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
The amendments entered on 2/10/2026 have been accepted. Claims 1-4 are amended. Claims 13-20 are new. Claims 1-20 are pending. Applicant’s amendments to the claims have overcome the objections previously set forth.
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.
Claim 18 is 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 18 requires for the inner diameter of the second opening to be equal to the inner diameter of the first opening. Claim 17, of which this claim depends, requires for the second opening to the greater than the inner diameter of the first opening. Therefore, there is a contradiction between claim elements such that the limitation of claim 18 contradicts with the earlier limitations such that it is unclear how the limitation is to be satisfied. Applicant is asked to amend and clarify without the addition of new matter. The claim will be examined as if the inner diameter of the second opening is greater than the inner diameter of the first opening.
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 1-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (WO2020074602A1, of record, citing to English Equivalent US2021/0378308A1) in view of Li (CN108813737A1, of record).
Regarding claim 1, Reevell discloses an aerosol-generating apparatus (“100”, see Fig. 1), comprising:
a heating base with a heating cavity (as in Fig. 6, there is discloses a heating chamber “108” with a base “112”),
a heating member configured to accommodate and heat an aerosol-generating substrate (as in Fig. 6, the substrate carrier “114” for generating the aerosol is inserted into the top of the device into the heating chamber. The heater “124” applies heat to the metallic layer “144” which may heat the substrate [0108]),
wherein the heating member is disposed in the heating cavity (see Fig. 6, wherein the heating member is clearly in the chamber “108”),
wherein the heating member comprises a first sidewall (as in Figs. 6 and 6a, the first sidewall may be considered to be “144”),
wherein a protrusion is disposed on an inner surface of the first sidewall (as seen in the top-down view in Fig. 2a for example, protrusions “140” may be formed on the inner radial surface of “144”. And as in Figs. 6-6a, the surface of the protrusions “145” in on the inner surface of “144”),
the protrusion makes a second airflow channel between the first sidewall and the aerosol-generating substrate, where the air flows from outside to the bottom of the heating cavity (as in Fig. 6a, the arrows “B” illustrate the air flow paths which are caused by the protrusions [0091], wherein this path formed between “144” and the substrate is considered to be the second airflow channel. The air flow paths are located in front of and behind the protrusions [0091], in a substantially similar way as that of the instant application. As in the example of Fig. 2a, the airflow would be located in the gaps between the four protrusions [0091]. And from the airflow path “B”, the air clearly comes from out of the device and down to the bottom of the heating cavity).
Reevell does not explicitly disclose a first airflow channel formed between the first sidewall and the inner surface of the heating cavity. However, it is common within the art to have an airflow channel as such. Li discloses an aerosol generating device for generating aerosol (see Fig. 1). The device includes a first air flow passage “20”, which is formed between the inner wall of the housing “110” and an outer wall of the heat insulating “103” [pg. 3 of machine translation], such that the air flow passage is clearly formed between the first sidewall and inner surface of the heating cavity. As in Fig. 1, this airflow channel extends from outside of the device to the bottom of the heating cavity, where the airflow then enters the substrate to heat it.
One of ordinary skill in the art would have found it obvious to include the airflow channel as suggested by Li in the aerosol-generating apparatus of Reevell. One would have been motivated so as to lower the temperature of the outer wall, and to supply this heat to the aerosol-forming product so as to achieve heat recovery and enhance user experience by utilizing and saving energy [pg. 5-6 of machine translation]. And with this modification, there would be two air channels in modified Reevell, with the first channel as described by Li and the second as formed by the protrusions of Reevell which is located to the inside of the first channel. One of ordinary skill in the art would have had a reasonable expectation of success in incorporating the two channels, for the benefits of heat recovery/energy as in Li and to balance conductive/convective heating as in Reevell [0097].
