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 (Claims 18-25) in the reply filed on 7/13/2026 is acknowledged.
Claims 26, 28-30, 32-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/13/2026.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/18/2023, 4/16/2025, 8/15/2025, 2/26/2026 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: Recess “271” is described in reference to Fig. 8 of pg. 26 lines 14-16 of the originally filed specification, but the Figure is missing the reference sign of what is considered the recess. 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 disclosure is objected to because of the following informalities: Pg. 26 line 7 should read “The neck 270
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.
Appropriate correction is required.
Claim Objections
Claims 21-22 are objected to because of the following informalities:
Claim 21 appears to have inadvertent spaces around the “,” between “18” and “wherein”.
Claim 22 appears to have an additional inadvertent space between “of” and “claim”. Applicant is asked to review to ensure the spacing is correct.
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 20-21 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 20 recites the limitation "the first portion" and “the second portion”. There is insufficient antecedent basis for this limitation in the claim. The claim will be examined as if the claim earlier recites “the heating element comprises a first portion and a second portion”.
Claim 21 recites the limitation “the first portion”. There is insufficient antecedent basis for this limitation in the claim. The claim will be examined as if the claim earlier recites “the heating element comprises a first portion”.
Claim Interpretation
It is noted that, as claimed, the “neck” in independent claim 18 does not require any specific structural limitations defining the neck. The instant specification pgs. 25-26 details that “In embodiments, the neck 270 has a maximum dimension in a direction perpendicular to a longitudinal axial of the heating element 260 less than a maximum dimension of the first portion 261”. As such, the neck having a width smaller than that of the rest of the heating element is considered to be a specific limitation in certain embodiments, such that this structure is not explicitly required in the independent claim. As neck is not given a special definition, the “neck” will thus be treated under the broadest reasonable interpretation without importing limitations from the specification, such that the neck merely need be a portion of the heating element.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 18-22, 25 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being clearly anticipated by Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1).
Regarding claim 18, Li teaches an aerosol generating device for generating an aerosol (aerosol generation apparatus generates an aerosol [Fig. 2, abstract, 0003-0004]) from aerosol generating material (an article comprising smokable material “A” such as a cigarette is inserted into the heating cavity of the apparatus [Fig. 2, 0033-0035]), comprising:
a receptacle defining a heating zone configured to receive at least a portion of an article comprising aerosol-generating material (an article comprising smokable material “A” such as a cigarette is inserted into the heating cavity of the apparatus [Fig. 2, 0033-0035], wherein the surrounding cavity of the apparatus is considered to be the receptacle which defines the heating zone. This receptacle is defined partially by the tubular bracket 40 and the base portions 33/34 [see Figs. 2-3]),
a heating element protruding into the heating zone (heating element “30” clearly protrudes into the heating zone, as in Fig. 2),
wherein the heating element comprises a neck (the neck may be considered to be the avoidance portion “32”, as shown in Fig. 3. The avoidance portion “32” results in a gap “50” being formed along the length of the heating element [Fig. 2]. Although not required as noted in the claim interpretation section above, the avoidance portion “32” has a size which is less than that of the size of the heating portion “31” of the heating element [0020]).
Regarding claim 19, Li teaches the device wherein the heating element comprises a first portion and a second portion with the second portion extending between the receptacle and the first portion and the second portion forming the neck (the first portion may be considered the heating portion “31” which includes the tapered end at the proximal end thereof, and the second portion is considered the avoidance portion “32” [Figs. 2-3]. As in Fig. 2, the avoidance portion forms the gap “50” which would be formed extending from the receptacle [Fig. 2], and the avoidance portion “32” is considered the neck portion with it having a smaller diameter compared to the first portion).
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Regarding claim 20, Li teaches the device wherein the first portion forms a step at a juncture with the second portion (as in Fig. 3, there is clearly formed a step between “31” and “32” where the diameter increases in size suddenly. See annotated Fig. 3 above for the location of the step).
Regarding claim 21, Li teaches the device wherein the first portion comprises a taper (as in Figs. 2-3, the portions “31” which is considered the first portion is considered to include the most proximal end of the heating element, wherein this clearly features a taper where the diameter decreases gradually).
Regarding claim 22, Li teaches the device wherein the receptacle comprises a base and the neck defines a recess at the base (the base may be considered to be “33”/”34” which are the base portions [0050], where these are formed distal to the avoidance portion “32” and define the distal end of the receptacle of which the article is inserted [see Figs. 2-3]. There is formed a gap “50” as a result of the decreased diameter of the portion “32”, wherein this is considered to be the recess that is formed at the base of the receptacle. This recess is formed in the same manner as the instant Fig. 8. And further, see annotated Fig. 3 above for labeling of the recess that is formed at the base).
