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 .
Status of Claims
Claims 1-18 are pending. Claims 1, 10, 11, and 18 are amended.
Response to Amendment
The amendment to claim 10 overcomes the objection to claim 10, and thus that objection is withdrawn. The amendments to claims 1, 11, and 18 add sufficient structure to the terms “gripping portions” and “support portions”, and thus the interpretation made under 35 USC 112(f) are withdrawn.
Response to Arguments
Applicant’s arguments, see Remarks, filed 05/22/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 102 have been fully considered and are persuasive in part. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Li et al. (US 2016/0360794 A1) and Reevell (WO 2020/074602) (cited by Applicant in the IDS of 5/18/2026).
Applicant argues that the amendment to claim 18, gripping portions “each including a boss formed on an inner circumferential surface of the accommodating portion” is not obvious based on the combination of references of Li and Yoon. Examiner regrettably disagrees. The protrusions of Li are on an inner circumferential surface of the accommodating portion. Yoon further establishes non-limiting types and arrangements. Both disclosures are understood to disclose that the protrusions are on an inner circumferential surface of the accommodating portion. Hwang renders obvious further limitations present within the claim.
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) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2016/0360794 A1) in view of Yoon et al. (US 2022/0338540 A1) and Reevell (WO 2020/074602) (cited by Applicant in the IDS of 5/18/2026).
Regarding claim 1-3, and 5-7, Li discloses:
A flavor inhaler, ([0004]), comprising:
an accommodating portion that includes an opening formed at one end and accommodates at least a part of a flavor generating article via the opening, ([0004] disclosing a heating chamber that is arranged at one end of a housing and is configured for receiving at least one part of a cigarette),
the accommodating portion including contact portions that pressurize a part of the accommodated flavor generating article in an axial direction of the accommodating portion and a separated portion that is separated from the accommodated flavor generating article, ([0017]-[0018] describing the heating chamber as an ellipse, with two elliptical arcs joined by two parallel straight lines and the interior of the chamber where the heating pieces are located having a maximum distance that is less than the external diameter of the cigarette, thus describing a configuration where the cigarette is compressed between the heating pieces when inserted, reasonably understood to anticipate contact portions that pressurize (exert pressure on) the cigarette, Fig 4 depicting a separated portion from the cigarette in the elliptical arc areas of the heating chamber);
a heating portion that is disposed in the axial direction of the accommodating portion and heats the flavor generating article accommodated in the accommodating portion, ([0018] heating pieces); and
gripping portions that grip the flavor generating article accommodated in the accommodating portion, ([0018] disclosing an embodiment where the curved heating surface may include a plurality of protrusions, which is considered to meet the gripping portion comprising a boss,
wherein the accommodating portion has a heating region that overlaps the heating portion, and a non-heating region other than the heating region in a section perpendicularly intersecting the axial direction of the accommodating portion, and the gripping portions are provided at the contact portions and in the heating region, ([0018]).
Yoon teaches a method of heating an aerosol generating article by using an aerosol generating device, ([0003]), and is thus within the inventor’s field of endeavor. Yoon teaches a heating element having a cylindrical shape, ([0147] Fig 13 ref 700), Yoon teaches that protrusions may be provided on a surface by the technique of embossing, ([0149]). Yoon discloses the protrusions may be spaced apart from each other, ([0099]), and although they may be regularly arranged, they may also be spaced apart from each other at irregular distances, ([0100]), where the expected function of the protrusions is to physically maintain the aerosol generating article inside the accommodating space, ([0101]). Many different arrangements of protrusions are taught, and these are not considered limiting by Yoon, ([0126]-[0127] Fig 10A-10J), reasonably suggesting that one of ordinary skill in the art could position protrusions inside the accommodating space, sizing and orienting them as desired to achieve the desired level of friction and compression between the aerosol generating article and the accommodating portion to reliable restrict the movement of the aerosol generating article to the extent desired.
