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
Claims 16-33 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
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.
Claim 25 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 25, the claim recites the limitation "substantially tessellated" in line 2 and lines 4-5. The Examiner notes that the term “tessellated” is generally accepted to refer to a pattern of shapes arranged with no gaps therebetween. The instant specification (see page 8, lines 12-20) appears to agree with this definition. However, claim 24, upon which claim 25 depends, requires “electrodes being spaced apart by an electrode spacing distance”. It is unclear how the electrodes may simultaneously be spaced apart and have no gaps therebetween.
The Examiner further notes that it is unclear as to the scope of the term “substantially tessellated”, as the term is subjective to reader interpretation. Furthermore, no definition or degree of what constitutes “substantially” is provided in the specification.
For examination purposes, any patterned arrangement of electrodes will be considered to be “substantially tessellated”.
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 16-27, 30-31 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Krietzman (US 20180168237 A1) in view of Iyomasa et al. (WO 2020079812 A1; hereinafter referring to the English translation provided).
Regarding claim 16, Krietzman teaches a heatable aerosol-generating system (vaporizer device 10; [0048]), comprising: an aerosol-forming substrate (material 500; [0053]); a plurality of heaters (heater system 40; [0048]); and an aerosol-generating device comprising a controller (controller 22; [0048]) configured to connect to said each heater segment ([0012]; [0047-0048]), wherein the controller is further configured to supply a voltage to the plurality of heating segments for heating the aerosol-forming substrate ([0048]).
Krietzman does not teach that the plurality of heaters are a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode; wherein said each pair of electrodes forms a capacitor with a portion of the aerosol- forming substrate; wherein the power applied is an alternating voltage such that the system is dielectrically heatable.
Iyomasa, directed to a dielectrically heatable aerosol-generating system (dielectric heating device 1; page 2, ¶ 1), comprising: an aerosol-forming substrate (object 7; page 3); a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode (electrode 3 and electrode 5, electrode 4 and electrode 5 form pairs; Fig. 1A; page 2, ¶ 2); and an aerosol-generating device comprising a signal source (signal source 2 with output terminal a; page 2) configured to connect to said each pair of electrodes, wherein said each pair of electrodes forms a capacitor with a portion of the aerosol-forming substrate (page 3, ¶ 2), and wherein the output supplies an alternating voltage to the plurality of pairs of electrodes for dielectrically heating the aerosol-forming substrate (Fig. 1A; page 2, ¶ 2-4, page 3, ¶ 8).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krietzman by making the heaters of Krietzman dielectric heaters comprising plurality of pairs of electrodes, each pair comprising a first electrode spaced apart from a second electrode to form a capacitor with the aerosol-forming substrate and by configuring the controller to apply an alternating voltage as taught by Iyomasa because both Krietzman and Iyomasa are directed to aerosol-gnereating systems comprising a heaters, Iyomasa teaches that dielectric heaters are known for use in aerosol-generating systems, and this involves substituting one alternative means of heating for another to yield predictable results.
Regarding claim 17, Krietzman teaches that the controller is further configured to selectively control the supply of the alternating voltage to said each pair of electrodes for dielectrically heating the aerosol-forming substrate ([0013], [0021], [0065] teaches separate control of the heaters by the controller).
Regaridng cliam 18, Krietzman teaches that the controller is further configured to selectively supply the alternating voltage to said each pair of electrodes in a sequence ([0046-0048], [0064]).
Regarding claim 19, Krietzman teaches that the controller is further configured to determine a sequence of supply of the alternating voltage to said each pair of electrodes ([0046-0048], [0064]).
Regarding claim 20, Krietzman teaches that the sequence is determined based on at least one of: a temperature of one or more of the plurality of pairs of electrodes, a temperature of a portion of the aerosol-forming substrate, a temperature adjacent to the aerosol-forming substrate and a duration of supply of the alternating voltage to one or more of the plurality of pairs of electrodes ([0016-0018], [0050-0051], [0071]).