Regarding claim 25, Li teaches the device wherein the neck is free from heating material that is heatable by penetration with a varying magnetic field (in this embodiment of Figs. 2-3, the neck may be considered to be the portions of the heating element “30” which include the avoidance portion “32” and the base elements “33”/”34” which extend along the distal direction from the main heating portion “31”. These portions “33”/”34” are made of materials that do not get heating by induction such as plastics or ceramics [0056]).
Claims 18-22 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being clearly anticipated by An (WO2021107536, citing to English Equivalent US2022/0361576A1).
Regarding claim 18, An teaches an aerosol generating device for generating an aerosol (aerosol generation apparatus generates an aerosol [Fig. 2, Fig. 6, abstract, 0001]) from aerosol generating material (an aerosol generating article containing aerosol generating material [0040], wherein such articles are utilized with the heater assemblies of Figs 6+), comprising:
a receptacle defining a heating zone configured to receive at least a portion of an article comprising aerosol-generating material (the aerosol generating device which has an article inserted into it is shown in Fig. 6, wherein the article is as shown in Figs. 2 and 5. The article/cigarette contains aerosol generating material [0040]. The heating zone as in Fig. 6 may be considered to be the inner walls of the cavity of which the article is inserted into),
a heating element protruding into the heating zone (as in Figs. 6-7, the heating body “130” may be considered the heating element, wherein this clearly protrudes upwards into the heating zone),
wherein the heating element comprises a neck (as in Figs. 7a-7c, the heating body “130” may comprise a second portion “130b” which has a reduced diameter compared to a first portion “130a”. This portion “130b” may be considered the neck).
Regarding claim 19, An teaches the device wherein the heating element comprises a first portion and a second portion with the second portion extending between the receptacle and the first portion and the second portion forming the neck (as in Fig. 7a, the first portion is considered “130a” and the second portion “130b”. The second portion as in Figs. 7b-7c clearly extends between the receptacle and the first portion, and “130b” is considered the neck portion with it having a smaller diameter than the first portion).
Regarding claim 20, An teaches the device wherein the first portion forms a step at a juncture with the second portion (as in Fig. 7a, there is clearly formed a step between “130b” and “130a” where the diameter increases in size suddenly).
Regarding claim 21, An teaches the device wherein the first portion comprises a taper (as in Figs. 7a-7c, the first portion “130a” comprises a taper at the proximal end of the heating element, wherein the diameter decreases gradually).
Regarding claim 22, An teaches the device wherein the receptacle comprises a base and the neck defines a recess at the base (the base of the receptacle may be considered the bottom structure “150” which is located around the second portion “130b” in the finished device [see Figs. 6, 7b-7c]. The "neck" of the heater 130b defines/forms the recess of the base of which it is inserted through. The claim does not define any dimensionality of the "recess" compared to the heater otherwise, such that this structure of the second portion “130b” which is located around the recess of the base “150” would reasonably be considered to define this).
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 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1), as applied to claim 22 above, and further in view of Blandino (US2017/0055580A1) or Lee (KR20190137507A).
Regarding claims 23-24, Li is silent as to how external air is to communicate with the heating zone to supply air to the heating zone. However, it is well understood in the art to supply an air outlet in the base/recess of the heating element so as to provide air to the heating zone. Blandino, for example, provides an apparatus “200” with a heating element “130” which protrudes into the heating zone which is heatable via a magnetic field generator [0095, Figs. 4a-4b], wherein an article “500” comprising smokable material is inserted into the apparatus such that the heating element punctures the article [Fig. 3, 0128]. The apparatus includes a plurality of air inlets 141/142/143 [see Figs. 4a-4b, Fig. 1], wherein there are holes in the base and around the distal end of the heating element such that the heating zone “113” is in fluid communication with outside air [0091].
One of ordinary skill in the art would have found it obvious to modify the apparatus of Li to have a plurality of air inlets as suggested by Blandino. As Li is silent as to the placement of its air inlet/outlets into the device such that air may be supplied to the heating zone, one would have found it obvious to utilize the placements as suggested by Blandino so as to ensure that air is drawn into the heating zone to ensure that aerosol may be properly generated [Blandino, 0091]. And as the air outlet would be formed in the distal end of the heating element and around the base as suggested by Blandino, this would clearly be formedin the base/recess of that of Li.
