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 .
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 6 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.
The term “near” in claim 6 is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, the protruding portion does not appear to have any portions or a sloping portion to be near “an end portion on the one side of the accommodating portion”. The one side is considered to be the opening end of the cavity or accommodating portion.
The term “neared” in claim 6 is a relative term which renders the claim indefinite. The term “neared” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The protruding portion does not appear to be “near” the one end (opening).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (US 20230329342 A1).
Regarding claim 1, 9, 11, Lu discloses:
an accommodating portion that includes an opening for insertion of a smoking article in a housing (see figure 4 below, hole 111 and housing 10) (please note this is considered the “one end” as the term is used in claim 1 dependent claims such as claim 5),
a heating unit along an axial direction of the accommodating portion (heater 30),
a grasping portion that grasps a side surface of the smoking article, which is met by the lower support mechanism and its protrusion as illustrated in figure 10, elements 60b and 611b respectively (see below),
a first region of an inner side surface of a heating section (see figure 4, element 30) is a first region,
a second region of an inner side surface that isn’t the first region side surface of a heating section, and present between the end of the first region and the “other end” of the accommodating portion (see figure 4, 60 lower support mechanism)(“Other end” is being taken to mean the end opposite the opening end or “one end”), and
the grasping portion (see C above) is in the second region (the lower support mechanism), which is illustrates as between the heating areas inner surface and the other end of the accommodating portion.
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Regarding claims 2, Lu et al. disclose that it is known in the art to form vaporizers with equal diameter (i.e. length in the radial direction) [0004]. This meets the first limitation W1 ≥ W2 that the diameter of the first region (heater area, W1) is greater than or equal to the diameter of the second region (W2). In addition, Lu et al. go on to disclose that protrusions are used to narrow the radial direction of portions of the cavity (accommodating portion) so that the smoking article can be clamped. This includes a clamping structure in the far end of the cavity (meeting the “other end” limitation of claim 1, and therefore W2) [0016]-[0017]. This results in a diameter where the heating region (first region) is larger than the grasping portion (the second region).
Claim 2 includes the limitation that the length in the radial direction of the smoking article is greater than or equal to the length in the radial direction of the second region. The smoking article is not a part of claim 1 or claim 2 as written and therefore the limitation is directed to subject matter that is not being claimed. (see claim 11 where both a smoking article and a flavor inhaler are claimed together).
Regarding claim 3, Lu et al disclose a protruding member that protrudes toward the inside of the accommodating portion (611b).
Regarding claim 4, Lu et al. disclose a bottom member 60b that forms the bottom portion of the accommodating portion and is a separate member from the accommodating portion. The protruding portion is provided near the bottom portion.
Regarding claim 5, Lu et al. disclose a protruding portion extending from the bottom portion protruding into the end of the smoking article (see figure 10, element not labeled). This protruding portion extends toward the one end (i.e. mouth end or opening of the cavity/accommodating portion).
Regarding claim 10, Lu et al., claim 10 includes the limitation that the smoking article includes a flavor source-filled portion that is filled with a flavor source and that the grasping portion grasps the flavor source-filled portion that is housed in the accommodation portion. The smoking article is not a part of the claims as written and therefore the limitation is directed to subject matter that is not being claimed. (see claim 11 where both a smoking article and a flavor inhaler are claimed together). The limitation is therefore considered to be intended use of the structure of the flavor inhaler portion and not limited to the structure of the smoking article. The grasping portion and accommodation portions of Lu et al. are capable of grasping a flavor containing portion of a smoking article.
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) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 20230329342 A1) as applied to claim 3 above.
Regarding claim 7, Lu et al. disclose a protruding portion that is a single ridge. However, it would have been obvious to one of ordinary skill in the art at the time of invention to duplicate the protruding ridge of Lu et al. so that more friction and therefore retention force is applied to the smoking article, since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 8, Lu et al. disclose that the protrusion 611b has an inclined surface and illustrates that the slope is toward the center axis closer to the bottom (other) end. However, it would have been obvious to reverse the slope of the protruding portion because it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. (MPEP 2144.04 (VI)(A)). The written portion of Li et al. does not disclose the direction of slope or provide reasoning for the direction of slope exemplified in the figure.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 20230329342 A1) as applied to claim 11 above, and in further view of Counts et al. (US 5,388,594 A).
Regarding claim 12, Lu et al. does not disclose the structure of the smoking article that is used with the flavor inhaler. However, smoking articles for the flavor heating system of Lu et al. are well known. For instance, Counts et al. disclose a smoking articles and heater that is similar to that of Lu et al. and the smoking article has an end that is inserted that contains a tobacco flavor material (tobacco web, 57). As illustrated in figure 17, the tobacco web is present in the entire length of the portion of the smoking article that is inserted into the heating device. Therefore the flavor source-filled portion of the smoking article would inherently be grasped by the grasping portion within the cavity because the entire portion of the smoking article of Counts et al. that is within the cavity is made of the flavor source-filled portion. It would have been obvious to one of ordinary skill in the art at the time of invention to use the smoking article of Counts et al. in the heating flavor device of Lu et al. because the structure disclosed by Counts et al. is well known in the art as a well-known heat not burn flavor delivery article. Using the smoking article of Counts et al. in the device of Lu et al. would allow predictable results (i.e. production of tobacco flavored aerosol without combustion).
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 20230329342 A1) as applied to claim 11 above and further in view of Batista et al. (US 20200245683 A1).
Regarding claims 13 and 14, Lu et al. disclose a heating portion of the accommodating portion (i.e. cavity) but do not expressly disclose that the smoking article has a conductive member inside the flavor source and the heating unit generates a magnetic field that varies over time. More than one susceptor can be used (i.e. plurality of susceptors or multiple susceptor materials. However, this arrangement is known in the art as an induction heating system. Batista discloses a similar smoking system that has a heating system that has an induction coil that produces an alternating magnetic field to heat the elongate susceptor element within the aerosol generating Conclusion
article (see Abstract). It would have been obvious to one of ordinary skill in the art at the time of invention/filing to use the induction heating system and aerosol generating article with a susceptor in place of the heater of Lu et al. because Batista et al. discloses that both types of heating systems are known in the art and are equivalent [0002]. The results would have been predictable to one of ordinary skill (i.e. vaporization of flavors without combustion).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
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