Reevell teaches a similar aerosol generating device, with a heating chamber comprising a plurality of engagement elements, ([pg 3 lines 2-11]). Revel teaches the heater is located on the external surface of the heating chamber, which results in conductive heating to the inner surface of the heating chamber, ([pg 10 lines 15-18]). Reevell teaches that the heating element is attached and wrapped around the heating chamber which provides the advantage of evenly distributing heat around the surface covered by the heater, ([pg 24 lines 12-17]), reasonably suggesting to one of ordinary skill in the art that by wrapping the heater around the outside of the accommodating portion, advantageously heat will be evenly conducted to the inner circumference of the accommodating portion and to an aerosol generating article held within the accommodating portion.
First, one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Li according to the teachings of Yoon, with the ordinary skill in the art, and have arrived at the claimed positioning, sizing, orientation, and configurations as required by the claims to restrict the movement of the cigarette in the accommodating portion.
Claims 3, and 5-7, are considered to embody various species of the protrusions of claim 1. Many of them are mutually exclusive variations of each other. All of them are considered obvious variants in light of the ordinary skill in the art and the cited references. The arrangement of protrusion within the accommodating portion is considered to be the mere combination of prior art elements according to known methods to yield predictable results, MPEP 2143 I. Examples of Rationales (A). The prior art included each prior art element, with Li disclosing most of the elements and Yoon filling in the missing elements regarding the scope of protrusion arrangements, and explicitly informing one of ordinary skill in the art the purpose of the protrusions. The further modifications of sizing, positioning, orientation, and other configurations of the protrusions are considered well within the ordinary skill in the art, MPEP Legal Precedent as Source of Supporting Rationale IV. A Changes in Size, B. Changes in Shape, VI. C. Rearrangement of Parts. The claimed orientations are understood to balance the frictional and compressional forces against the cigarette held in the accommodating portion. This is no more than routine design optimization, which one of ordinary skill in the art would have been more than capable. In every case the protrusions work the same way, applying a compression/friction force against the cigarette, based on the characteristics of the protrusion. Locating protrusions anywhere within the accommodating portion would have been obvious, given the teachings of the prior art and ordinary skill.
Second, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Li to incorporate the teachings of Reevell, and provide a heating portion in the form of a heating element, wrapped around the accommodating portion of Li, where the heating portion is in contact with an outer surface of the accommodating portion, to evenly heat an aerosol generating article accommodated in the accommodating portion. This is considered the improvement of a known prior art device (Li) with a technique taught by Reevell (disposing a heating portion on the exterior of the accommodating portion), to improve the known prior art device (the improvement being a more even distribution of heat by conduction through the accommodating portion rather than direct heating of the aerosol generating article).
Regarding claim 4 and 8, modified Li discloses the flavor inhaler of claim 3. Li discloses the contact portions are planes, ([0017]-[0018] describing the heating chamber as an ellipse, with two elliptical arcs joined by two parallel straight lines and the interior of the chamber where the heating pieces are located having a maximum distance that is less than the external diameter of the cigarette, these parallel straight lines forming contact portions that meet the limitation of planes). As in the rejection above, the particular claimed arrangement of the protrusions is considered obvious.
Regarding claim 9, Li discloses the flavor inhaler of claim 2.
Modified Li renders the claimed configuration of the protrusions obvious.
Yoon teaches that protrusions may be provided on a surface by the technique of embossing, ([0149]). It would be further obvious to form the protrusions of modified Li according to the technique of Yoon because this is merely the use of a known technique to improve a similar device in the same way, MPEP 2143 I. Examples of Rationales, (C). Here modified Li comprises the base device, including the obvious configuration of protrusions. Yoon teaches a comparable device, where the protrusions are made by embossing. One of ordinary skill in the art could have applied the known embossment technique in the same way to modified Li and the results would have been predictable to one of ordinary skill in the art.