In the alternate, Lee teaches an aerosol generating device which has a protruding heater element which has an article inserted into the element of the device [Fig. 1]. The heater element protrudes from a base of the heating chamber/receptacle [Fig. 1, Fig. 5]. The heater element may have a support “520” surrounding a distal portion of the heater element, in the same manner as the base of the instant application. Lee teaches that there may be provided a plurality of air passages “530” which air may pass through, such that when the cigarette is used, air is introduced from the outside and may reach the support “520” and pass through the air passages “530” to thus reach the aerosol generating material inside the cigarette/article which is inserted into the device [pg. 9 of machine translation]. The air passages may be evenly distributed along the support “520” and may cover an area of up to 50% of the surface area [pgs. 9-10 of machine translation].
One of ordinary skill in the art would have found it obvious to modify the apparatus of Li to have a plurality of air passages as suggested by Lee. As Li is silent as to the placement of its air passages into the device such that air may be supplied to the heating zone, one would have found it obvious to utilize the air passages of Lee so as to supply air to the heating chamber. And in utilizing the locations of Lee, the air passages would prevent the surrounding structures from overheating from the heater element [pgs. 9-10 of machine translation]. And as the air outlets would be located throughout the base portions of the heater element and would run through this, the air passages would necessarily be present in the base and would communicated/contact the recess as defined previously.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1), as applied to claim 18 above, and further in view of Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1).
In the alternate regarding claim 25, Li states that its avoidance portion “32” which may be considered the neck portion is heated less than the heating portion “31” so as to prevent overheating of smokable material in this section of the device [0046]. Because Li explicitly states that a lower heating of the avoidance portion “32” would be preferable, it would be obvious for the person of ordinary skill in the art to utilize materials which have reduced heating from magnetic fields so as to accomplish the effects of the invention. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07. In other words, in order to prevent the effects of scorching [0046], one would have found it obvious to utilize materials which would not be heatable so as to prevent such negative effects in the apparatus of Li.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over An (WO2021107536, citing to English Equivalent US2022/0361576A1), as applied to claim 22 above, and further in view of Blandino (US2017/0055580A1).
Regarding claims 23-24, An does not explicitly show the air outlet being provided in the recess/base to supply air to the heating zone. However, it is well understood in the art to supply an air outlet in the base/recess of the heating element so as to provide air to the heating zone. Blandino, for example, provides an apparatus “200” with a heating element “130” which protrudes into the heating zone which is heatable via a magnetic field generator [0095, Figs. 4a-4b], wherein an article “500” comprising smokable material is inserted into the apparatus such that the heating element punctures the article [Fig. 3, 0128]. The apparatus includes a plurality of air inlets 141/142/143 [see Figs. 4a-4b, Fig. 1], wherein there are holes in the base and around the distal end of the heating element such that the heating zone “113” is in fluid communication with outside air [0091].
One of ordinary skill in the art would have found it obvious to modify the apparatus of An to have a plurality of air inlets as suggested by Blandino. As An is silent as to the placement of its air inlet/outlets into the device such that air may be supplied to the heating zone, one would have found it obvious to utilize the placements as suggested by Blandino so as to ensure that air is drawn into the heating zone to ensure that aerosol may be properly generated [Blandino, 0091]. And as the air outlet would be formed in the distal end of the heating element and around the base as suggested by Blandino, this would clearly be formed in the base/recess of that of An.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over An (WO2021107536, citing to English Equivalent US2022/0361576A1), as applied to claim 18 above, and further in view of Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1) or Li (WO2021204286A1, citing to English Equivalent US2023/0136305A1).
Regarding claim 25, An’s second portion of the heater element “130b” is located outside of the range of the coil “170” and outside of contacting the inserted article containing aerosol generating material [see Fig. 9]. An states that the fixing portion “150” which is located outside of the heating chamber is made of a plastic material having elasticity [0097]. As An’s portion “130b” is thus outside of the heater chamber and not providing heating to the article, it would be obvious for the person of ordinary skill in the art to utilize materials which have reduced heating from magnetic fields so as to accomplish the effects of the invention. Case law holds that the selection of a known material based on suitability for its intended use support prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045)". See MPEP 2144.07.
Alternately, Li provides a similar aerosol generating device which includes an article that is inserted into a heater element to provide inductive heating [Figs. 2-3]. Li has a main portion of the heating element “31”, and it is connected to a base “33” and “34” which are located outside of the coils of the heating chamber [Fig. 2, 0050-0053]. The base portions are preferably formed from a material such as ceramic or polymer (art recognized materials which are not heatable by magnetic fields) [0056]. One of ordinary skill in the art would have found it obvious to modify the second portion of An to be of a material such as ceramic/polymer as suggested by Li. One would have been motivated so as to prevent the heating effects outside of the heater chamber to prevent thermal damage to the rest of the assembly [Li, 0056], and this would be highly pertinent to the structure of An’s second portion because it is similarly located outside of the heating chamber and would reasonably be expected to have the same advantageous effects thereof.
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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