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 the Claims
This office action is in response to Applicant’s amendments filed 06/26/2026.
Claims 1-17 and 20 are pending and are subject to this Office Action.
Claims 1 and 20 are amended.
Claims 18-19 are cancelled.
Response to Arguments
Applicant’s arguments, see page 5, filed 06/26/2026, with respect to the 112(a) rejection of claim 1 under have been fully considered but they are not persuasive. The Applicant has amended claim 1 to require that the heat generator be a “PTC heater including a barium titanate”, and thus alleges that undue experimentation would no longer be required to make and use the claimed invention.
The Examiner disagrees.
Merely limiting the heat generator to be a PTC heater comprising any amount of barium titanate would not greatly reduce the degrees of variance or quantity of experimentation required of one having ordinary skill in the art to determine a structure that has “an electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape”, as there is still extreme variance as to how the desired result may be achieved through variance in dimensions (e.g., length and area), compositions (e.g., alloys and ceramics, even when limited to contain some/any amount of barium titanate), and use cases (such as operating temperature), which would all affect the measured resistance values.
Applicant’s arguments, see pages 6-7, filed 06/26/2026, with respect to the 103 rejection of claim 1 under have been fully considered and are persuasive. Claim 1 is amended to require that the heat generator be a PTC heater including barium titanate, as previously presented in cancelled claims 18-19, and that at least one of the pairs of metal plates comprise a rib portion. Liu teaches that the heat generator is a PTC heater including barium titanate, but does not teach a rib portion as newly presented. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in further view of Jiang et al. (US 20220039471 A1).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are eight factors considered by the Federal Circuit in the determination of undue experimentation, In re Wands, 8 USPQ2d 1400 (1988). These factors are: the nature of the invention, the breadth of the claims, the state of the prior art, the predictability or unpredictability of the art, the amount of direction or guidance presented, the presence or absence of working examples, the relative skill of those in the art, and the quantity of experimentation needed.
Regarding claim 1, the claim recited limitations directed to “an electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape.” Paragraphs [0058]-[0060] of the instant specification refer to this relationship and recites example resistance values. Paragraphs [0049] and [0054] specify that in some embodiments the heat generator may comprise Barium Titanate and that the metal plates may comprise nickel-containing iron alloy, respectively. However, the specification does not further define the structure that produces this result, including the dimensions, specific materials and temperatures that would produce the claimed resistance. Thus, the broadest reasonable interpretation is that the heat generator and metal plates may be of any composition or dimension that would produce an electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other that is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape.
The breadth of the claims such that any combination of material composition (such as metals, alloys, ceramics, etc.), material measurements (e.g., length, width, surface area) or configurations (e.g., shape) may potentially meet the claim indicate that the invention would require undue experimentation in order for one having ordinary skill in the art to make and use the full scope of the claimed invention.
Within the field of invention, specifically of aerosol generation systems, at the time of filing, one having ordinary skill in the art would be expected to be familiar with elongate heat generation elements comprising multiple layers of material. Prior art Liu et al. (CN 209807157 U; hereinafter referring to the English translation provided), directed to an aerosol generation system (heating body 2; page 4, ¶ 2), teaches that it was known in the art at the time of filing to have a PTC heat generator including barium titanate (page 4, ¶s 2-3) and a pair of metal plates (electrode sheets 202; page 4, ¶ 2) provided to respectively cover the heat generator. Liu further teaches that one having ordinary skill in the art would consider resistance (conductivity) of these materials when designing the system (page 4, ¶ 8). Courbat et al. (US 20200163386 A1), directed to an aerosol generation system comprising a heat generator (110.3; [0117]) and a pair of metal plates (110.1, 110.2; Fig. 8; [0117]) provided to respectively cover the heat generator, similarly teaches that one having ordinary skill in the art would consider resistance values when designing the heating element ([0063-0064], [0118]).
However, the prior art contains extreme variance as to how the desired result may be achieved, as prior art references vary in dimensions (e.g., length and area), compositions (e.g., alloys and ceramics), and use cases (such as operating temperature), which would all affect the measured resistance values.
While one having ordinary skill in the art may have further knowledge regarding optimal resistance values for desired heating profiles, due to the high variance in the prior art, the amount of guidance or direction needed to enable the invention is greater. However, as discussed above, the instant specification does not provide this detail, and the specification fails to provide working examples or specifications that would result in the claimed resistance values. Thus, the instant specification does not provide an example of practicing the invention without one having ordinary skill in the art to undergo undue experimentation.
Due to the quantity of experimentation required of one having ordinary skill in the art to determine a structure that has “an electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape”, one may be unable to practice the full scope of the invention.
Claims 2-20 are rejected by virtue of their dependency on claim 1.
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.
Claims 1-15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 209807157 U; hereinafter referring to the English translation provided) in view of Jiang et al. (US 20220039471 A1).
