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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 8/5/2026 is acknowledged.
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.
Claim 3 is 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 3 recites “a plurality of holes”. This is indefinite because claim 1 recites “at least one hole”. Thus, claim 3 does not include one hole, like claim 1 does.
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.
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Claim(s) 1-3, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over BATISTA et al. (US 2020/0375253) in view of EL-SAYED et al. (US 2009/0326614)
With respect to claim 1, BATISTA et al. discloses a heating structure (See, plasmonic heating element for an aerosol generating device (Title; Abstract)). The structure comprises a substrate, 258 and/or 260 (Paragraph [0163]) and a coating layer, 262, comprising metal nanoparticles that are configured to generate heat by surface plasmon resonance (Paragraphs [0163] and [0164]; Figure 8). The device further comprises a plurality of pores, 264, (e.g., holes) through the metal nanoparticle layer and the substrate (Figure 8; Paragraph [0164]).
The claim language of “configured to form at least one hole in the substrate” represents product (e.g., a heating structure having holes in the substrate) by process (e.g., forming said holes using the metal heating layer) claim language.
The courts have generally held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP 2113. I.
In the instant case, because the final product of BATISTA et al. comprises at least one hole through the substrate, the manner of making said holes does not patentably differentiate the claimed invention from that of BATISTA et al..
BATISTA et al. does not explicitly disclose that the metal nanoparticle heating layer is a prism. EL-SAYED et al. discloses metal nanoparticles (Abstract) used for surface plasmon resonance (Paragraphs [0004], [0050]) to generate heat upon excitation with visible light (Paragraphs [0014], [0064], [0065] and [0066]). The geometric shape of the nanoparticles can be changed to tune the excitation spectra wavelength for resonance (Paragraphs [0004], [0011], [0031], [0037], [0047], [0059] and [0060]). These geometric shapes include nanoparticle prisms (Paragraphs [0031] and [0037]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use metal nanoparticle prisms as the metal nanoparticles of BATISTA et al., as taught by EL-SAYED et al. so that the heating layer can be tuned for specific spectrum of light.
With respect to claim 2, BATISTA et al. discloses that a plurality of pores extend through the substrate and metal layer (Paragraphs [0078], [0164]; Figure 8). While BATISTA et al. doesn’t explicitly disclose that the holes are surrounded by the metal layer and the substrate, the holes are formed by laser drilling through a planar substrate (see aforementioned paragraphs and Figure 7). Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date to drill the holes smaller than the planar surface (e.g., within the boundaries of the plane) so that they are entirely surrounded, thus allowing for a plurality of holes to be formed (Figure 8).
With respect to claim 3, as seen in figure 8 of BATISTA et al., the metal prism forms a plurality of holes, 264, separated from each other.
With respect to claim 6, BATISTA et al. shows that the metal prism comprises a first base surface facing the substrate, a second base surfaces opposite the first and a plurality of side surfaces between these surfaces to define the holes (See annotated figure 8, below).
[AltContent: textbox (Side surfaces defining said at least one hole)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Second base surface)][AltContent: arrow][AltContent: textbox (First base surface)][AltContent: arrow]
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With respect to claim 8, BATISTA et al. discloses that the metal layer comprises nanoparticles (Abstract) configured collective resonant oscillate free electrons (e.g., resonate ) (Paragraph [0009]) with light having a wavelength between 380 and 700 nanometers (Paragraphs [0021] and [0022]).
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Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over BATISTA et al. (US 2020/0375253) in view of EL-SAYED et al. (US 2009/0326614) as applied to claims 1-3, 6 and 8 above, and further in view of ZINOVIK (US 2022/0295889)
With respect to claims 4 and 5, modified BATISTA et al. does not explicitly disclose the shape of the holes. ZINOVIK discloses an aerosol generating system comprising a heating element (Abstract). The heater comprises a capillary material (Paragraph [0020]) having pores. These pore are sized smaller than materials that are intended to be filtered out by the heater. These materials range from diameters of 10 microns down to 1 nanometers (Paragraph [0023]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the pores of modified BATISTA et al. with a diameter of between 0.5 and 0.1 microns (e.g., 500 to 100 nanometers), as taught by ZINOVIK, so that particles having larger sizes can be filtered by the substrate.
Given that the pores have a diameter they implicitly include circular cross-sections.
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Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over BATISTA et al. (US 2020/0375253) in view of EL-SAYED et al. (US 2009/0326614) as applied to claims 1-3, 6 and 8 above, and further in view of LEE (US 2010/0051815).
With respect to claim 7, modified BATISTA et al. does not explicitly disclose the distance between the two base surfaces.
LEE discloses a heat radiating pattern (Abstract) using a nanostructured metal that heats via surface plasmon resonance (Paragraphs [0020]-[0021]). The thickness of the metal layer is between 1 and 200 nanometers, and also between 3 and 20 nanometers (Paragraph [0015] and [0016]) and can be patterned by standard photolithographic processes (Paragraph [0016]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the metal layer of modified BATISTA et al. with a thickness of between 3 and 20 nanometers, as taught by LEE so that the layer can be formed with standard photolithographic processes.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
BATISTA et al. discloses that the substrate is thermally conductive so as to transfer the heat to the aerosol generating article (Paragraph [0163]).
LAUENSTEIN (US 2021/0235760) discloses that thermally insulating materials typically have a thermal conductivity of less than 100 W/mK and preferably less than 40 W/mK (Paragraph [0051]). Thus, BATISTA et al. teaches away from having the claimed thermal conductivity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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