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
Claims 1 and 2 are amended. Claims 15-17 are withdrawn. Claims 1-14 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered and are persuasive. The objection of 6/12/2026 is withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 6/12/2026 are overcome.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “transfer partial heat of the aerosol generation product when the aerosol generation product is inserted into the aerosol generation device,” which is considered to be a statement regarding the intended use of the claimed heat transfer element. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required a heat transfer element that could transfer heat from the aerosol generation product.
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 1-14 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.
Regarding claim 1, the term “high thermal conductivity material” is a relative term which renders the claim indefinite. The term “high thermal conductivity material” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case the specification provides literal support for the claim term and some examples of materials that have a high thermal conductivity [0037], but that is insufficient to provide one of ordinary skill in the art with sufficient guidance to determine whether any given material falls within the bounds of the claim. Claims 2-14 are indefinite by dependence.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sakurai (US 12,471,621).
Regarding claim 1, Sakurai discloses an electric heating smoking system (abstract) having a main body (figure 1, reference numeral 12), which is considered to meet the claim limitation of a housing, with an insertion part (figure 1, reference numeral 13), which is considered to meet the claim limitation of an inlet, that accommodates a rod forming a non-combustible smoking article (column 2, lines 42-45, figure 1, reference numeral 14), which is considered to meet the claim limitation of an aerosol generation product. A heater heats the rod (figure 1, reference numeral 18) and is surrounded by a heat transfer part that transfers heat from the heater to the rod (column 3, lines 11-25, figure 1, reference numeral 21), which is considered to meet the claim limitation of a heat transfer element. A portion of heat transfer element is arranged between the insertion part and the heater, and a gap is present between the heat transfer element and the heater (figure 1). It is evident that the heat transfer unit is in thermal contact with the rod since the rod would otherwise not receive heat from the heater. The heat transfer material is copper (column 3, lines 4-10), which is considered to meet the claim limitation of a high thermal conductivity material since applicant’s specification indicates that copper is a high thermal conductivity material [0037].
Regarding claim 11, Sakurai discloses that the heat transfer unit is made from copper (column 3, lines 4-10).
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 2-3 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (US 12,471,621) in view of Monticone (US 12,635,730).
Regarding claim 2, Sakurai discloses all the claim limitations as set forth above. Sakurai additionally discloses that the rod has an insertion part that is formed by recessing the housing into a cylindrical shape so that the rod is inserted into both the insertion portion and the heat transfer element (column 2, lines 65-67, column 3, lines 1-3, figure 1, reference numeral 13). The insertion part is provided with the heat transfer element (column 2, lines 65-67, column 3, lines 1-3), and is therefore considered to be a part of the heat transfer element. The upper end of the insertion part is considered to meet the claim limitation of a proximal end, and the lower end of the insertion part is considered to meet the claim limitation of a distal end. Sakurai does not explicitly disclose the end of the heat transfer element being flush with the outer housing of the device.
Monticone teaches an aerosol generating device (abstract) having a thermoelectrical cell (figure 1a, reference numeral 13) that transfers heat from an outer heat receiving surface (figure 1b, reference numeral 13a) to an inner heat releasing surface (figure 1, reference numeral 13b) so that the heat reaches an inner heating chamber to that aerosol forming substrate is released (column 9, lines 20-35, figure 1b, reference numeral 12). The ends of the thermoelectrical cell are flush with the end of the outer housing at the entrance to the heating chamber, and different shapes are possible (column 9, lines 1-8).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the ends of the heat transfer element of Sakurai reach the end of the housing of Sakurai. One would have been motivated to do so since Monticone teaches that different shapes for heat transferring components are possible in aerosol generating devices, including lengths that reach an outer housing.
Regarding claim 3, Sakurai discloses that the insertion part is recessed into a cylindrical shape (column 2, lines 46-56), which is considered to meet the claim limitation of a tube.
Regarding claim 9, the downwardly extending portion of the insertion portion is considered to meet the claim limitation of an extension.
Regarding claim 10, Sakurai discloses that the rod has an insertion part that is formed by recessing the housing into a cylindrical shape so that the rod is inserted into both the insertion portion and the heat transfer element (column 2, lines 65-67, column 3, lines 1-3), which is considered to meet the claim limitation of radially extending.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (US 12,471,621) in view of Monticone (US 12,635,730) as applied to claim 3 above, and further in view of An (US 12,550,940).