Regarding claim 2, modified Reevell makes obvious the apparatus wherein a proportion of an area of a surface of the protrusion for contacting the aerosol-generating substrate to an area of the inner surface of the first sidewall is 5-15% (Reevell suggests that the amount of protrusions and the respective length/width thereof directly affects the available air flow [0096]. The size of the protrusions will determine draw resistance for the user, which needs to be neither too low nor too high [0096]. Reevell also suggests that the amount and shape of the protrusions directly affects the balance between conductive and convective heating of the substrate, such that the size and number of protrusions may be adjusted so as to have a desirable amount of both types of heating [0097]. Reevell allows for a wide variety of different shapes of its protrusions [0097-0101]. The width/length and number of protrusions directly corresponds to the area of protrusions contacting the substrate. As the balance between draw resistance and convective/conductive heating is a variable that can be modified by adjusting the protrusion areas/amounts, among others, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the range cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the area/number of protrusions to obtain the desired balance between sufficient draw resistance and conductive/convective heating (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Reevell in view of Li discloses a same aerosol-generating apparatus with the second airflow channel formed between protrusions, one of ordinary skill in the art would have optimized the protrusion area/number through routine experimentation and thereby arrived at the claimed range).
Regarding claim 3, modified Reevell makes obvious the apparatus wherein a maximum height of the protrusion is 2-5mm (the height of the protrusion is considered to be in the radial direction from the sidewall towards the center of the chamber. Reevell suggests that the height of the protrusions directly affects the available air flow [0088, 0096]. The height of the protrusions will determine draw resistance for the user, which needs to be neither too low nor too high [0096]. Reevell also suggests that the protrusion height directly affects the balance between conductive and convective heating of the substrate, such that the size and number of protrusions may be adjusted so as to have a desirable amount of both types of heating [0088, 0097]. As the balance between draw resistance and convective/conductive heating is a variable that can be modified by adjusting the protrusion height, the precise interval would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date. As such, without showing unexpected results, the range cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date would have optimized, by routine experimentation, the height of the protrusions to obtain the desired balance between sufficient draw resistance and conductive/convective heating (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).” Given that Reevell in view of Li discloses a same aerosol-generating apparatus with the second airflow channel formed between protrusions, one of ordinary skill in the art would have optimized the protrusion height through routine experimentation and thereby arrived at the claimed range).
Regarding claim 4, modified Reevell makes obvious the apparatus wherein the first sidewall is disposed in a ring shape (see Fig. 2a of Reevell, which provides a top down view of the sidewall which is clearly in a ring shape), and the protrusion has one of the shapes required (a large variety of different protrusion shapes may be utilized in Reevell [0097-0101]. The protrusions may be elongate and be disposed around the circumference of the sidewall [Figs. 1-6, 0098-0099], such that the protrusions are reasonably be considered to be strip-shaped, dot shaped, and/or annular shaped all disposed at intervals in the circumferential direction. Reevell further says that the protrusions may have different shapes, including appearing as a square, circle, or may have varied length/width around the sidewall [0100]. Further, it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination. See MPEP 2144.04. Applicant has not demonstrated any criticality or unexpected results to the specific shapes of the protrusion).
Regarding claim 5, modified Reevell makes obvious the apparatus wherein the first sidewall portion of the first sidewall is concave to form the protrusion (as in Fig. 2a and Figs. 6-6a of Reevell, the first sidewall is clearly formed concave towards the center of the chamber so as to form the protrusions “140”).
Regarding claim 6, modified Reevell makes obvious the apparatus wherein the first sidewall is disposed in a ring shape, and the heating member is disposed coaxially with the heating base (as in Fig. 2a of Reevell which provides a top-down view, the first sidewall is clearly formed in a ring shape. And as in Figs. 6 and 6a, the heating member is considered to be disposed coaxially with the heating base as they are both formed along the same central axis of the heating chamber).