Regarding claim 21, Krietzman teaches that the controller is further configured to monitor which of the plurality of pairs of electrodes has received the supply of the alternating voltage for dielectrically heating the aerosol-forming substrate ([0064]), and wherein the controller further comprises a memory (memory 23; [0041], [0047-0048]) configured to store which of the plurality of pairs of electrodes has received the supply of the alternating voltage ([0064]).
Regarding claim 22, Krietzman teaches that the plurality of pairs of electrodes comprises between 2 and 15 pairs of electrodes ([0014], [0021] teaches at least two or more).
Regarding claim 23, Krietzman teaches that the plurality of pairs of electrodes comprises between 5 and 12 pairs of electrodes ([0014], [0021] teaches at least two or more segments, Fig. 1C depicts four segments. The claimed range overlaps with the range taught by the prior art and is thus considered prima facie obvious).
Regarding claim 24, Krietzman teaches that the first electrodes of the plurality of pairs of electrodes form a first array of electrodes, each electrode in the first array of electrodes being spaced apart by an electrode spacing distance ([0048] teaches insulation dividers 35, which would provide this distance), and wherein the second electrodes of the plurality of pairs of electrodes form a second array of electrodes, each electrode in the second array of electrodes being spaced apart by the electrode spacing distance (one having ordinary skill in the art would expect that the second electrodes would also have this spacing feature to appropriately align with the respective first array of electrodes).
Regarding claim 25, Krietzman teaches that the first electrodes of the first array of electrodes are substantially tessellated, and wherein the second electrodes of the second array of electrodes are substantially tessellated (Figs. 4B, 6B, 10B depict heaters being arranged in a pattern).
Regarding claim 26, Iyomasa teaches that the first electrode of said each pair of electrodes is planar, extending substantially in a first plane, and the second electrode of said each pair of electrodes is planar, extending substantially in a second plane (page 2, ¶ 5-6, page 3, ¶ 2).
Regarding claim 27, Iyomasa teaches that the first plane is substantially parallel to the second plane (Figs. 1A, 2A; page 4, ¶ 9).
Regarding claim 30, Krietzman teaches that the aerosol-generating device further comprises the plurality of pairs of electrodes (Fig. 10B; [0048]).
Regarding claim 31, Krietzman teaches that the system further comprises an aerosol-generating article (case 20; [0048]), the aerosol-generating article comprising the aerosol-forming substrate and at least one electrode of the plurality of pairs of electrodes ([0048]).
Regarding claim 33, Krietzman teaches an aerosol-generating article (case 20; [0048]) for a heatable aerosol-generating system (vaporizer device 10; [0048]), the aerosol-generating article comprising: an aerosol-forming substrate (material 500; [0053]); and a plurality of heaters (heater system 40; [0048]).
Krietzman does not teach that the plurality of heaters are a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode; wherein said each pair of electrodes forms a capacitor with a portion of the aerosol- forming substrate such that the system is dielectrically heatable.
Iyomasa, directed to a dielectrically heatable aerosol-generating system (dielectric heating device 1; page 2, ¶ 1), comprising: an aerosol-forming substrate (object 7; page 3); a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode (electrode 3 and electrode 5, electrode 4 and electrode 5 form pairs; Fig. 1A; page 2, ¶ 2); wherein said each pair of electrodes forms a capacitor with a portion of the aerosol-forming substrate (page 3, ¶ 2).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Krietzman by making the heaters of Krietzman dielectric heaters comprising plurality of pairs of electrodes, each pair comprising a first electrode spaced apart from a second electrode to form a capacitor with the aerosol-forming substrate as taught by Iyomasa because both Krietzman and Iyomasa are directed to aerosol-generating systems comprising a heaters, Iyomasa teaches that dielectric heaters are known for use in aerosol-generating systems, and this involves substituting one alternative means of heating for another to yield predictable results.