Regarding claim 4, modified Sakurai teaches all the claim limitations as set forth above. Modified Sakurai does not explicitly teach the insertion portion being provided with a bump.
An teaches an aerosol generating device having a cavity for receiving an aerosol generating article having a rib extending along the outer circumferential surface of the cavity (abstract) located at the entrance to the cavity so that the article can be guided as it is inserted (column 8, lines 66-67, column 9, lines 1-11, figure 7, reference numeral 400).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the insertion portion of modified Sakurai with the rib of An. One would have been motivated to do so since An teaches providing a rib so that an article can be guided as it is inserted into the cavity.
Regarding claim 5, An teaches that a plurality of ribs arranged on the inner circumferential surface of the cavity surround the aerosol generating article (column 9, lines 29-39, figure 8A).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (US 12,471,621) in view of Monticone (US 12,635,730) as applied to claim 3 above, and further in view of Thorsen (US 11,039,646).
Regarding claim 6, modified Sakurai teaches all the claim limitations as set forth above. Modified Sakurai does not explicitly teach a space between the insertion portion and the heater.
Thorsen teaches an aerosol generating apparatus (abstract) having an opening though which an article is inserted (column 3, lines 24-28, figure 1, reference numeral 20) that is surrounded by a collar (column 4, lines 45-49, figure 2, reference numeral 33) that connects a chamber (column 4, lines 50-58, figure 4, reference numeral 35). The collar connects to the tube containing the article using clips that engage with the inside of a vacuum tube (column 5, lines 24-38, figure 5a, reference numeral 35h). Thorsen additionally teaches that the chamber provides cooling to the aerosol to prevent volatilized components from being inhaled (column 8, lines 5-11) without passing through the filer (column 7, lines 58-67, column 8, lines 1-4).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the insertion portion of modified Sakurai with the chamber of Thorsen. One would have been motivated to do so since Thorsen teaches a chamber that provides cooling to aerosol to prevent volatilized components from being inhaled.
Regarding claims 7 and 8, modified Sakurai teaches all the claim limitations as set forth above. Modified Sakurai does not explicitly teach the claimed distances.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to space the claimed components at the claimed distances. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (US 12,471,621) in view of Jochnowitz (US 11,384,743).
Regarding claim 12, Sakurai discloses all the claim limitations as set forth above. Sakurai does not explicitly disclose the heat transfer unit comprising a phase change material.
Jochnowitz teaches an aerosol generating device that comprises a solid phase change material located about a perimeter of a cavity that is heated above a melting point of the phase change material (column 6, lines 63-67, column 7, lines 1-2). Jochnowitz additionally teaches that the phase change material stores thermal energy until it reaches its melting point (column 19, lines 7-23) so that the heat can be released in the device cavity over an extended time period (column 20, lines 20-36).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the phase change material of Jochnowitz as the heat transfer unit of Sakurai. One would have been motivated to do so since Jochnowitz teaches a material that allows heat to be released over an extended period.
Regarding claim 14, Jochnowitz teaches that the phase change material is a paraffin (column 7, lines 57-62).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (US 12,471,621) in view of Jochnowitz (US 11,384,743) as applied to claim 12 above, and further in view of Chen (CN 111887484, machine translation relied upon).
Regarding claim 13, modified Sakurai teaches all the claim limitations as set forth above. Sakurai additionally discloses that the heat transfer has a cylindrical shape (column 3, lines 4-10), which is considered to meet the claim limitation of tubular. Modified Sakurai does not explicitly disclose a shell.
Chen teaches an aerosol cooling element that has a core of phase change material surrounded by a shell that seals the phase change material to avoid phase change material deformation [0064].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the phase change material of modified Sakurai in a shell. One would have been motivated to do so since Chen teaches that sealing phase change material in a shell prevents the phase change material from physically deforming.
Response to Arguments
Regarding the rejections under 35 USC 102(a)(2) and 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Sakurai does not disclose a heat transfer unit that is not in contact with the heater and (b) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Sakurai discloses that a space exists between heat transfer element and the heater (figure 1). Furthermore, although applicant does refer to a section of the disclosure of Sakurai in which Sakurai states that the heat transfer element and heater are in contact, in other areas Sakurai discloses that the heat transfer element is around the heater but not necessarily in contact (column 2, lines 46-56). Sakurai therefore does not disclose an arrangement in which the heat transfer element and heater must necessarily be in contact.
Regarding (b), all examined claims, including the examined independent claim, are rejected as set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