Regarding claim 7, modified Reevell makes obvious the apparatus wherein the base further comprises a second sidewall, with a first limiting member disposed between the first sidewall and the second sidewall which spaces the sidewalls to form the first airflow channel (as modified by Li, the apparatus would include the first airflow channel where the airflow is located to an outside of the first sidewall/protrusions of Reevell, with the first airflow channel located between the first sidewall and the inner surface of the heating cavity as in Li. The 2nd sidewall therefore would be considered to be the limiting wall on the outside of the airflow channels of Li which would necessarily be present to delineate the airflow channel as required. Regarding the limiting member, a variety of members may be reasonably be considered to be as such. For example in Li, the annular fixing members “105” may be considered a limiting member, as it provides the structure around the 2nd airflow channel [pg. 5 of machine translation]. And further, it being noted that “limiting members” to define the spacing between sidewalls/members in aerosol apparatuses are extremely common and would be obvious to apply in the first airflow channel. See Reevell Fig. 5 and the member “160” for example, which is formed to be located between sidewall “152” and the surface “102”, such that the members are held in place [0071]. The member “160” provides sufficient friction to keep the surrounding structures in place, and it may be a gasket, O-ring, or other material [0071], which is substantially similar to the limiting member of the instant application which may be formed as a rubber ring for example. Reevell further states that the chamber sidewalls/positioning may be kept secure by engagement portions which form the surrounding sidewalls [0072-0073], such that the limiting member may also be formed from the surrounding structure itself. Therefore, one of ordinary skill in the art would have found it obvious to use the spacing/structure details as suggested by Reevell to properly space the sidewalls to form the first airflow channel of Li so as to adequately secure the spacing of the first airflow channel).
Regarding claim 8, modified Reevell makes obvious the apparatus wherein one of the sidewalls protrudes to form the limiting member (when in view of Li, as in Fig. 1 thereof, the sidewall around the first air channel is shown to protrude out to form the limiting member as defined above in regards to “105”/”1031” [see Fig. 1, pg. 5 of machine translation]. And further, as in the rejection of claim 7 above, it is conventionally known for “limiting members” to define the spacing between sidewalls/members to provide sufficient structure to the device. Reevell states that the chamber sidewalls/positioning may be kept secure by engagement portions which form the surrounding sidewalls [0072-0073], such that the limiting member may also be formed from the surrounding structure itself, such that it would be considered that either the first/second sidewall would be forming the first limiting member. Therefore, one of ordinary skill in the art would have found it obvious to use the spacing/structure details as suggested by Reevell to properly space the sidewalls to form the first airflow channel of Li so as to adequately secure the spacing of the first airflow channel).
Regarding claim 9, modified Reevell makes obvious a second sidewall and a bottom wall which enclose to form the heating cavity (the bottom wall would be considered to be the platform “148” which is formed at the base of the cavity as in Figs. 1-6. And as modified by either Li, the apparatus would include the first airflow channel where the airflow is located to an outside of the first sidewall/protrusions of Reevell, with the first airflow channel located between the first sidewall and the inner surface of the heating cavity as in Li. The 2nd sidewall therefore would be considered to be the limiting wall on the outside of the airflow channels of Li which would necessarily be present to delineate the airflow channel as required. Therefore, the combination of the second sidewall and bottom wall would necessarily enclose to form the heating cavity),
Wherein a third airflow channel is formed between the bottom wall and the substrate, and the third airflow channel communicates with the first and second airflow channel (as shown in Fig. 6 and 6a, because the bottom wall is raised in the center of the substrate and but is lower at each of the edges of the substrate, there would be a third airflow channel where the air would travel radially towards the center and then up into the substrate. Fig. 6 provides a horizontal arrow showing that after the airflow channels between the protrusions, the air would then travel inwards to the center, before entering the substrate and traveling up and out of the device. Because the airflow channels of Li are both situated to extend down to the base of the heating cavity and to then enter the substrate, it would necessarily be such that the first and second airflow channels would lead into this third airflow channel).