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Krietzman and Iyomasa as applied to claim 16 above, and further in view of Reevell (US 20170071253 A1).
Regarding claim 28, Krietzman teaches that the heaters (modified to be the electrodes of Iyomasa) may be annular ([0048], [0066]).
Modified Krietzman does not teach that the first electrode of said each pair of electrodes circumscribes the second electrode of the pair of electrodes.
Reevell, directed to an aerosol-generating system, comprising: an aerosol-forming substrate ([0097]); a pair of electrodes (capacitor plates 34A, 34B; [0098]), each pair of electrodes comprising a first electrode spaced apart from a second electrode (Fig. 2A-2B; [0100]); and an aerosol-generating device comprising a controller (controller 40; [0110]) configured to connect to said each pair of electrodes ([0062], [0110]), wherein said each pair of electrodes forms a capacitor with a portion of the aerosol- forming substrate ([0102-0103]), and wherein the controller is further configured to supply an alternating voltage to the pair of electrodes ([0014], [0110]), teaches a pair of electrodes 34A, 34B that form a capacitor with liquid storage portion 38 with the relevant cylindrical structure (Fig. 6A-B; [0103]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify modified Krietzman by making the first electrode of said each pair of electrodes circumscribe the second electrode of the pair of electrodes as taught by Reevell because both modified Krietzman and Reevell are directed to aerosol generating systems comprising electrodes forming capacitors, Reevell teaches that a cylindrical structure may be formed if the first electrode of said each pair of electrodes circumscribes the second electrode of the pair of electrodes, and this involves applying a known technique to a similar device to yield predictable results.
Regarding claim 29, Reevell teaches that the first electrode of said each pair of electrodes is annular, defining an internal passage, and the second electrode of said each pair of electrodes is disposed in the internal passage of the first electrode (Fig. 6A-B; [0103]).
Claims 16 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Armoush et al. (US 20170251718 A1) in view of Iyomasa et al. (WO 2020079812 A1; hereinafter referring to the English translation provided).
Regarding claim 16, Armoush teaches a dielectrically heatable aerosol-generating system (hookah 100; [0029]; [0026] teaches that different electrical heating methods may be used, [0058] teaches that dielectric heating may be used), comprising: an aerosol-forming substrate ([0026]); a plurality of heaters ([0026]); and an aerosol-generating device comprising a controller configured to connect to said each pair of electrodes ([0026], [0057], [0063]), wherein the controller supplies an alternating voltage to the plurality of pairs of electrodes for heating the aerosol-forming substrate ([0057]).
Armoush does not teach a plurality of pairs of electrodes wherein said each pair of electrodes forms a capacitor with a portion of the aerosol-forming substrate.
Iyomasa, directed to a dielectrically heatable aerosol-generating system (dielectric heating device 1; page 2, ¶ 1), comprising: an aerosol-forming substrate (object 7; page 3); a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode (electrode 3 and electrode 5, electrode 4 and electrode 5 form pairs; Fig. 1A; page 2, ¶ 2); and an aerosol-generating device comprising a signal source (signal source 2 with output terminal a; page 2) configured to connect to said each pair of electrodes, wherein said each pair of electrodes forms a capacitor with a portion of the aerosol-forming substrate (page 3, ¶ 2), and wherein the output supplies an alternating voltage to the plurality of pairs of electrodes for dielectrically heating the aerosol-forming substrate (Fig. 1A; page 2, ¶ 2-4, page 3, ¶ 8).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the heaters of Armoush to comprise a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode to form a capacitor with a portion of the aerosol-forming substrate as taught by Iyomasa because both Armoush and Iyomasa are directed to dielectrically heatable aerosol generating systems, Armoush is silent to the precise configuration of a dielectric heater and one with ordinary skill would be motivated to look to prior art for a known and suitable dialectric heater arrangement, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 32, Armoush teaches that the aerosol-generating system is a shisha system (hookah 100; Fig. 1A; [0003], [0029]), with the aerosol-generating device being a shisha device, the shisha device comprising: a liquid cavity (reservoir 118; [0029], [0036]) configured to contain a volume of liquid through which aerosol generated by the shisha device is drawn before inhalation by a user ([0003]), the liquid cavity having a head space outlet (hose connector 110; [0029]), and an article cavity (chamber 205; [0055]) configured to receive the aerosol-forming substrate, the article cavity being in fluid communication with the liquid cavity ([0059]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Rejection 1
Claims 16, 26-29 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 26-29 of copending Application No. 18/547,431. This is a provisional nonstatutory double patenting rejection.
