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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 8/22/2023, 10/17/2023, 5/9/2025, 10/23/2025, and 1/20/2026 has been considered by the Examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Each of Figures 4b, 5b, 6b, 7b, and 8b are lacking the reference signs that are mentioned in the description and in the corresponding Figures 4a, 5a, 6a, 7a, and 8a, respectively. Figures 4b, 5b, 6b, 7b, and 8b should be amended to have reference signs akin to their Figure “a” counterparts. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
Pg. 29 of the specification lines 19-23 refer to the RF signal generator by the numeral “10”. However, this is the same number as used for the oscillation circuit, and it appears that the RF signal should be “11” based on pg. 29 line 34, for example.
PG. 33 of the specification line 8 reads “…the closure 15”. This should read the closure “75”.
Appropriate correction is required.
Claim Objections
Claim 20 is objected to because of the following informalities:
Claim 20 should read “…wherein the separation distance is configured to be .
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 final line requires “a separation distance of between about 4 millimetres and about 9 millimetres”. The term “about” in claim 15 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (what would be considered “about” 4 and what would not be “about” 4, for example), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 19-32 are rejected for relying upon a rejected claim. The claim will be examined as if the word “about” is deleted from the claim.
Claim 16 final line requires “…to be between about 15.5 and about 17.5”. The term “about” in claim 16 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (what would be considered “about” 15.5 and what would not be “about” 15.5, for example), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 17-18 are rejected for relying upon a rejected claim. The claim will be examined as if the word “about” is deleted from the claim.
Claims 18-24 and 31-32 each recite different limitations requiring a value to be “about” a numerical range or point. The term “about” in each of these claims is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (what would be considered “about” 15.5 and what would not be “about” 15.5, for example), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Each of the claims will be examined as if the word “about” is deleted from the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 19-20 each recite a claimed range or value of the separation distance which is outside of the claimed range of independent claim 15. Specifically, claim 15 requires the separation distance to be from 4-9mm, while claim 19 requires a lower endpoint of 2mm and claim 20 requires a value of 3mm, which are both below the lower endpoint of 4mm in claim 15. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 19-20, 25-29, 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1).
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 of between 4 millimeters and 9 millimeters (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, and the dimension DD may range from 0.5 to 4mm [0028]. 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 to work within the supplied range of 0.5-4mm for setting the dimension DD, and one would have landed upon the separation distance of 4mm thus making obvious the claimed range).
Regarding claims 19 and 20, Hon makes obvious the aerosol system wherein the separation distance is between 2 millimeters and 6 millimeters, and wherein the separation distance is 3 millimeters (as in the rejection of claim 15 above, the dimension DD between the electrodes may be from 0.5 to 4mm [0028]. 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)).
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),
wherein the first electrode and the second electrode are configured to be spaced apart by a separation distance of between 4 millimeters and 9 millimeters (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, and the dimension DD may range from 0.5 to 4mm [0028]. 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 to work within the supplied range of 0.5-4mm for the dimension DD, and one would have landed upon the separation distance of 4mm thus making obvious the claimed range).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1), as applied to claim 15 above, and further in view of Mironov (US2017/0231277A1).
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. Micronov, 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, Micronov 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), as applied to claim 15 above, and further in view of either Raichman (US2018/0104214A1) or Mironov (US2017/0231277A1).
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. Micronov, 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, Micronov 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), as applied to claim 15 above, and further in view of Bonnely (US2019/0124977A1).
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), as applied to claim 15 above, and further in view of either Reevell (EP3349601A1) or Mironov (US2017/0231277A1).
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),
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. Micronov, 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, Micronov 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 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hon (US2019/0037925A1), in view of either Reevell (EP3349601A1) or Mironov (US2017/0231277A1).
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. Micronov, 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, Micronov 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 Micronov, 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 Micronov, 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 [Micronov, 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).
Conclusion
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/T.F.S./Examiner, Art Unit 1749 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755