Regarding claim 10, Li discloses the flavor inhaler according to claim 1. Li further discloses:
the heating portion has a heat generating element that generates heat, ([0018] two heating pieces), and an insulating base element that supports the heat generating element, ([0022] a heat insulation layer arranged between the housing and the heating pieces understood to anticipate this limitation based on the disclosure in the specification see [0067] last 5 lines), the heat generating element and the base element form, in the heating region, a heat generating region where the heat generating element is disposed, ([0018] the heating pieces disposed on two opposite inner walls) and a non-heat generating region, which is adjacent to the heat generating region on the side of the opening, ([0018] the surfaces comprising the curved elliptical arcs), the heating generating element being not disposed in the non-heat generating region, and the gripping portions are provided in the non-heat generating region, ([0018] disclosing an embodiment where the curved heating surface may include a plurality of protrusions).
Regarding claims 11-17, Li discloses the flavor inhaler of claim 1, and claim 3, including various configurations of protrusions to restrict the movement of the cigarette inside the accommodating portion. Although the Applicant has labeled the protrusions differently, protrusions that are gripping portions and support protrusions, it is understood that the function is the same, and regardless of the particular nomenclature, and these support protrusions are also obvious for the same reasons as claim 3 above. Because the arrangement, configuration, and method of producing the various protrusions claimed are considered obvious based on the applied references and ordinary skill in the art, with the applied legal rationales, these claims are all found obvious.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2016/0360794 A1), Yoon et al. (US 2022/0338540 A1), and Hwang et al. (US 2021/0000180 A1).
Regarding claim 18, Li discloses:
A flavor inhaler, ([0004]), comprising:
an accommodating portion that includes an opening formed at one end and accommodates at least a part of a flavor generating article via the opening, ([0004] disclosing a heating chamber that is arranged at one end of a housing and is configured for receiving at least one part of a cigarette),
the accommodating portion including contact portions that pressurize a part of the accommodated flavor generating article in an axial direction of the accommodating portion and a separated portion that is separated from the accommodated flavor generating article, ([0017]-[0018] describing the heating chamber as an ellipse, with two elliptical arcs joined by two parallel straight lines and the interior of the chamber where the heating pieces are located having a maximum distance that is less than the external diameter of the cigarette, thus describing a configuration where the cigarette is compressed between the heating pieces when inserted, reasonably understood to anticipate contact portions that pressurize (exert pressure on) the cigarette, Fig 4 depicting a separated portion from the cigarette in the elliptical arc areas of the heating chamber);
a heating portion that is disposed in the axial direction of the accommodating portion and heats the flavor generating article accommodated in the accommodating portion, ([0018] heating pieces); and
gripping portions that grip the flavor generating article accommodated in the accommodating portion, ([0018] disclosing an embodiment where the curved heating surface may include a plurality of protrusions, which is considered to meet the gripping portion comprising a boss,
wherein the accommodating portion has a heating region that overlaps the heating portion, and a non-heating region other than the heating region in a section perpendicularly intersecting the axial direction of the accommodating portion, and the gripping portions are provided at the contact portions and in the heating region, ([0018]).
Yoon teaches a method of heating an aerosol generating article by using an aerosol generating device, ([0003]), and is thus within the inventor’s field of endeavor. Yoon teaches a heating element having a cylindrical shape, ([0147] Fig 13 ref 700), Yoon teaches that protrusions may be provided on a surface by the technique of embossing, ([0149]). Yoon discloses the protrusions may be spaced apart from each other, ([0099]), and although they may be regularly arranged, they may also be spaced apart from each other at irregular distances, ([0100]), where the expected function of the protrusions is to physically maintain the aerosol generating article inside the accommodating space, ([0101]). Many different arrangements of protrusions are taught, and these are not considered limiting by Yoon, ([0126]-[0127] Fig 10A-10J), reasonably suggesting that one of ordinary skill in the art could position protrusions inside the accommodating space, sizing and orienting them as desired to achieve the desired level of friction and compression between the aerosol generating article and the accommodating portion to reliable restrict the movement of the aerosol generating article to the extent desired.