Regarding claim 16, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a dielectrically heatable aerosol-generating system, comprising: an aerosol-forming substrate; a pair of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode; and an aerosol-generating device comprising a controller configured to connect to said each pair of electrodes, wherein said each pair of electrodes forms a capacitor with a portion of the aerosol- forming substrate, and wherein the controller is further configured to supply an alternating voltage to the plurality of pairs of electrodes for dielectrically heating the aerosol-forming substrate.
The conflicting claims do not teach a plurality of pairs of electrodes.
However, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the conflicting claims by duplicating the electrode pair such that there are a plurality of electrode pairs, as one having ordinary skill would recognize that this may allow for more precise heating. Furthermore, the duplication of parts is prima facie obvious when no new or unexpected result is produced. See MPEP § 2144.04 (VI)(B).
The claims further differ in that the conflicting claims include additional limitations directed to the spacing of the electrodes. However, claim 15 still includes all required components of rejected claim 16. Therefore, all elements of rejected claim 16 are present and/or obvious over the conflicting claims.
Regarding claim 26, conflicting claim 26 teaches that the first electrode of said each pair of electrodes is planar, extending substantially in a first plane, and the second electrode of said each pair of electrodes is planar, extending substantially in a second plane.
Regarding claim 27, conflicting claim 27 teaches that the first plane is substantially parallel to the second plane.
Regarding claim 28, conflicting claim 28 teaches that the first electrode of said each pair of electrodes circumscribes the second electrode of the pair of electrodes.
Regarding claim 29, conflicting claim 29 teaches that the first electrode of said each pair of electrodes is annular, defining an internal passage, and wherein the second electrode of said each pair of electrodes is disposed in the internal passage of the first electrode.
Regarding claim 32, conflicting claim 30 teaches that the aerosol-generating system is a shisha system, with the aerosol-generating device being a shisha device, the shisha device comprising: a liquid cavity configured to contain a volume of liquid through which aerosol generated by the shisha device is drawn before inhalation by a user, the liquid cavity having a head space outlet, and an article cavity configured to receive the aerosol-forming substrate, the article cavity being in fluid communication with the liquid cavity.
Rejection 2
Claims 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 12389940.
Regarding claim 16, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a dielectrically heatable aerosol-generating system, comprising: an aerosol-forming substrate; a plurality of pairs of electrodes, each pair of electrodes comprising a first electrode spaced apart from a second electrode; and an aerosol-generating device comprising a controller configured to connect to said each pair of electrodes, wherein said each pair of electrodes forms a capacitor with a portion of the aerosol- forming substrate (this would inherently be expected by one having ordinary skill in the art in order for the conductivity sensor to operate), and wherein the controller is further configured to supply an alternating voltage to the plurality of pairs of electrodes for dielectrically heating the aerosol-forming substrate.
The conflicting claims differ in that conflicting claim 1 does not explicitly teach that the electrodes dielectrically heat the substrate. However, claim 6 teaches this limitation.
The claims further differ in that the conflicting claims include additional limitations directed to the structure of the system. However, claims 1 and 6 still include all required components of rejected claim 16. Therefore, all elements of rejected claim 16 are present and/or obvious over the conflicting claims.
Conclusion
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755