Regarding claim 10, modified Reevell makes obvious a first limiting member disposed between the first/second sidewalls and wherein the limiting member limits the heating member for the third airflow channel to communicate with the first airflow chamber (a variety of members may be reasonably be considered to be as the claimed limiting member. For example in Li, the annular fixing members “105” may be considered a limiting member, as it provides the structure around the 2nd airflow channel [pg. 5 of machine translation], and it may be located in multiple locations along the extend of the airflow channel such that its placement in proximity to the third airflow channel (at the base of the heating channel moving towards the center of the device). For example, the vent hole “1041” may be formed between the vertical airflow and the horizontal airflow channels [see Fig. 1, pg. 5-6 of machine translation], wherein this vent hole between the air channels would clearly accomplish the claimed effects between the first/third airflow channels. And further/alternatively, it being noted that “limiting members” to define the spacing between sidewalls/members in aerosol apparatuses are extremely common and would be obvious to apply in the first airflow channel. See Reevell Fig. 5 and the member “160” for example, which is formed to be located between sidewall “152” and the surface “102”, such that the members are held in place [0071]. The member “160” provides sufficient friction to keep the surrounding structures in place, and it may be a gasket, O-ring, or other material [0071], which is substantially similar to the limiting member of the instant application which may be formed as a rubber ring for example. Reevell further states that the chamber sidewalls/positioning may be kept secure by engagement portions which form the surrounding sidewalls [0072-0073], such that the limiting member may also be formed from the surrounding structure itself. Therefore, one of ordinary skill in the art would have found it obvious to use the spacing/structure details as suggested by Reevell to properly space the sidewalls to form the first airflow channel of Li so as to adequately secure the spacing of the first airflow channel, and in doing so would have been obvious to have the limiting member placed between the first and third airflow channels. In addition, it is noted that a prima facie case of obviousness exists for a rearrangement of parts, see MPEP 2144.04 VI. C.).
Regarding claim 11, modified Reevell makes obvious the first sidewall abuts against the bottom wall and an end of the first sidewall close to the bottom wall has an opening for the third airflow channel to communicate with the first airflow channel (as in Figs. 6-6a, the first sidewall as defined clearly abuts against the bottom wall at the base of the cavity. And as in Figs. 6-6a, because the air travels down from the first airflow channel through the protrusions to the third airflow channel at the base of the substrate, there is clearly an opening at the bottom so as to enable to air to travel as such).
Regarding claim 12, modified Reevell makes obvious the second limiting member which spaces the substrate to form the third airflow channel (as in Figs. 6-6a, the raised platform ‘148” of the bottom wall at the center of the chamber is considered to be the second limiting member. Because this center region is raised up, air flows radially inwards towards the center of the chamber from the first/second airflow channels, and then up into the substrate).
Regarding claim 13, modified Reevell makes obvious wherein the protrusion is configured to directly contact the aerosol-generating substrate (see for example Fig. 12(b) which shows a cross-section which has the substrate carrier “114” inserted into the apparatus which is clearly contacting the protrusions “140”. The protrusions contacting the substrate is also evident in several other figures such as Fig. 6 and Fig. 2a).
Regarding claim 14, Reevell suggests a housing “102” [Fig. 2, 0066], wherein the heating base is arranged within the housing (as in Fig. 6, there is discloses a heating chamber “108” with a base “112”). Modified Reevell makes obvious a second sidewall arranged between the housing and the first airflow channel (as modified by Li, the apparatus would include the first airflow channel where the airflow is located to an outside of the first sidewall/protrusions of Reevell, with the first airflow channel located between the first sidewall and the inner surface of the heating cavity as in Li. The 2nd sidewall therefore would be considered to be the limiting wall on the outside of the airflow channels of Li which would necessarily be present to delineate the airflow channel as required). Reevell is considered to suggest a housing protruding radially inward at an insertion end of the apparatus which forms a first opening (it is noted that under the broadest reasonable interpretation thereof, the housing is considered to protrude towards the inner radial surface compared to an outer radial surface which forms the outer surface of the housing. The outermost portion of the opening of which the substrate is inserted is considered the first opening).
