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 .
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 1-20 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.
Applicant has recited the words “film-like” in line 6 of independent claim 1. The addition of the word “like” to an otherwise definite expression extends the scope of the expression so as to render the claim indefinite because it is unclear what “like” is supposed to convey. Further, it is not clear how the word “film” defines a “shape”. It is requested that Applicant reword this phrase in a manner such as “at least one electrically insulative portion that is in the form of a film…”.
Further, in claim 14, Applicant has recited “wherein the electrically resistive portion is unevenly distributed…” (emphasis added). It is not clear what the metes and bounds are of the term “unevenly” because this term is a relative one and, as such, renders the term indefinite. Further, the term “unevenly” 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. Correction is requested.
Claim Rejections - 35 USC § 102
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.
Claims 1, 9, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/208536 (hereinafter referred to as “Yamada et al”, with reference being made to its US equivalent - US. Pat. App. Pub. 2021/0045448).
Regarding independent claim 1, and dependent claim 20, as seen in Figs. 1, 17A and 18, Yamada et al discloses a flavor inhaler (100) (read: an aerosol generation system) which comprises a cylindrical portion (40) of a container (40) into which a flavor generating article (110) (read: aerosol generation article) is inserted; a heater (50) that heats the flavor generating article (110) inserted into the container; and a battery (10) (read: power supply unit) that supplies electric power stored therein to the heater (50) (see para. [0080]).
The heater (50) includes a backing material (51) (read: at least one electrically insulative portion) that comprises a film, and one or more “cutouts”, and a heating element (52) (read: an electrically resistive portion) that is disposed on the backing material (51) and that produces heat by using electric power supplied by the battery (10), and wherein the heater may be bonded to the peripheral surface of the cylindrical portion (41) of the container (40) (read: disposed around) (see paras. [0085]-[0086], Fig. 2 and reference sign “B1” in Fig. 18 (read: cutout)).
Regarding claim 9, Yamada et al discloses that its heater (50) includes backing material (51) (read: at least one electrically insulative portion) which may comprise two parts (51A, 51B) (read: electrically insulative portions) and that the heating element (52) is sandwiched between backing material 51A and backing material 51B (see para, [0085]).
Regarding claim 14, Yamada et al discloses that its heating element (52) (read: electrically resistive portion) is disposed along a placement area on the peripheral surface of the cylindrical portion (41) (inside of which the flavor generating article (read: aerosol generation article) is inserted), except for an area adjacent to a first channel (43), and is disposed not along a peripheral surface of the second portion (41B) but along a peripheral surface of the first portion (41A) - which appears to be indicative of an “unevenly distributed” heating element (52).
Regarding claims 15-16, the heater (50) backing material (51) (read: at least one electrically insulative portion) can be a film made of polyimide (see para. [0085]).
Regarding claim 17, since the term “varnish” can be construed to mean “a clear protective film”, the disclosed backing material (51) (read: at least one electrically insulative portion) of Yamada et al is deemed to meet this limitation.
Regarding claim 18, Yamada et al discloses that its heating element (53) (read: electrically resistive portion) can be made of stainless steel (see para. [0085]).
Regarding claim 19, since the heating element (52) (read: electrically resistive portion) is disposed along a placement area (read: track) on the surface of the cylindrical portion (41), and may be made of stainless steel (read: conductive) which is bonded to said surface, it serves as a “conductive track”.
Claim Rejections - 35 USC § 103
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.
Claims 2-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/208536 (hereinafter referred to as “Yamada et al”, with reference being made to its US equivalent - US. Pat. App. Pub. 2021/0045448).
Regarding claims 2-3, Yamada et al fails to disclose the specifics of the cutout arrangement as claimed; however, as evident from the layout of the backing material (51) in Figures 19 and 20, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to arrange the cutouts of Yamada et al in the claimed staggered and perpendicular pattern because such a pattern inherently distributes the mechanical stress evenly across the film as it is being positioned around the container. This would provide for a tight, uniform and flush thermal contact between the heater and the outer wall of the container, while preventing the film from damaging the electrically resistive portion when the aerosol article is repeatedly inserted into and extract from the system.
Regarding claims 4-5, as evident from Fig. 18, areas A1 and A2 of backing material (51) (read: electrically insulative portion) having a portion that interconnects the two portions would have provided motivation to one having ordinary skill in the art as of the effective filing date of the claimed invention to have created a backing material (51) that would be structurally arranged, with included “cut-outs”, so as to effectively and sufficiently support the heater (50)
Regarding claims 6-7, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have constructed the backing material (51) (read: electrically insulative portion) in the claimed “M-shaped” or “zig-zag” manner as these are considered to be two of a wide number of design choices that one of ordinary skill would have selected.
Regarding claim 8, based on the operational design of the flavor inhaler (100) (read: aerosol generation system) and the heat delivery requirements of the heater (50), one of ordinary skill in the art as of the effective filing date of the claimed invention would have considered a number of coverage layouts to arrive at the claimed coverage percentage based on desired design and heating efficiency parameters.
Regarding clam 10, in one embodiment of Yamada et al, a film having a high thermal conductivity (read: thermal diffusion layer) is disposed underneath the heater (50) as opposed to covering an outer side of it, as claimed (see para. [0085]). However, since it serves to uniformly distribute the heat emitted from the heater to the surface of the cylindrical member (41) of the container (40), and since there is no requirement that said film be provided only in that location, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided such film on an outermost-side of the heater (50) as a matter of design choice.
Regarding claim 11, Yamada et al discloses that the film having a high thermal conductivity (read: thermal diffusion layer) may be made of copper (see para. [0167]).
Regarding claim 12, Yamada et al discloses that a thermal contraction tube (read: heat shrinkable tube) may be placed at the outside of the heater (50) so as to fix the heater (50) to the outside peripheral surface of the cylindrical portion of the container (40) through said thermal contraction tube.
Regarding claim 13, Yamada et al teaches that the cylindrical portion (41) of its container (40) includes first and second placement areas (41A1 and 41A2) and further discloses that elements of the heater (50) that are placed on these respective areas may have different watt densities (see para. [0096]), so it follows to reason that the varying watt densities would provide for a difference in temperature of the heat to the flavor generating article (read: aerosol generation article) in these placement areas. However, in the alternative, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided for the placement areas to provide for difference heating areas at different temperatures in order to more effectively avoid excessive heating of the air, which is a goal of Yamada et al (see para. [0100]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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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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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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