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 .
Response to Amendment
The amendments entered on 4/30/2026 have been accepted. Claims 15-24, 31-32 are amended. There are no new or canceled claims. Claims 15-32 are pending. Applicant’s amendments to the claims have overcome the 112(b) and 112(d) rejections previously set forth in the non-final office action mailed 1/30/2026. Applicant’s amendments to the drawings and claims have overcome the objections previously set forth. Applicant’s amendments to the specification have overcome most of the objections previously set forth.
Specification
The disclosure is objected to because of the following informalities:
Applicant’s amendments only corrected the first instance of the RF signal generator numeral “10” needing to be changed to “11”. As previously indicated, in the originally filed specification pgs. 29 lines 19-23, the instances of RF signal generator “10” needs to be changed to “11”. This final sentence should read “In the example of Figure 2, the oscillation circuit 10 comprises a RF signal generator 11 and a phase shift network 12 to split the signal form the RF signal generator 11 into two equal components, 180 degrees out of phase with each other”.
Appropriate correction is required.
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.
Claims 15, 25-29, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record), optionally in view of Arnepalli (US2017/0137937A1).
Regarding claim 15, Hon teaches a dielectrically heating aerosol-generating system (the device forms an aerosol [see title, 0001-0006]. The device utilizes dielectric heating to form the aerosol [0004, 0027]), comprising:
an aerosol-forming substrate (a liquid supply is heated to form the aerosol [0001-0006, 0027]),
a first electrode and a second electrode (the atomizer may be provided with first and second electrode or electrode pads or plates “56” [0028]),
an aerosol generating device comprising a controller configured to connect to the first electrode and the second electrode (the vaporizing device [0004, 0020, Figs. 1] has control electronics [0004, 0023]. The controller is clearly connected to the electrodes [see Figs. 2-6]),
wherein the first and the second electrode form a capacitor with a portion of the aerosol-forming substrate (the electrodes are formed in a high frequency oscillation circuit to a capacitor which provides positive feedback signal [0030-0031, Figs. 2-6]. In this, the liquid substrate “36” undergoes dielectric heating to create the vapor [0030], such that the capacitor is clearly formed with the aerosol substrate),
wherein the controller is further configured to supply an alternating voltage to the first and the second electrode for dielectrically heating the aerosol-forming substrate (there is a high frequency oscillation circuit “50” [0030, Fig. 2], wherein this circuit is connected to the electrodes “56” such that alternating voltage would supplied to the electrodes. This circuit/alternating voltage leads to dielectric heating of the electrodes in order to create the vapor from the liquid substrate [0030-0031]),
wherein the first electrode and the second electrode are configured to be spaced apart by a separation distance which is a minimum distance between opposing surfaces of the first and second electrode (the dimension DD of the open space between the electrode pads “56” is considered to be the separation distance between the electrodes [0028]. The electrodes may be aligned and parallel to each other [0028], such that the distance between the electrodes would clearly be a minimum distance between the surfaces. And given the teachings of Hon that DD is the space between the electrodes such that liquid is drawn in via capillary action, this dimension DD would clearly and reasonably be considered to be the distance between the electrodes as this is the dimension that would determine the capillary action aspects of the device [0028]),
wherein the separation distance is between 5 millimeters and 9 millimeters (The electrodes may be aligned and parallel to each other, and the dimension DD may typically range from 0.5 to 4mm [0028]. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). As Hon suggests that this distance may “typically” range up to 4mm (such that it would be reasonably be considered that the values of DD often do and would exceed that of 4mm), and because the prior art range and the claimed range are so close with there being no criticality nor unexpected results demonstrated as to the claimed range, one would have reasonably found a prima facie case of obviousness based upon these suggestions of Hon. It being noted that the instant application appears to only have a general suggestion that a separation distance of 2-9mm is advantageous [0012], and there is no evidence of criticality or unexpected results as to the values of 4mm vs 5mm, for example).
Optionally applied, Arnepalli is tied to a system which comprises aerosol generators to produce droplets from a precursor [abstract], such that this is highly relevant to that of Hon and the instant application. Arnepalli is tied to dielectric heating [0003, 0048-0052]. Arnepalli discloses that a gap is formed between a bottom electrode 1010 and a top electrode 1009 [Fig. 5a], wherein this gap may be between 0.5mm and 10mm [0058]. As in Fig. 5a, these electrodes are formed parallel to each other such that this would be a minimum separation distance. One of ordinary skill in the art would have found it obvious to modify the system of Hon so as to have an electrode gap as suggested by Arnepalli. One would have found this obvious as an example of a simple substitution of one known element (that being that gap distance suggested by Hon) for another (the gap as suggested by Arnepalli) so as to obtain predictable results. One would have expected predictable results of a working system utilizing well-known gap sizes between electrodes in a dielectric heating environment that is known within the art and thus would have been workable ranges for this distance dependent upon the exact type of liquid utilized in the aerosol system), and Arnepalli suggests that such processes results in achieving small aerosol droplet sizes [0058-0059].
Regarding claim 25, Hon makes obvious the aerosol system wherein at least one of the first/second electrode is gas permeable (the electrodes may have a wire or metal mesh electrode pad to be used in the place of solid parts [see 0029, Fig. 9]. In this mesh construction, the electrode would clearly be gas permeable as gas would pass through the holes in the mesh).
Regarding claims 26, Hon makes obvious the aerosol system wherein at least one of the first/second electrode is substantially planar (as in Figs. 7-8, the first and second electrodes “56” may be provided so as to be in a flat shape [0028]. As in Figs. 7-8, the electrodes are clearly arranged in a plane).
Regarding claim 27, Hon makes obvious the aerosol system, wherein the first and second electrodes are substantially planar and extending in a first/second plane respectively, wherein the second plane is parallel to the first plane (as in Figs. 7-8, the first and second electrodes “56” may be provided so as to be in a flat shape [0028], such that they are each considered to be in a planar shape in a first/second plane respectively. And as in Figs. 7-8, the two planes are arranged parallel to each other [0028]).
Regarding claims 28-29, Hon makes obvious the aerosol system, wherein the first electrode circumscribes the second electrode, and wherein the first electrode is annular defining an internal passage and the second electrode is disposed in the internal passage of the first electrode (the electrodes may be arranged as shown in Fig. 10, wherein the atomizer/electrodes are arranged in a tubular/annular design. In this arrangement, the electrodes would be “100”, wherein one of the electrodes is located at the center and the other circumscribes it [0029]. And with this arrangement, the first electrode would be the outer one in Fig. 10 which forms the internal passage, and the second electrode would be the internal “100” which is located at the center of the passage).
Regarding claim 31, Hon makes obvious the aerosol generating system as in the rejection of claim 15 above. Hon further teaches that the first electrode and second electrode are spaced apart to form a substrate cavity and wherein an aerosol-forming substrate is disposed in the substrate cavity (the electrodes “56” may be spaced apart from each other by the dimension DD, wherein this is the liquid space “70”. This space is considered to be the substrate cavity, as this is where the aerosol substrate is drawn into. And as above, the liquid that is disposed in this space between electrodes is the aerosol substrate which is heated to form the aerosol [0027-0028), and the first and second electrodes give rise to dielectric heating of the aerosol-forming substrate when an alternating voltage is supplied to the first electrode and the second electrode (there is a high frequency oscillation circuit “50” [0030, Fig. 2], wherein this circuit is connected to the electrodes “56” such that alternating voltage would supplied to the electrodes. This circuit/alternating voltage leads to dielectric heating of the electrodes in order to create the vapor from the liquid substrate [0030-0031]),
wherein the first electrode and the second electrode are configured to be spaced apart by a separation distance of between 5 millimeters and 9 millimeters (The electrodes may be aligned and parallel to each other, and the dimension DD may typically range from 0.5 to 4mm [0028]. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). As Hon suggests that this distance may “typically” range up to 4mm (such that it would be reasonably be considered that the values of DD often do and would exceed that of 4mm), and because the prior art range and the claimed range are so close with there being no criticality nor unexpected results demonstrated as to the claimed range, one would have reasonably found a prima facie case of obviousness based upon these suggestions of Hon. It being noted that the instant application appears to only have a general suggestion that a separation distance of 2-9mm is advantageous [0012], and there is no evidence of criticality or unexpected results as to the values of 4mm vs 5mm, for example).
Optionally applied, Arnepalli is tied to a system which comprises aerosol generators to produce droplets from a precursor [abstract], such that this is highly relevant to that of Hon and the instant application. Arnepalli is tied to dielectric heating [0003, 0048-0052]. Arnepalli discloses that a gap is formed between a bottom electrode 1010 and a top electrode 1009 [Fig. 5a], wherein this gap may be between 0.5mm and 10mm [0058]. As in Fig. 5a, these electrodes are formed parallel to each other such that this would be a minimum separation distance. One of ordinary skill in the art would have found it obvious to modify the system of Hon so as to have an electrode gap as suggested by Arnepalli. One would have found this obvious as an example of a simple substitution of one known element (that being that gap distance suggested by Hon) for another (the gap as suggested by Arnepalli) so as to obtain predictable results. One would have expected predictable results of a working system utilizing well-known gap sizes between electrodes in a dielectric heating environment that is known within the art and thus would have been workable ranges for this distance dependent upon the exact type of liquid utilized in the aerosol system), and Arnepalli suggests that such processes results in achieving small aerosol droplet sizes [0058-0059].
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record) and optionally in view of Arnepalli (US2017/0137937A1), as applied to claim 15 above, and further in view of Mironov (US2017/0231277A1, of record).
Regarding claims 21-22, Hon teaches that the first electrode has a first length, and the second electrode has a second length that is substantially the same as the first length (see Figs. 2-8, for example, wherein the two electrodes “56” have substantially identical lengths, and wherein Hon teaches that the electrodes are typically “aligned” with each other [0028]). Hon does not explicitly give the lengths of the electrodes. However, it is well understood in the art that that the electrode dimensions (including the length thereof) affect the electromagnetic strength and efficiency of the power supplied, such that this length would be obvious to optimize so as to obtain sufficient mixture of power, efficiency, etc. Mironov, for example, explains this well-known behavior, as “The electrical quantity to be measured by the control system may depend on the size of the first and second electrodes and on the separation between the first and second electrodes. In at least one example embodiment, capacitance is a function of the separation between the first and second capacitor plates and the shape and size of the first and second capacitor plates” [0094]. In other words, Mironov is explaining the universal relationship that the capacitance (and thus the charge and voltage) is a function of the shape/size (including length) of the electrodes for these types of dielectric heating systems. Mironov further suggests that the “length of the electrodes may be substantially greater than the width of the electrodes”, such that they are elongate [0061], wherein this dimensionality leads to improved sensitivity [0061]. Mironov therefore further suggests having the length be relatively larger than each of the electrodes width and thickness.
Therefore, the optimization of Hon’s electrode size (including its length) would have simply been routine optimization for the person of ordinary skill in the art, so as to properly set the electrical characteristics of the aerosol-generating system. The claimed length of the electrode from 20-60mm and length of 50mm would have thus been obvious for the person of ordinary skill in the art through this routine optimization of the length. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Additionally, see MPEP 2144.04 IV., In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. And finally, it is noted that Applicant has not provided a conclusive showing of unexpected results nor criticality to the claimed range.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record) and optionally in view of Arnepalli (US2017/0137937A1), as applied to claim 15 above, and further in view of either Raichman (US2018/0104214A1, of record) or Mironov (US2017/0231277A1, of record).
Regarding claims 23-24, Hon does not specifically give the thickness of the electrodes. Raichman, which is similarly tied to vaporizing devices [title], has electrodes “37” and “38” which are incorporated into the device [0085]. The electrodes may have a thickness from 0.05mm to 0.4mm [0085]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). One of ordinary skill in the art would have found it obvious before the effective filing date of the invention to modify the thickness of Hon to as suggested by Raichman. As Hon is silent as to the specific thickness of the electrode, it would have been obvious to look to other exemplary cases of working electrode thicknesses within the art, with a reasonable expectation of success of providing a sufficient thickness.
In the alternate, it is well understood in the art that that the electrode dimensions (including the thickness thereof) affect the electromagnetic strength and efficiency of the power supplied, such that this thickness would be obvious to optimize so as to obtain sufficient mixture of power, efficiency, etc. Mironov, for example, explains this well-known behavior, as “The electrical quantity to be measured by the control system may depend on the size of the first and second electrodes and on the separation between the first and second electrodes. In at least one example embodiment, capacitance is a function of the separation between the first and second capacitor plates and the shape and size of the first and second capacitor plates” [0094]. In other words, Mironov is explaining the universal relationship that the capacitance (and thus the charge and voltage) is a function of the shape/size (including thickness) of the electrodes for these types of dielectric heating systems. Mironov further suggests that the “thickness of the electrodes may be substantially less than the length and width of the electrodes. In other words, the electrodes may be thin” [0061]. Mironov therefore further suggests having this thin shape may improve the sensitivity of measurements [0061].
Therefore, the optimization of Hon’s electrode size (including its thickness) would have simply been routine optimization for the person of ordinary skill in the art, so as to properly set the electrical characteristics of the aerosol-generating system. The claimed thickness of the electrode from 0.02mm to 2mm, and from 0.3 to 0.5mm would have thus been obvious for the person of ordinary skill in the art through this routine optimization of the length. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Additionally, see MPEP 2144.04 IV., In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. And finally, it is noted that Applicant has not provided a conclusive showing of unexpected results nor criticality to the claimed range.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record) and optionally in view of Arnepalli (US2017/0137937A1), as applied to claim 15 above, and further in view of Bonnely (US2019/0124977A1, of record).
Regarding claim 30, Hon teaches generally to electronic smoking devices, electronic cigarettes, and similar vaporizing devices and methods [0001]. Hon does not explicitly limit its invention to a specific smoking device or method. Shisha/hookah systems are extremely well known within the art, and it would have been obvious to modify Hon so as to be a shisha system. Bonnely, for example, teaches a shisha assembly (title, Fig. 4). The shisha device comprises an interior “311” which contains a volume of liquid “312” configured to contain liquid [0063]. The interior also has head space “316” and an outlet conduit “314” [0063, Fig. 4]. The device has a conduit “313” in gaseous communication with the aerosol air outlet and the interior [0063]. The shisha consumable article “100” is disposed on the consumable receptable “220”, wherein this is clearly in fluid communication with the cavity [0063, Fig. 4]. One of ordinary skill in the art would have found it obvious to modify Hon so as to be tied to a shisha system, as shisha/hookah system are extremely well-known as in Bonnely. One would have been motivated so as to provide an alternate method of supplying tobacco to the user, wherein the substrate is pulled through the liquid cooling the chemicals before it is inhaled by the user [0001-0007].
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record) and optionally in view of Arnepalli (US2017/0137937A1), as applied to claim 15 above, and further in view of either Reevell (EP3349601A1, of record) or Mironov (US2017/0231277A1, of record).
Regarding claim 32, Hon makes obvious the aerosol-generating system as in the rejection of claim 15 above. Hon further teaches that the first electrode and second electrode are spaced apart to form a substrate cavity and wherein an aerosol-forming substrate is disposed in the substrate cavity (the electrodes “56” may be spaced apart from each other by the dimension DD, wherein this is the liquid space “70”. This space is considered to be the substrate cavity, as this is where the aerosol substrate is drawn into. And as above, the liquid that is disposed in this space between electrodes is the aerosol substrate which is heated to form the aerosol [0027-0028), and the first and second electrodes give rise to dielectric heating of the aerosol-forming substrate when an alternating voltage is supplied to the first electrode and the second electrode (there is a high frequency oscillation circuit “50” [0030, Fig. 2], wherein this circuit is connected to the electrodes “56” such that alternating voltage would supplied to the electrodes. This circuit/alternating voltage leads to dielectric heating of the electrodes in order to create the vapor from the liquid substrate [0030-0031]),
the first electrode has a first length, and the second electrode has a second length that is substantially the same as the first length (see Figs. 2-8, for example, wherein the two electrodes “56” have substantially identical lengths, and wherein Hon teaches that the electrodes are typically “aligned” with each other [0028]).
Hon does not explicitly give the ratio between the first length of the first electrode and the separation distance to be between 15.5 and 17.5. However, ratios in electrode distances as such are known within the art, such as by Reevell. Reevell teaches an aerosol-generating system [pg. 1 of machine translation], wherein the system may have two planar parallel capacitor plates [pg. 10-11 of machine translation]. The capacitor plates may have a length and width, and there may be a separation distance d between the two plates which is sufficiently small such that the liquid aerosol-forming substrate is held by capillary forces [pg. 10-11 of machine translation]. Reevell suggests a variety of different dimensions for these plates and this separation distance, including a length of 25-30mm and a separation distance from 2-3mm or 1.5-2mm [pg. 10-11 of machine translation]. With these values, a ratio of the length to the separation distance overlaps with the claimed range. As one exemplary embodiment, when the length is 30mm and the separation distance is 1.8mm, the ratio would be 16.7 which is within the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the ratio of Hon to be as suggested by Reevell, as Reevell provides known examples of ratios which are known within the art. One would have been motivated so as to have sufficient electrical properties for the electrodes and the atomization system and to promote efficiency of the atomization [pg. 10-11 of machine translation].
In the alternate, it would have been obvious for the person of ordinary skill in the art to optimize the electrode dimensions (including length, and ratio between length and separation distance) as it is well understood in the art that the electrode dimensions affect the electromagnetic strength and efficiency of the power supplied. Mironov, for example, explains this well-known behavior, as “The electrical quantity to be measured by the control system may depend on the size of the first and second electrodes and on the separation between the first and second electrodes. In at least one example embodiment, capacitance is a function of the separation between the first and second capacitor plates and the shape and size of the first and second capacitor plates” [0094]. In other words, Mironov is explaining the universal relationship that the capacitance (and thus the charge and voltage) is a function of the separation distance between the electrodes and of the shape/size of the electrodes for these types of dielectric heating systems. Therefore, the optimization of Hon’s electrode size (including its length and thus its ratio between length and separation distance) would have simply been routine optimization for the person of ordinary skill in the art, so as to properly set the electrical characteristics of the aerosol-generating system. The claimed ratio of the length from 15.5 to 17.5 would have thus been obvious for the person of ordinary skill in the art through this routine optimization. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Additionally, see MPEP 2144.04 IV., In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. And finally, it is noted that Applicant has not provided a conclusive showing of unexpected results nor criticality to the claimed range.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1, of record), in view of either Reevell (EP3349601A1, of record) or Mironov (US2017/0231277A1, of record).
Regarding claim 16, Hon teaches a dielectrically heating aerosol-generating system (the device forms an aerosol [see title, 0001-0006]. The device utilizes dielectric heating to form the aerosol [0004, 0027]), comprising:
an aerosol-forming substrate (a liquid supply is heated to form the aerosol [0001-0006, 0027]),
a first electrode and a second electrode (the atomizer may be provided with first and second electrode or electrode pads or plates “56” [0028]),
an aerosol generating device comprising a controller configured to connect to the first electrode and the second electrode (the vaporizing device [0004, 0020, Figs. 1] has control electronics [0004, 0023]. The controller is clearly connected to the electrodes [see Figs. 2-6]),
wherein the first and the second electrode form a capacitor with a portion of the aerosol-forming substrate (the electrodes are formed in a high frequency oscillation circuit to a capacitor which provides positive feedback signal [0030-0031, Figs. 2-6]. In this, the liquid substrate “36” undergoes dielectric heating to create the vapor [0030], such that the capacitor is clearly formed with the aerosol substrate),
wherein the controller is further configured to supply an alternating voltage to the first and the second electrode for dielectrically heating the aerosol-forming substrate (there is a high frequency oscillation circuit “50” [0030, Fig. 2], wherein this circuit is connected to the electrodes “56” such that alternating voltage would supplied to the electrodes. This circuit/alternating voltage leads to dielectric heating of the electrodes in order to create the vapor from the liquid substrate [0030-0031]),
the first electrode has a first length, and the second electrode has a second length that is substantially the same as the first length (see Figs. 2-8, for example, wherein the two electrodes “56” have substantially identical lengths, and wherein Hon teaches that the electrodes are typically “aligned” with each other [0028]),
wherein the first and second electrode are spaced apart in a direction perpendicular to the first/second lengths by a separation distance (the dimension DD is the open space between the electrodes “56”, and as in Figs. 7-8 for example, this would be in a perpendicular direction to the length extent of the electrodes, as DD is where the liquid is drawn into the space [0028]. The separation distance DD is typically from 0.5 to 4mm [0028]).
Hon does not explicitly give the ratio between the first length of the first electrode and the separation distance to be between 15.5 and 17.5. However, ratios in electrode distances as such are known within the art, such as by Reevell. Reevell teaches an aerosol-generating system [pg. 1 of machine translation], wherein the system may have two planar parallel capacitor plates [pg. 10-11 of machine translation]. The capacitor plates may have a length and width, and there may be a separation distance d between the two plates which is sufficiently small such that the liquid aerosol-forming substrate is held by capillary forces [pg. 10-11 of machine translation]. Reevell suggests a variety of different dimensions for these plates and this separation distance, including a length of 25-30mm and a separation distance from 2-3mm or 1.5-2mm [pg. 10-11 of machine translation]. With these values, a ratio of the length to the separation distance overlaps with the claimed range. As one exemplary embodiment, when the length is 30mm and the separation distance is 1.8mm, the ratio would be 16.7 which is within the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the ratio of Hon to be as suggested by Reevell, as Reevell provides known examples of ratios which are known within the art. One would have been motivated so as to have sufficient electrical properties for the electrodes and the atomization system and to promote efficiency of the atomization [pg. 10-11 of machine translation].
In the alternate, it would have been obvious for the person of ordinary skill in the art to optimize the electrode dimensions (including length, and ratio between length and separation distance) as it is well understood in the art that the electrode dimensions affect the electromagnetic strength and efficiency of the power supplied. Mironov, for example, explains this well-known behavior, as “The electrical quantity to be measured by the control system may depend on the size of the first and second electrodes and on the separation between the first and second electrodes. In at least one example embodiment, capacitance is a function of the separation between the first and second capacitor plates and the shape and size of the first and second capacitor plates” [0094]. In other words, Mironov is explaining the universal relationship that the capacitance (and thus the charge and voltage) is a function of the separation distance between the electrodes and of the shape/size of the electrodes for these types of dielectric heating systems. Therefore, the optimization of Hon’s electrode size (including its length and thus its ratio between length and separation distance) would have simply been routine optimization for the person of ordinary skill in the art, so as to properly set the electrical characteristics of the aerosol-generating system. The claimed ratio of the length from 15.5 to 17.5 would have thus been obvious for the person of ordinary skill in the art through this routine optimization. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Additionally, see MPEP 2144.04 IV., In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. And finally, it is noted that Applicant has not provided a conclusive showing of unexpected results nor criticality to the claimed range.
Regarding claim 17, modified Hon makes obvious the ratio of 16.6 or 16.7 (as in the rejection of claim 16 above, when Hon is in view of Reevell, the ratio may have a value of 16.7 such as when the length is 30mm and the separation distance is 1.8mm [pg. 10-11 of machine translation]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). And when Hon is in view of Mironov, it would have been obvious to land upon a ratio of 16.6 or 16.7 from a routine optimization of the electrode size/shape, for the reasons laid out in the rejection of claim 16 above).
Regarding claim 18, modified Hon makes obvious the separation distance from 2mm to 9mm (the separation distance, as suggested by either Hon (0.5 to 4mm [0028]) or Reevell (1.5-2mm [pg. 10-11 of machine translation]) may overlap with the claimed range. And additionally/alternatively, when Hon is in view of Mironov, it would have been obvious to routinely optimize the separation between the first and second electrodes because the capacitance (and thus charge/voltage) is a function of this distance [Mironov, 0094], such that landing upon the claimed separation distance and claimed ratio would have been an obvious optimization so as to properly set the electrical properties of the aerosol-generating device. The rationale laid out in the rejection of claim 16 outlines further rationale for this routine optimization which is also applicable to this separation distance).
Regarding claim 19, modified Hon makes obvious the separation distance is between 2-6mm (0.5 to 4mm [0028]) or Reevell (1.5-2mm [pg. 10-11 of machine translation]) may overlap with the claimed range. And additionally/alternatively, when Hon is in view of Mironov, it would have been obvious to routinely optimize the separation between the first and second electrodes because the capacitance (and thus charge/voltage) is a function of this distance [Mironov, 0094], such that landing upon the claimed separation distance and claimed ratio would have been an obvious optimization so as to properly set the electrical properties of the aerosol-generating device. The rationale laid out in the rejection of claim 16 outlines further rationale for this routine optimization which is also applicable to this separation distance).
Regarding claim 20, modified Hon makes obvious the separation distance is 3mm (the separation distance may be from 0.5 to 4mm [Hon, 0028]. And additionally/alternatively, when Hon is in view of Mironov, it would have been obvious to routinely optimize the separation between the first and second electrodes because the capacitance (and thus charge/voltage) is a function of this distance [Mironov, 0094], such that landing upon the claimed separation distance and claimed ratio would have been an obvious optimization so as to properly set the electrical properties of the aerosol-generating device. The rationale laid out in the rejection of claim 16 outlines further rationale for this routine optimization which is also applicable to this separation distance).
Response to Arguments
Applicant’s arguments have been considered but they are not persuasive.
Applicant argues on pg. 28 that the rejections rely on generalized allegations of “routine optimization”. Applicant argues that one would not have been led to the claimed combination of the separation distance together with the electrode length and length-to-separation ratio.
The Examiner respectfully disagrees. As will be further detailed below, where the rejections rely upon the obviousness of routine optimization, explicit rationale is provided regarding the factors which affect the electronics of these aerosol-generating systems. Further, it is noted for Applicant that none of the claims nor dependent claims actually claim a combination of separation distance, electrode length, and a length-separation ratio as is argued. The independent claims and dependent claims require a multitude of different limitations, but none of the claims actually require all three aspects to be at specific values. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, these arguments are not found convincing for the reasons detailed below.
Applicant argues on pgs. 29-30 that Hon only describes the dimensions as being from 0.5 to 4mm and not the amended distance of 5 to 9mm. Applicant argues that Hon does not specify that DD is a minimum distance and that the dimension DD could be any dimensions such as a length dimension perpendicular to the pads.
The Examiner respectfully disagrees. It is noted that Hon states that the dimension DD is “typically” from 0.5 to 4mm [0028], such that Hon is clearly suggesting that the dimensions DD would reasonably include values outside of this range dependent upon the specific characteristics of the liquid which are provided [0028]. As set forth in MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, In re Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). As Hon suggests that this distance may “typically” range up to 4mm (such that it would be reasonably be considered that the values of DD often do and would exceed that of 4mm dependent upon the liquid utilized), and because the prior art range and the claimed range are so close with there being no criticality nor unexpected results demonstrated as to the claimed range, one would have reasonably found a prima facie case of obviousness based upon these suggestions of Hon. It being noted that the instant application appears to only have a general suggestion that a separation distance of 2-9mm is advantageous [0012], and there is no evidence of criticality or unexpected results as to the values of 4mm vs 5mm, for example. There is no evidence that different properties would be expected at a value of 4mm and that of 5mm.
Further, it is noted that the difference between 4mm and 5mm is generally considered to be within the range of substantially close ranges (especially given that Hon reasonably suggests values above 4mm given its suggestions of “typical” ranges). See MPEP 2144.05. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), wherein a rejection was upheld wherein a prior art of 0.75% nickel and 0.25% molybdenum and 0.94% nickel and 0.31% molybdenum satisfied a claim limitation for “0.8% nickel, 0.3% molybdenum”. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties." And further under Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997), a pH of 5.0 could infringe upon a patented purification process of pH 6.0-9.0.
It is additionally noted that Arnepalli is additionally optionally relied upon to suggest a separation distance overlapping with 5-9mm, such that separation distances within this range for dielectric heating between electrodes is well known in the art and would have been no more than a simple substitution to land on such a value.
As to Applicant’s arguments regarding the dimension DD, the Examiner strongly disagrees. It is noted that the electrodes are made to be aligned and parallel to each other [0028, Figs. 7-8], such that a distance DD would necessarily be considered a “minimum distance”, because the distance between the electrodes would be the same at any position because of their structural relationship. And further, a fair reading of Hon would clearly construe the dimension DD to mean a distance between the electrode pads and not some other length distance as Applicant contends. Hon specifies that DD is of the open space between the electrode pads and that it would vary depending on the liquid [0028], and as this is tied to the capillary action of this liquid space [0028], this would clearly be referring to a distance between the electrode pads as this is the dimension that would determine the capillary action characteristics of the material. Any other interpretation of this dimension misconstrues/misunderstands the teachings of Hon.
Applicant argues on pgs. 30-32 that Reevell nor Mironov relate to a dielectrically heatable aerosol-generating system and argues that one would not look to these references as they are tied to measurement and not energy.
The Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). It is the combination of Hon with Reevell or Mironov that makes obvious the claimed invention.
Further, it is noted that both Reevell and Mironov are tied to dielectric systems. See Reevell [0020-0028] and Mironov [0200+] for example. As both of these references are similarly tied to aerosol generating systems and pertaining to tobacco, it is considered that these would both be highly pertinent to both Hon and to the instant application. As in the case of Reevell, the length and distances would have been relevant and would have been expected to promote the efficiency of atomization and improve electrical properties of the electrodes [pgs. 10-11 of machine translation]. These are aspects that would clearly be expected to translate to the system of Hon. And in the case of Mironov, Mironov is teaching/suggestions well-understood behavior regarding the relationship of electrode dimensionality and that of the electromagnetic strength/efficiency of the power supplied. Mironov teaches that how the size/gap/length of the electrodes affect the power systems of these electrodes, laying out a clear relationship between these dimensionalities and the ultimate power/current. These relationships would also clearly be applicable to the exact system of Hon and one of ordinary skill in the art would have found these teachings highly relevant for their design.
Applicant argues that one would not modify the dimensions and arrangements of Hons sensors.
The Examiner respectfully disagrees. It is noted that Hon teaches a dimension DD is “typically” from 0.5 to 4mm [0028], and that the dimension of the space between electrodes would be chosen based on the liquid so that liquid can be drawn via capillary action. Hon is clearly not overly limiting its dimension DD and is not teaching away from going outside of this range as this is a general teaching of a range of the most common value types but is not limited to this. The separation distance DD would clearly have to be a value such that capillary action must occur, but this would still be considered to account for a wide range of possible values for this separation distance. And even if what Applicant argues were true here, it is noted that claims 16 may be readily satisfied only by utilizing values within the range suggested by Hon, such that these arguments are not convincing.
Applicant argues on pg. 32 that the claimed invention is tied to a specific shisha system as described in the specification and in claim 30.
The Examiner respectfully disagrees. First, it is noted that none of the independent claims in any way are limited to a shisha system, and rather they are tied very generally to any aerosol-generating system. The only limitations tied to a shisha system are in claim 30, and if Applicant wishes to have their claims limited to a shisha system the claims must reflect these limitations. Applicant refers to the features related to the shisha in the disclosure, however these features are not in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). And regarding claim 30, it is noted that Hon does not limit its invention explicitly to what is disclosed and would have been obvious to utilize its electrode details in a variety of applications, and shisha devices are extremely well-known and ubiquitous within the art of tobacco and vaporizing devices as noted by Bonnelly. All of the limitations in claim 30 are known and conventional aspects of shisha devices, and as in the rejections above, one would have found it obvious to modify the system of Hon to be in that of a Shisha with no difficulty.
Applicant argues that the invention has found beneficial properties when the separation distance is between 5-9mm and when the length ratio is between 15.5 and 17.5.
The Examiner respectfully disagrees. The Examiner notes that the cited section stating beneficial properties of the separation distance is tied to the much wider range of 2-9mm and not to 5-9mm as Applicant contends. The application does not appear to provide evidence of unexpected results or criticality as to the claimed range of 5-9mm. This, nor the citing of length of the electrode, is sufficient to establish criticality or unexpected results as to the claimed ranges such as regarding claim 15. It being noted that the burden is on Applicant to establish criticality. Further, regarding claim 16, it is noted that the claimed range is suggested by the combination of Hon with either Reevell or Mironov and that the claimed values are reasonably suggested by the combination detailed above. And additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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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/T.F.S./Examiner, Art Unit 1749 /KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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