Regarding claim 1, Liu teaches aerosol generation system (heating body 2; page 4, ¶ 2) comprising:
a heat generator (ceramic substrate 201; page 4, ¶ 2), which is a PTC heater (page 4, ¶ 2) including a barium titanate (page 4, ¶ 3) having a long shape (Fig. 1), the heat generator generating heat by being supplied with electricity so as to heat an aerosol generating substrate from an inside thereof (page 4, ¶ 3); and
a pair of metal plates (electrode sheets 202; page 4, ¶ 2) provided to respectively cover opposing surfaces of the heat generator along the long shape (Fig. 2).
Liu does not explicitly specify (I) that at least one of the pairs of metal plates includes a rib portion in which an edge portion on at least one side in a short direction of the longitudinal shape is bent along the heat generator or (II) that an electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape.
Regarding (I), Jiang, directed to an aerosol generation system (heating body 10; Fig. 2; [0026]) comprising a heat generator (heating element 130; [0026]) having a long shape (Fig. 1), the heat generator generating heat by being supplied with electricity so as to heat an aerosol generating substrate from an inside thereof ([0026-0027]), and a pair of metal plates (heat-conducting substrates 120, 110; [0028]) provided to respectively cover opposing surfaces of the heat generator along the long shape (Fig. 2), depicts a configuration of metal plates in which at least one of the pairs of metal plates includes a rib portion in which an edge portion on at least one side in a short direction of the longitudinal shape is bent along the heat generator (Fig. 2, see rib along the leading/pointed/short end of the metal plate 110).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by configuring the pair of metal plates to also comprise a rib in a short direction as taught by Jiang because both Liu and Jiang are directed to aerosol generating systems comprising heat generators with a pair of metal plates provided to respectively cover opposing surfaces of the heat generator, Jiang teaches an alternate structural configuration for the metal plates, one having ordinary skill in the art would recognize that the structural configuration of Jiang may help protect the heat generator or provide more even heat distribution to the aerosol generating substrate and this involves applying a known teaching to a similar device to yield predictable results.
Regarding (II), Liu page 4, ¶ 3-7 teaches the same materials for the heat generator (Barium Titanate) and the pair of metal plates (nickel containing iron alloy) as specified by the present application. One having ordinary skill in the art would recognize that an equivalent aerosol generation system would have the same electrical resistance properties such that the electrical resistance value of the heat generator in a direction in which the pair of metal plates face each other is 100 times to 1400 times an electrical resistance value of each of the pair of metal plates in a longitudinal direction of the long shape, absent evidence to the contrary.
Regarding claim 2, Liu teaches that at a trailing end opposite a leading end to be inserted into the aerosol generating substrate, each of the pair of metal plates is connected to an electric wire and is supplied with electricity (lead connectors 4; Fig. 1; page 4, ¶ 4).
Regarding claim 3, Liu teaches that the heat generator is supplied with the electricity between the pair of metal plates (page 4, ¶ 3).
Regarding claim 4, Liu does not explicitly teach that the system comprises the aerosol generating substrate into which the heat generator covered by the pair of metal plates is inserted.
However, given that the device of Liu is intended to be used with/inserted into an aerosol generating substrate (pages 1-2), one having ordinary skill in the art would reasonably expect the aerosol generating system to further comprise the aerosol generating substrate upon operation.
Regarding claim 5, Liu teaches that at least one of the pair of metal plates includes a rib formed by bending at least one of edges, in a lateral direction of the long shape, along the heat generator (Fig. 3; page 4, ¶ 5).
Regarding claim 6, Jiang depicts that a length of each of the pair of metal plates 110, 120 in the longitudinal direction of the long shape is greater than a length of the heat generator (see Figs. 1-2). It would be expected that upon the modification of Liu to comprise the rib along the short edge of the heater, as in the rejection of claim 1, the length of the metal plates would also be extended to meet the limitations of claim 6.
Regarding claim 7, Jiang depicts that at a trailing end opposite a leading end to be inserted into the aerosol generating substrate, the pair of metal plates 110, 120 are provided to extend further in the longitudinal direction relative to the heat generator (see Figs. 1-2).
Regarding claim 8, Jiang depicts that the rib is provided to extend entirely in the longitudinal direction of the heat generator (Fig. 2 depicts that the ribs along the short and long edges are connected to form a rib extending entirely in the longitudinal direction). It would be expected that upon the modification of Liu to comprise the rib along the short edge of the heater, as in the rejection of claim 1, the rib of the metal plates would also be extended to meet the limitations of claim 8.
Regarding claim 9, Liu depicts that the heat generator at a leading end to be inserted into the aerosol generating substrate has an angularly protruding shape at the leading end (see Figs. 1, 7).
Regarding claim 10, Jiang teaches that at least one of the pair of metal plates further includes a leading-end rib formed by bending an edge along the shape at the leading end of the heat generator (see Fig. 2, in which plate 110 comprises a side along the leading edge that forms a recess; [0026]).
Regarding claim 11, Liu depicts that a leading end of the heat generator to be inserted into the aerosol generating substrate is further provided with a protrusion having an angularly protruding shape at the leading end (see Figs. 1, 7).
Regarding claim 12, Liu does not teach that the rib is provided at each of opposite sides in the lateral direction of at least one of the pair of metal plates.
Jiang, directed to an aerosol generation system (heating body 10; Fig. 2; [0026]) comprising a heat generator (heating element 130; [0026]) having a long shape (Fig. 1), the heat generator generating heat by being supplied with electricity so as to heat an aerosol generating substrate from an inside thereof ([0026-0027]), and a pair of metal plates (heat-conducting substrates 120, 110; [0028]) provided to respectively cover opposing surfaces of the heat generator along the long shape (Fig. 2) wherein at least one of the pair of metal plates includes a rib formed by bending at least one of edges, in a lateral direction of the long shape, along the heat generator (Figs. 4-7; [0026]; [0034]; [0042]; [0047]), teaches that the rib is provided at each of opposite sides in the lateral direction of at least one of the pair of metal plates (see Fig. 2, in which plate 110 comprises a rib along opposite sides that forms a recess; [0026]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by configuring the pair of metal plates such that the rib is provided at each of opposite sides in the lateral direction of at least one of the pair of metal plates as taught by Jiang because both Liu and Jiang are directed to aerosol generating systems comprising heat generators with a pair of metal plates provided to respectively cover opposing surfaces of the heat generator, Jiang teaches an alternate structural configuration for the metal plates, one having ordinary skill in the art would recognize that the structural configuration of Jiang may help protect the edges of the heat generator and this involves substituting one alternative configuration for another to yield predictable results.
Regarding claim 13, Liu does not teach that the rib is provided at each of opposite sides in the lateral direction of both of the pair of metal plates.
Jiang, directed to an aerosol generation system (heating body 10; Fig. 2; [0026]) comprising a heat generator (heating element 130; [0026]) having a long shape (Fig. 1), the heat generator generating heat by being supplied with electricity so as to heat an aerosol generating substrate from an inside thereof ([0026-0027]), and a pair of metal plates (heat-conducting substrates 120, 110; [0028]) provided to respectively cover opposing surfaces of the heat generator along the long shape (Fig. 2) wherein at least one of the pair of metal plates includes a rib formed by bending at least one of edges, in a lateral direction of the long shape, along the heat generator (Figs. 4-7; [0026]; [0034]; [0042]; [0047]), teaches that the rib is provided at each of opposite sides in the lateral direction of both of the pair of metal plates (see Fig. 6, in which plates 110 and 120 comprise ribs (grooves 114) along opposite sides that form a recess; [0026]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by configuring the pair of metal plates such that the rib is provided at each of opposite sides in the lateral direction of at least one of the pair of metal plates as taught by Jiang because both Liu and Jiang are directed to aerosol generating systems comprising heat generators with a pair of metal plates provided to respectively cover opposing surfaces of the heat generator, Jiang teaches an alternate structural configuration for the metal plates, one having ordinary skill in the art would recognize that the structural configuration of Jiang may help secure and protect the heat generator and this involves substituting one alternative configuration for another to yield predictable results.
Regarding claim 14, Liu depicts that the heat generator has a tabular shape, and wherein a thickness of the tabular shape is smaller than 1/4 of a width of the tabular shape (Fig. 3).
Regarding claim 15, Liu depicts that the pair of metal plates are provided at opposite principal surfaces of the tabular shape of the heat generator (Fig. 3).
Regarding claim 17, Liu teaches that the pair of metal plates are composed of a nickel-containing iron alloy (Page 4, ¶ 7).
Regarding claim 20, Liu does not explicitly teach that a temperature of the heat generated by the heat generator is below 350°C.
However, Liu teaches that similar heating devices in the art are known to heat to 220-250°C (page 1).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to construct Liu to generate a temperature below 350°C because Liu teaches that this is a standard temperature range in the art, and this involves applying a known teaching to a known device to yield predictable results.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Liu and Jiang as applied to claim 1 above, and further in view of Oh (US 20210045447 A1).
Regarding claim 16, Liu does not teach that the heat generator and the pair of metal plates are adhered together by using a conductive adhesive paste.
Oh, directed to an aerosol generation system (heat generating heater 100, 200; Fig. 1; [0031]) comprising a heat generator (heater pattern 122; Fig. 8; [0048]) having a long shape, the heat generator generating heat by being supplied with electricity so as to heat an aerosol generating substrate from an inside thereof ([0031], [0047]); and a pair of plates (support 121 and cover layer 123; [0048]) provided to respectively cover opposing surfaces of the heat generator along the long shape, teaches that conductive adhesive paste is known in the art for fixing elements of an aerosol generation system ([0078-0079]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Liu by using a conductive adhesive paste as taught by Oh to adhere the metal plates to the heat generator because both Liu and Oh are directed to aerosol generation systems, Oh teaches that it is known in the art to use conductive adhesive paste to fix elements, one having ordinary skill in the art would recognize that this would better secure the metal plates to the heat generator, and this involves applying a known teaching to a similar product to yield predictable results.
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.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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