Regarding claim 15, Reevell suggests an apparatus wherein the second sidewall protrudes radially inward at the insertion end of the aerosol generating apparatus to form a second opening (as noted above, Reevell as modified by Li would necessarily have a second sidewall which would be present to delineate the outside airflow channel of Li. This second sidewall would extend in a direction towards the insertion end of the article as this is where the inlet air enters in both Reevell and Li. The second sidewall may be considered to form the second opening, as the upper portion of the second sidewall would be at least partially located at/near the insertion end of the article, and the second sidewall would be considered to be protruding at its radially innermost portion compared to an outermost radial portion under the broadest reasonable interpretation thereof).
Regarding claim 16, Reevell suggests an apparatus wherein the heating cavity is configured to be in fluid communication with the outside of the aerosol-generating apparatus such that air flows through the first/second openings and into the first/second airflow channels to the bottom of the heating cavity (as in claims 14-15 above and the modification as detailed in the rejection of claim 1 above, it would have been obvious to modify Reevell to have an additional airflow as detailed in Li for the benefits of lowering the temperature of the outer wall, and to supply this heat to the aerosol-forming product so as to achieve heat recovery and enhance user experience by utilizing and saving energy [Li, pg. 5-6 of machine translation]. In this modification, there would be first/second airflow channels which would travel from the openings of the device at the location wherein the article is inserted, and down through the heating cavity to the base thereof [see both Fig. 6 of Reevell and Fig. 1 of Li which demonstrate this movement]. And under the broadest reasonable interpretation of the openings as in the claims of 14-15 above, this entering airflow would clearly pass through these openings and then enter the airflow channels as required).
Regarding claim 19, modified Reevell suggests an inductive coil to inductively heat the heating member which is outside the second sidewall (Reevell may utilize induction heating systems as its heater [0177], wherein induction heating systems would necessarily comprise an inductive coil as an inductive coil is required to generate the alternating magnetic field. As in Fig. 4 of Reevell, the heater may be located radially outside of the sidewalls and airflow portions).
Regarding claim 20, modified Reevell makes obvious the first sidewall disposed in a ring shape (see Fig. 2a of Reevell, which provides a top-down view of the sidewall which is clearly in a ring shape), and wherein the protrusion is spirally disposed on the inner surface of the first sidewall (Reevell states that the protrusions may have different shapes, including appearing as a circle or having an arc of a circle, where the profile curves towards the interior volume [0018, 0100], such that this would reasonably be considered a spiral under the broadest reasonable interpretation thereof. Further, it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination. See MPEP 2144.04. Applicant has not demonstrated any criticality or unexpected results to the specific shapes of the protrusion).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (WO2020074602A1, of record, citing to English Equivalent US2021/0378308A1) in view of Li (CN108813737A1, of record), and further in view of Schennum (US2016/0120218A1).
Regarding claims 17-18, Reevell does not explicitly disclose the second opening diameter being greater than the diameter of the first opening. However, it is noted that the opening diameters of articles and the associated aerosol-generating devices are known to have a variety of different cross-section diameters. Schennum, for example, teaches that the electronic cigarette and the container for which they are suitable, may have a constant cross-section such that the opening of the device and the cigarette may have a size and shape appropriate for the electronic cigarette (such that a diameter of a first/second opening may be equal so as to appropriately fit the electronic cigarette) [0170]. Schennum additionally teaches that the opening of the device may have a changing diameter which matches the non-constant size of the electronic cigarette [0170]. Therefore, when the electronic cigarette utilized has an increasing diameter (changing diameter along its longitudinal length), the device would also have an increasing diameter so as to accommodate the size of the electronic cigarette. One of ordinary skill in the art would have found it obvious to modify the opening of the device of Reevell so as to have a changing diameter (including that of an increasing diameter). One would have been motivated such that the electronic cigarette can only be received in the opening in a specific orientation, so that only a specific type of cigarette may be accepted, and to ensure that the appropriate end of the electronic cigarette is always oriented correctly within the device [Schennum, 0170]. One would have found this modification to have been a simple substitution of one known element for another to obtain predictable results, such that a substitution of the diameters of the opening of the device/article so as to have an increasing diameter which leads to ensuring insertion of only specific types/orientations of articles. See MPEP 2143. As from this modification, because the first opening is defined as the outermost opening of the device where the article is inserted, the second opening would necessarily have a greater diameter than the narrower diameter first opening.
Response to Arguments
Applicant’s arguments with respect to Reevell in view of Xiao are found convincing, and those rejections are withdrawn. However, the arguments pertaining to Reevell in view of Li are not found convincing. The Examiner respectfully disagrees with the arguments pertaining to these rejections.
Applicant argues on pgs. 11-12 that neither Reevell nor Li provide two airflow channels leading to a substrate.
The Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Examiner does not contend that Reevell nor Li individually teach all of the claimed limitations of the claim, but rather that the combination as detailed in the rejection suggests a combination which makes obvious an aerosol-generating apparatus which all of the limitations as required. And further, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues on pgs. 10-11 that Li’s airflow channel would not provide the benefit of “heat recovery/energy”.
The Examiner respectfully disagrees. The benefits from Li are not explicitly tied to having a single airflow stream as opposed to two airflow streams. Li specifically states that, as a result of having the airflow in the required location of Li, would result in the “temperature of the outer wall of the heat insulating tube 103 and the casing 110 is lowered”, which is indicated by Li as improving heat recovery and improving the user experience. Li does not provide any indication that this design is limited to a single airflow as opposed to a multi airflow. Applicant is arguing aspects which are not present in the prior art of Li or Reevell, wherein these argued aspects are opinions of the prior art as opposed to facts present in the references. In a case where there were two airflow channels as in the cited combination, it would be reasonably expected/suggested that the combination would see some of the benefits from Li and some of the benefits from Reevell, such that the person of ordinary skill in the art would have found it obvious to situate the device with the two airflows to reasonably obtain improved properties of the aerosol-generating apparatus in such a combination.
Applicant argues on pgs. 11-12 that Reevell and Li use alternative design choices that would have tradeoffs. Applicant further argues that Reevell nor Li contemplates using multiple airflow channels.
The Examiner respectfully disagrees. First, as above, it is noted that applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Furthermore, applicant has failed to account for the level of ordinary skill in the art. Examiner notes that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and “a person of ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a puzzle,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420, 421, 82 USPQ2d 1385, 1397 (2007). Applicant has merely looked at possible slightly suboptimal aspects of the inventions individually, but these possible suboptimal aspects are not gleaned from the prior art but instead appear to be Applicant’s opinion. It does not appear that Reevell speaks of the consequences of having a reduced volume of air as a result of having an additional air flow channel, nor does it speak to difficulties in temperature control which would result from a slightly reduced air flow (as Applicant contends on pgs. 11-12). And additionally, it does not appear that Li describes any requirements for a volume of airflow in order to achieve its beneficial aspects of its invention. Applicant does not have any citations in this section for these possible downsides. The person of ordinary skill in the art would have reasonably expected for such a combination to have some of the benefits of each Reevell and Li in such a combination.
It must be noted that there is an extremely wide range of different air flow and puffing behaviors that electronic cigarettes account for in order to accommodate a wide variety of users. Depending on the size of the person, gender, lung capacity, etc., an electronic cigarette must already account for a wide variety of puff durations, volumes, and flow rates. Applicant’s arguments that Reevell and Li would be limited to a strict range of air volume (and that modifying the device at all would ruin the air flow/heating characteristics of the device) does not align with what is well understood in the art. Namely, that aerosol-generating devices already account for a wide range of air volumes on account of the vast differences in the individuals which are using the devices. Because each of these references would already be expected to see a wide variety of air volumes, there is no evidence provided that the air volumes in this combination would lead to the negative effects described by Applicant.
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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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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