Hwang teaches a cigarette with a tobacco portion, for use with an aerosol generating device, ([0025]-[0026]), and is thus within the inventor’s field of endeavor. Hwang teaches the aerosol generating device for the cigarette may have a tube type heating element, plate type heating element, and other types of heating elements, to heat the inside or outside of the cigarette, and include a plurality of heaters arranged outside the cigarette, ([0046]-[0047]), reasonably suggesting that the cigarette taught by Hwang would work with a variety of aerosol generating devices and heater configurations. Hwang teaches a cigarette that is similar to a general combustive style cigarette, ([0057]), with a tobacco rod that may entirely inserted into the aerosol generating device, or with only a portion of the tobacco rod inserted, and the cigarette may also comprise a filter, ([0058]). The filter rod may include a plurality of segments, including a first segment ref 321 configured to cool an aerosol, ([0062]). The first segment ref 321 may include a cellulose acetate filter, that is a tube shaped structure including a hollow therein, ([0071]). Hwang suggests that this segment may provide a cooling effect for the aerosol, and that it may prevent migration of tobacco material when inserting the cigarette into the heater, explicitly disclosing that this advantage is present when the heater is inserted into the cigarette).
First, one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Li according to the teachings of Yoon, with the ordinary skill in the art, and have arrived at the claimed positioning, sizing, orientation, and configurations as required by the claims to restrict the movement of the cigarette in the accommodating portion.
The arrangement of protrusion within the accommodating portion is considered to be the mere combination of prior art elements according to known methods to yield predictable results, MPEP 2143 I. Examples of Rationales (A). The prior art included each prior art element, with Li disclosing most of the elements and Yoon filling in the missing elements regarding the scope of protrusion arrangements, and explicitly informing one of ordinary skill in the art the purpose of the protrusions. The further modifications of sizing, positioning, orientation, and other configurations of the protrusions are considered well within the ordinary skill in the art, MPEP Legal Precedent as Source of Supporting Rationale IV. A Changes in Size, B. Changes in Shape, VI. C. Rearrangement of Parts. The claimed orientations are understood to balance the frictional and compressional forces against the cigarette held in the accommodating portion. This is no more than routine design optimization, which one of ordinary skill in the art would have been more than capable. In every case the protrusions work the same way, applying a compression/friction force against the cigarette, based on the characteristics of the protrusion. Locating protrusions anywhere within the accommodating portion would have been obvious, given the teachings of the prior art and ordinary skill.
Neither Li nor Yoon disclose or teach a flavor generating article with a filling portion filled with a smokeable article (understood to be a smokeable material) and a hollow tubular portion provided continuously (understood to be directly adjacent to the filling portion, where the gripping portions (protrusions) are provided in the accommodating portion such that when the aerosol generating article is inserted into the aerosol generating device, the protrusions grip the article in the vicinity of a boundary between the filling portion and the tubular portion, as interpreted in light of the present Specification ([0085] rendering the relative terminology “in the vicinity of a boundary” reasonably clear).
Second, it would be obvious to one of ordinary skill in the art, to have further modified the smoking system of modified Li according to the teachings of Hwang, and incorporated the cigarette of Hwang for use with the modified flavor inhaler of Li. One of ordinary skill in the art would have found using the cigarette of Hwang instead of the cigarette of Li to be obvious on the basis of simple substitution, MPEP 2143 I. Examples of Rationales (B). Modified Li differs from the claimed device only by the substitution of the cigarette of Hwang for the cigarette of Li. One of ordinary skill in the art would have been familiar with the structures comprising the cigarette of Hwang, and their function. One of ordinary skill in the art could have easily substituted the cigarette of Hwang for the cigarette of Li, and the result would have been predictable, a workable smoking article that could be heated to produce an aerosol in the device of Li.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights