DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
This office action is in response to Amendments to the claims filed 05/11/2026.
Claims 16 and 18-34 are pending and are subject to this Office Action.
Claims 16, 18 and 25 are amended.
Claim 17 is cancelled.
Claim 34 is newly added.
Response to Amendment
The Examiner withdraws the 112 rejection of claim 25 as being indefinite due to amendments to the claims filed 05/11/2026.
The Examiner withdraws the nonstatutory double patenting rejections over copending Application No. 18/547,431 and US Patent No. 12389940 due to amendments to the claims filed 05/11/2026. The conflicting claims do not recite oscillation circuits or selected heating portions as newly required by the instant claims and are therefore withdrawn.
Response to Arguments
Applicant’s arguments, see pages 8-10, filed 05/11/2026, with respect to the 103 rejection of claim 16 have been fully considered and are persuasive. Claim 16 has been amended to require the subject matter of previously presented claim 17 and to require an oscillation circuit and limiting heating to a selected portion of the aerosol-forming substrate. The previous rejection of record did not account for an oscillation circuit or for heating a selected portion. Therefore, the rejection has been withdrawn. However, upon further consideration, a 103 rejection is made in view of a modified interpretation of Krietzman and Iyomasa.
The Examiner notes that Iyomasa teaches an oscillation circuit (signal source 2; page 2, ¶ 3) that is referenced in the new rejection below.
On pages 8-9 the Applicant argues that the resistive heating of Krietzman would not be interchangeable with the dielectric heating of Iyomasa, as these involve two different heating operations involving different heating generation and control.
The Examiner disagrees.
Krietzman teaches a plurality of heaters (heater system 40; [0048]). Krietzman further teaches that the heaters are driven by electrical power, and that resistance type heaters are an example of suitable heaters ([0066]). However, Krietzman does not require that the device use resistance type heaters.
Iyomasa teaches a plurality of electrical-powered heaters comprising 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).
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.
The Examiner emphasizes that Krietzman merely provides an example of heater types, but does not limit the device to using resistance type heaters. Thus, it would not be unreasonable for one having ordinary skill in the art to recognize that alternative types of electric heaters, such as the heaters taught by Iyomasa, may be substituted.
Furthermore, it is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements, rather on whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole. The art as a whole teaches the use of dielectric heating in an aerosol generating system and thus sufficiently supports a determination of obviousness.
On pages 9-10 the applicant argues that the prior art does not teach heating control of selected portions of the substrate, as newly recited by the claim.
The Examiner disagrees.
Krietzman teaches that the controller connects to the heating elements to supply a voltage ([0012]; [0047-0048]) and is configured to selectively control the supply of the voltage to each pair of electrodes ([0013], [0021], [0065] teach separate control of the heaters by the controller). This function would be expected to be maintained upon modification to include the oscillation circuit and dielectric heaters of Iyomasa.
Below is a modified rejection based on amendments to the claims.
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, 18-27, 30-31 and 33-34 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]), wherein the controller is further configured to connect to each pair of electrodes ([0012]; [0047-0048]) and to supply a voltage to the plurality of heating segments for heating the aerosol-forming substrate ([0048]), wherein the controller is further configured to selectively control the supply of the voltage to said each pair of electrodes for heating a selected portion of the aerosol-forming substrate without heating the entire aerosol-forming substrate ([0013], [0021], [0047], [0065]).
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 an oscillation circuit (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 oscillation circuit 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 via an oscillation circuit 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.
Regarding claim 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.
Regarding claim 34, Krietzman teaches that for each pair of heaters the controller is further configured to operate a switch to control the supply of the voltage to the heaters ([0014-0015], [0019], [0071]).
It would be expected that upon modification with the dielectric heaters of Iyomasa, for each pair of electrodes the controller would also be configured to operate a switch to control the supply of the alternating voltage to the pairs of electrodes.
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]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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