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 .
Election/Restrictions
Applicant’s election without traverse of Group I and the species of Fig. 6-7 in the reply filed on 09/09/2025 is acknowledged.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/09/2025.
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 1-13 and 16-17 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 apparatus for heating smokable material to volatilize at least one component of the smokable material”. However, claim 1 later recites “an annular mass of smokable material” without referring back to the previously recited smokable material (e.g., this portion of the claim does not recite “the smokable material”) such that it is not definite if the same smokable material is referred to.
Claim 7 recites “a plurality of closed circuits of heater material that is heatable by penetration with a varying magnetic field” without referring back to the previously recited “closed circuit of heater material” and “varying magnetic field” as recited in claim 1.
Claim 16 recites an “apparatus configured to heat smokable material and volatilize at least one component of the smokable material”. However, claim 16 later recites, “the article comprises smokable material” without referring back to the previously recited smokable material (e.g., this portion of the claim does not recite “the smokable material”) such that it is not definite if the same smokable material is referred to. Claim 16 also recites “the annular mass of the smokable material”; this recitation lacks antecedent basis and it is not definite which smokable material(s) is referred to by this recitation.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-13 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20010019052 A1 to SADAHIRA et al. (“SADAHIRA”) in view of WO 2014048745 A1 to HATRICK et al. (“HATRICK”).
SADAHIRA discloses:
Regarding claim 1:
a liner (e.g., heating element 101) having a closed circuit of heater material (e.g., the stainless steel plate 201 and the connector 202 form an electrically closed circuit) that is heatable by penetration with a varying magnetic field (e.g., Fig. 1-2C and para 73-74);
Regarding claim 3: the article of claim 1, wherein the liner further includes a sheet of material (e.g., plate 701a), wherein the heater material (e.g., plates 701b and 701c and 701d) is disposed on the sheet of material (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 4: the article of claim 3, wherein a major surface of the sheet of material is only partially covered by the heater material (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 5: the article of claim 1, wherein the liner further includes a sheet of material (e.g., plate 701a) and a plurality of discrete portions (e.g., plates 701b and 701c and 701d) of the heater material in or on the sheet of material (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 6: the article of claim 5, wherein the discrete portions are parallel strips (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 7: the article of claim 1, wherein the liner includes a plurality of closed circuits (e.g., plates 701a through 701d are conductors forming closed circuits) of heater material that is heatable by penetration with a varying magnetic field (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 8: the article of claim 7, wherein the article is elongate and the closed circuits are spaced-apart (e.g., plates 701a and 701c are spaced apart) in a longitudinal direction of the article (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 9: the article of claim 1, wherein the heater comprises a plurality of relatively closely-spaced portions (e.g., plates 701b and 701c) of the heater material, and a plurality of less-closely-spaced portions (e.g., plates 701a and 701d) of the heater material (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 10: the article of claim1,wherein the heater material comprises one or more materials selected from the group consisting of: an electrically-conductive material, a magnetic material, and a non-magnetic material (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 11: the article of claim 1, wherein the heater material comprises a metal or a metal alloy (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 12: the article of claim 1, wherein the heater material comprises one or more materials selected from the group consisting of: aluminium, gold, iron, nickel, cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze (e.g., Fig. 7A and 7B and para 95-96);
Regarding claim 16: a system, comprising:
an article for use with the apparatus, wherein the article comprises smokable material and a liner (e.g., heating element 101) having a closed circuit (e.g., the stainless steel plate 201 and the connector 202 form an electrically closed circuit) of heater material that is heatable by penetration with a varying magnetic field (e.g., Fig. 1-2C and para 73-74);
Regarding claim 17: the system of claim 16, wherein the apparatus comprises an interface (e.g., interface seen in Fig. 1) configured to cooperate with the article, and a magnetic field generator (e.g., the high frequency power supply device 103 supplies high frequency power to the induction heating coil 102) configured to generate a varying magnetic field that penetrates the heater material when the article cooperates with the interface (e.g., Fig. 1-2C and para 73-74).
SADAHIRA does not explicitly disclose an annular mass of smokable material (as recited in claim 1).
