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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 15, 2025 has been entered.
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 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.
Claims 1, 4-8 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Saleem (WO2013/160112. IDS) in view of Hale et al. (US 2004/0105819. Hale hereinafter).
With respect to claim 1, Saleem discloses an electrically heatable aerosol-generating system (Figs. 1-16), configured to (capable of) heat an aerosol-forming article (5) comprising a solid aerosol-forming substrate (surfaces of smokeable material 5 with volatilize aromatic compounds and nicotine. Last paragraph of page 5 to first paragraph of page 6) inserted into the electrically heatable aerosol-generating system (Figs. 1-4) comprising:
a tubular portion (housing 7) configured to (capable of) receive the aerosol-forming article (5); and
a heater element (3 and 10) comprising a thermally conductive substrate and an end (outer cylindrical of 3) face,
wherein the heater element is positioned proximate an (left) end of the tubular portion (Figs. 1 and 2), and
Saleem fails to disclose wherein a non-stick coating is applied at least over the end face of the heater element, wherein the non-stick coating includes a superhydrophobic material.
However, Hale teaches an electrically heatable aerosol-generating system (Figs. 1-5), comprising: a heater element (106, 216 and 300) comprising a thermally conductive substrate (of 106, 210 and 304) comprising a thermally conductive substrate with non-stick coating applied over at least a portion of an outer surface of the thermally conductive substrate, wherein the non-stick coating includes a superhydrophobic material (paragraph [0058]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of the thermally conductive substrate with non-stick coating applied over at least a portion of an outer surface of the thermally conductive substrate, as taught by Hale, to Saleem’s thermally conductive substrate, in order to provide relatively few, or substantially no, surface irregularities (paragraphs [0056]- [0060] and the “non-stick” properties of the coating/material).
With respect to claim 4, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Hale further teaches wherein the non-stick coating includes polytetrafluoroethylene (PTFE) (paragraph [0058]).
With respect to claim 5, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Hale further teaches wherein the non-stick coating includes glass (paragraph [0058]).
With respect to claim 6, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Hale further teaches wherein the thermally conductive substrate comprises a metal or an electrically conductive ceramic (paragraph [0058]).
With respect to claim 7, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Saleem further discloses the system comprising a supply of electrical energy (2) connected to the heater element to resistively heat the heater element when the electrically heatable aerosol-generating system is activated (Page 5, last paragraph and Page 25, last paragraph).
With respect to claim 8, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Saleem and Hale further teaches wherein the heater element is the only heater element in the electrically heatable aerosol-generating system (Figs. 1 and 2 of Saleem and Figs. 1-3B of Hale).
With respect to claim 15, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Saleem further discloses wherein the heater element (3 and 10) is substantially cylindrical (Fig. 4).
With respect to claim 16, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Saleem further discloses wherein the end face of the heater element is substantially circular (Fig. 4).
With respect to claim 17, Saleem’s system modified by Hale’s non-stick coating on the thermally conductive substrate, Saleem further discloses wherein aerosol-generating system further comprises an annular thermally conductive element (18) provided on an inner surface of the tubular portion.
Response to Arguments
Applicant's arguments filed on September 15, 2025 have been fully considered but they are not persuasive. The Applicant argues, in page 5, that a person of ordinary skill in the art would not have considered taking the solid support of Hale alone without also taking the respiratory drug coating on the solid support. The Examiner respectfully disagrees. First, the Applicant fails to explain why the two elements (the non-stick coating on the heater element and the respiratory drug) of Hale must bind together? Why the two elements cannot be separated as argued by the Applicant? Second, as the term implies, the coating of Hale is a “non-stick” coating. In devices with high temperature operating environments, like Hale’s and Saleem’s devices, internal elements exposing to high temperature often melt or partially melt or soften and become sticky. Applying a “non-stick” coating of Hale to Saleem’s heater element would prevent heated elements sticking to the heater element by providing relatively few, or substantially no, surface irregularities (paragraphs [0056]- [0060]) of the “non-stick” coating. Therefore, it is the Examiner’s sincere position that one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of the thermally conductive substrate with non-stick coating applied over at least a portion of an outer surface of the thermally conductive substrate, as taught by Hale, to Saleem’s thermally conductive substrate of the heater element. Third, the addition of the “non-stick” coating of Hale to Saleem’s heater element does not make the combined device inoperable. Each element, of Saleem, performs its function as it did in the designed configuration/operation, and the combination of these elements results in predictable outcomes (heating the aerosol-forming article).
The Applicant further argues, in last paragraph of page 5, that the solid support to have relatively few, or substantially no, surface irregularities, because it is to be coated with the respiratory drug. The Examiner respectfully disagrees. Paragraph [0058] discloses “A number of different materials may be used to construct the solid supports. Classes of such materials include, without limitation, metals, inorganic materials, carbonaceous materials, and polymers. Illustrative materials within these classes are… polytetrafluoroethylene (the non-stick coating)... “ and Paragraph [0060] discloses “Typically it is desirable that the solid support have relatively few, or substantially no, surface irregularities…” Therefore, the few, or substantially no, surface irregularities is not because it is to be coated with the respiratory drug, but the property of the element used- polytetrafluoroethylene.
The Applicant also argues, in fifth paragraph of page 6, that “Saleem's heater, modified in view of Hale's solid support and respiratory drug coating would also not be configured to heat an aerosol-forming article comprising a solid aerosol-forming substrate inserted into the electrically heated aerosol-generating system, as recited by Applicant's amended independent claim 1. First, as explained in the section above, the suggested combination is to add the non-sticking coating of Hale to Saleem’s heater element. The respiratory drug of Hale is not added or combined. The heater element of Saleem and the non-sticking coating of Hale is combined to heat the aerosol-forming article. Second, in general, patent claim is identifiable by three different portions, namely preamble, transitional phase and body of the claim. The transitional phrases "comprising", "consisting essentially of" and "consisting of" define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. MPEP 2111.03. The body of the claim is mostly the structural and functional limitations that define the “invention” or the “preamble.” MPEP 2173. The preamble the introductory phrase that identifies the type of invention, such as "An apparatus," "A method," or "A composition". It sets the context for the rest of the claim but does not always limit the invention's scope. MPEP 2111.02. The fact that the Applicant added wording into the “preamble” in current claim 1, does not limit the invention's scope. As long as the combined device of Saleem and Hale is capable of heating the aerosol-forming article, the claim is unpatentable as elaborated in the detailed rejections above. The intention of adding limitations on the “preamble” is puzzling.
The “Response to Arguments” in the previous Office Actions are also incorporate by reference in this section.
Conclusion
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/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 November 14, 2025