillary force to the heating element.
With respect to claim 22, the aerosol-generating substrate is a material worked upon and its inclusion does not impart patentability to the claims. See, MPEP 2115.
______________________________________________________________________
Claim(s) 5, 6, 16, 23 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over FENG et al. (US 2023/0413907) in view of PREBE et al. (US 2018/0291172) as applied to claims 1, 4, 7, 9-14 and 17-22 and further in view of BAI et al. (CN 110627519, machine translation).
With respect to claims 5 and 6, FENG et al. does not explicitly disclose the claimed materials in the claimed amount. BAI et al. discloses a porous ceramic atomizing core (Abstract). The core is formed from 20-40 mass% alumina, 10-20 mass% silica and 10-30 mass% silicon carbide (Claims 2 and 3) so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process (See highlighted sections in the machine translation). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the materials in the amounts disclosed by BAI et al. to form the porous substrate of FENG et al. so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process and ensure the capillary effect.
With respect to claim 16, FENG et al. does not explicitly disclose the claimed materials in the claimed amount. BAI et al. discloses a porous ceramic atomizing core (Abstract). The core is formed from 20-40 mass% alumina, 10-20 mass% silica and 10-30 mass% silicon carbide (Claims 2 and 3) and the pore diameter is between 10 and 30 microns, so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process (See highlighted sections in the machine translation) so as to ensure the production efficiency and . It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the materials in the amounts disclosed by BAI et al. and the pore size to form the porous substrate of FENG et al. so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process and ensure the capillary effect.
With respect to claim 23, FENG et al. does not explicitly disclose the claimed materials in the claimed amount. BAI et al. discloses a porous ceramic atomizing core (Abstract). The core is formed from 20-40 mass% alumina, 10-20 mass% silica and 10-30 mass% silicon carbide (Claims 2 and 3) and the pore diameter is between 10 and 30 microns, so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process (See highlighted sections in the machine translation) so as to ensure the production efficiency and . It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the materials in the amounts disclosed by BAI et al. and the pore size to form the porous substrate of FENG et al. so as to ensure the atomizing effect of the porous ceramic core, improve the production efficiency and the production process and ensure the capillary effect.
The courts have generally held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. MPEP 2144.05, I.
With respect to claim 24, FENG et al. discloses that the porous ceramic substrate has a porosity up to about 50% (Paragraph [0021]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEX B EFTA/Primary Examiner, Art Unit 1745
Prosecution Insights