However, HATRICK discloses:
Regarding claim 1: an article for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material, the article comprising:
an annular mass of smokable material (e.g., smokable material 2) (e.g., Fig. 1-4 and pages 4-5 and 8); and
a liner having a closed circuit of heater material (e.g., heating material 5) that is heatable by penetration with a varying magnetic field (e.g., Fig. 1-4 and pages 4-5 and 8),
wherein the annular mass of the smokable material is disposed around the liner such that the liner defines an inner surface of the article (e.g., Fig. 1-4 and pages 4-5 and 8);
Regarding claim 2: the article of claim 1. wherein the heater material is in contact with the smokable material (e.g., Fig. 1-4 and pages 4-5 and 8);
Regarding claim 7: the article of claim 1, wherein the liner includes a plurality of closed circuits (e.g., a plurality of separate pieces of heating material 5) of heater material that is heatable by penetration with a varying magnetic field (e.g., Fig. 1-4 and pages 4-5 and 8);
Regarding claim 8: the article of claim 7, wherein the article is elongate and the closed circuits are spaced-apart in a longitudinal direction of the article (e.g., Fig. 1-4 and pages 4-5 and 8);
Regarding claim 10: the article of claim1,wherein the heater material comprises one or more materials selected from the group consisting of: an electrically-conductive material, a magnetic material, and a non-magnetic material (e.g., an example of a suitable heating material 5 is Iron, although other electrically conductive materials could alternatively be used such as another electrically conductive metal or alloy as disclosed in col 4, ln 25-33);
Regarding claim 11: the article of claim 1, wherein the heater material comprises a metal or a metal alloy (e.g., an example of a suitable heating material 5 is Iron, although other electrically conductive materials could alternatively be used such as another electrically conductive metal or alloy as disclosed in col 4, ln 25-33);
Regarding claim 12: the article of claim 1, wherein the heater material comprises one or more materials selected from the group consisting of: aluminium, gold, iron, nickel, cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze (e.g., an example of a suitable heating material 5 is Iron, although other electrically conductive materials could alternatively be used such as another electrically conductive metal or alloy as disclosed in col 4, ln 25-33);
Regarding claim 13: the article of claim 1, wherein the smokable material comprises tobacco (e.g., tobacco disclosed in col 4, ln 7-33) and/or one or more humectants (e.g., Fig. 1-4 and pages 4-5 and 8);
Regarding claim 16: a system, comprising:
apparatus (e.g., magnetic field generator 9) configured to heat smokable material and volatilize at least one component of the smokable material (e.g., Fig. 1-4 and pages 4-5 and 8): and
an article (e.g., apparatus 1) for use with the apparatus, wherein the article comprises smokable material (e.g., smokable material 2) and a liner having a closed circuit of heater material (e.g., heating material 5) that is heatable by penetration with a varying magnetic field (e.g., Fig. 1-4 and pages 4-5 and 8),
wherein the annular mass of the smokable material is disposed around the liner such that the liner defines an inner surface of the article (e.g., Fig. 1-4 and pages 4-5 and 8); and
Regarding claim 17: the system of claim 16, wherein the apparatus comprises an interface (e.g., interior of recess 11) configured to cooperate with the article, and a magnetic field generator (e.g., magnetic field generator 9) configured to generate a varying magnetic field that penetrates the heater material when the article cooperates with the interface (e.g., Fig. 1-4 and pages 4-5 and 8).
It would have been obvious to one of ordinary skill in the art at the time the invention was made (pre-AIA ) or at the time before the effective filing date (post AIA ) to modify SADAHIRA as suggested and taught by HATRICK in order to volatilize components of smokable material for inhalation, comprising a smokable material heating chamber and a heating material which is configured to be heated by the presence of a varying magnetic field, wherein the heating material is arranged to transfer heat energy to smokable material in the heating chamber to volatilize said components.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-14 of U.S. Patent No. 11,924,930. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter of the present application and that of the claims of the patent are substantially the same and the claimed subject matter of the present application would have been obvious to one of ordinary skill in the art based on the claimed subject matter of the claims of the patent.
Claims 1-13 and 16-17 of the present application
Claims 1-11 and 13-14 of U.S. Patent No. 11,924,930
1. An article for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material, the article comprising: an annular mass of smokable material; and a liner having a closed circuit of heater material that is heatable by penetration with a varying magnetic field, wherein the annular mass of the smokable material is disposed around the liner such that the liner defines an inner surface of the article.
2. The article of claim 1, wherein the heater material is in contact with the smokable material.
3. The article of claim 1, wherein the liner further includes a sheet of material, wherein the heater material is disposed on the sheet of material.
4. The article of claim 3, wherein a major surface of the sheet of material is only partially covered by the heater material.
5. The article of claim 1, wherein the liner further includes a sheet of material and a plurality of discrete portions of the heater material in or on the sheet of material.
6. The article of claim 5, wherein the discrete portions are parallel strips.
7. The article of claim 1, wherein the liner includes a plurality of closed circuits of heater material that is heatable by penetration with a varying magnetic field.
8. The article of claim 7, wherein the article is elongate and the closed circuits are spaced-apart in a longitudinal direction of the article.
9. The article of claim 1, wherein the heater material comprises a plurality of relatively closely-spaced portions of the heater material, and a plurality of less-closely-spaced portions of the heater material.
10. The article of claim 1, wherein the heater material comprises one or more materials selected from the group consisting of: an electrically-conductive material, a magnetic material, and a non-magnetic material.
11. The article of claim 1, wherein the heater material comprises a metal or a metal alloy.
12. The article of claim 1, wherein the heater material comprises one or more materials selected from the group consisting of: aluminium, gold, iron, nickel, cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze.
13. The article of claim 1, wherein the smokable material comprises tobacco and/or one or more humectants.
16. A system, comprising: apparatus configured to heat smokable material and volatilize at least one component of the smokable material; and an article for use with the apparatus, wherein the article comprises smokable material and a liner having a closed circuit of heater material that is heatable by penetration with a varying magnetic field, wherein the annular mass of the smokable material is disposed around the liner such that the liner defines an inner surface of the article.
17. The system of claim 16, wherein the apparatus comprises an interface configured to cooperate with the article, and a magnetic field generator configured to generate a varying magnetic field that penetrates the heater material when the article cooperates with the interface.
1. An article for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material, the article comprising: smokable material; and a cover around the smokable material, wherein the cover defines an outer surface of the article and includes a closed circuit of heater material that is heatable by penetration with a varying magnetic field generator of the apparatus, and wherein the cover comprises: a first wrapper that encircles the smokable material, the first wrapper comprising a sheet of material and a plurality of discrete portions of the heater material in or on the sheet of material that is heatable by penetration with a varying magnetic field, a second wrapper that encircles the first wrapper, wherein the first and second wrappers being configured such that when the article is used with the apparatus to volatilize at least one component of the smokable material, the second wrapper is between the magnetic field generator of the apparatus and the first wrapper, and an adhesive adhering free ends of the first wrapper to each other, and wherein the adhesive comprises heating material that is heatable by penetration with a varying magnetic field.
2. The article of claim 1, wherein the heater material is in contact with the smokable material.
3. The article of claim 1, wherein the first wrapper comprises a sheet of material, wherein the heater material is disposed on the sheet of material.
4. The article of claim 1, wherein the cover comprises a plurality of closed circuits of heater material that is heatable by penetration with a varying magnetic field.
5. The article of claim 1, wherein the heater material comprises a plurality of relatively closely-spaced portions of the heater material, and a plurality of less-closely-spaced portions of the heater material.
6. The article of claim 1, wherein the heater material comprises an electrically-conductive material or a magnetic material.
7. The article of claim 1, wherein the heater material comprises a metal or a metal alloy.
8. The article of claim 1, wherein the heater material comprises one or more materials selected from the group consisting of: aluminum, gold, iron, nickel, cobalt, conductive carbon, graphite, plain-carbon steel, stainless steel, ferritic stainless steel, copper, and bronze.
9. The article of claim 1, further comprising an annular mass of the smokable material, and a liner having a closed circuit of heater material that is heatable by penetration with a varying magnetic field, wherein the annular mass of the smokable material is disposed around the liner such that the liner defines an inner surface of the article.
10. The article of claim 1, wherein the heater material is a non-magnetic material.
11. The article of claim 1, wherein the closed circuit is disposed such that the closed circuit encircles the smokable material.
13. A system, comprising: an apparatus comprising a magnetic field generator, the apparatus configured to heat smokable material and volatilize at least one component of the smokable material; and an article for use with the apparatus, wherein the article comprises smokable material and a cover around the smokable material, wherein the cover defines an outer surface of the article and comprises a closed circuit of heater material that is heatable by penetration with a varying magnetic field, and wherein the cover comprises: a first wrapper that encircles the smokable material, the first wrapper comprising a sheet of material and a plurality of discrete portions of the heater material in or on the sheet of material that is heatable by penetration with a varying magnetic field, a second wrapper that encircles the first wrapper, wherein the first and second wrappers being configured such that when the article is used with the apparatus to volatilize at least one component of the smokable material, the second wrapper is between the magnetic field generator of the apparatus and the first wrapper, and an adhesive adhering free ends of the first wrapper to each other, wherein the adhesive comprises heating material that is heatable by penetration with a varying magnetic field.
14. The system of claim 13, wherein the apparatus comprises an interface configured to cooperate with the article, and wherein the magnetic field generator is configured to generate a varying magnetic field that penetrates the heater material when the article cooperates with the interface.
As can be seen above, the claimed subject matter of the present application and that of the claims of the patent are substantially the same and the claimed subject matter of the present application would have been obvious to one of ordinary skill in the art based on the claimed subject
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC S STAPLETON whose telephone number is (571)270-3492. The examiner can normally be reached Monday-Thursday regular business hours.
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/ERIC S STAPLETON/Primary Examiner, Art Unit 3761 September 25, 2025