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 1-5 in the reply filed on 6/22/2026 is acknowledged. Claims 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/22/2026.
Drawings
The drawings are objected to because figures 5A, 5B and 5C are in the form of photographs when the subject matter can be practically illustrated in a drawing. See 37 CFR 1.84(b). 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it is fewer than 50 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 2 and 4 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 claims 2 and 4, it is unclear whether the groups are limited to the listed compositions since the groups are required to include the listed compositions by may also include additional components. The claims are therefore indefinite. For the purposes of this Office action, the claims will be interpreted as if they excluded compositions that are not listed.
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.
Claims 1 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bozzacco (US 2,806,509).
Regarding claim 1, Bozzacco discloses a laminate having good heat insulating characteristics (column 1, lines 41-53) made up of a filler comprised of small thin walled hollow beads coated with a heat tackifiable resin that is formed into a gel (column 1, lines 63-69). The resin serves as a binder (column 2, lines 33-44). The recitation of aerosol generating device is considered to be a claimed intended use in the preamble that is not given patentable weight. The Courts have held that, if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP § 2111.02.
Regarding claim 2, Bozzacco discloses that the beads are made from perlite (column 1, lines 70-72, column 2, lines 1-24).
Regarding claim 3, Bozzacco discloses that the beads range in size between 250 and 350 US standard mesh (column 2, lines 44-69), which falls within the claimed range when converted to microns.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Bozzacco (US 2,806,509) in view of Kamioka (US 5,384,344).
Regarding claim 4, Bozzacco discloses all the claim limitations as set forth above. Bozzacco additionally discloses that the beads have a binding resin (column 2, lines 33-44) that is a thermosetting resin (column 2, lines 70-72, column 3, lines 1-7). Bozzacco does not explicitly disclose the thermosetting resin binder being polyimide.
Kamioka teaches that polyimide resin is a suitable thermosetting resin binder (column 2, lines 40-50).
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 polyimide resin of Kamioka as the binder resin of Bozzacco. One would have been motivated to do so since Kamioka teaches that polyimide is a thermosetting resin binder. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bozzacco (US 2,806,509).
Regarding claim 5, Bozzacco discloses all the claim limitations as set forth above. Bozzacco additionally teaches the beads are placed within a powdered metal (figure 4, reference numeral 11) and held in place by outer confining skins to form a panel (column 5, lines 3-28, figure 4, reference numeral 13). Bozzacco does not explicitly disclose the relative amount of space occupied by the beads compared to the overall panel.
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 beads occupy the claimed volume of the panel. A change in size or proportion 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.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/267,569 (hereafter referred to as Seo) in view of Bozzacco (US 2,806,509).
Regarding claim 1, Seo claims an aerosol generating device (claim 1) having an insulation portion (claim 3) including a plurality of hollow beads (claim 6). Seo does not explicitly claim a binder holding the beads together.
Bozzacco teaches a laminate having good heat insulating characteristics (column 1, lines 41-53) made up of a filler comprised of small thin walled hollow beads coated with a heat tackifiable resin that is formed into a gel (column 1, lines 63-69). The resin serves as a binder (column 2, lines 33-44) and is a thermosetting resin (column 2, lines 70-72, column 3, lines 1-7).
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 beads of Seo with the binder of Bozzacco. One would have been motivated to do so since Bozzacco teaches a binder that holds hollow beads together. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Regarding claim 2, Seo claims that the ceramic material is perlite (claim 7).
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 10-14 of copending Application No. 18/267,569 (hereafter referred to as Seo) in view of Bozzacco (US 2,806,509).
Regarding claim 1, Seo claims an aerosol generating device (claim 8) having an insulation portion (claim 10) including a plurality of hollow beads (claim 13). Seo does not explicitly claim a binder holding the beads together.
Bozzacco teaches a laminate having good heat insulating characteristics (column 1, lines 41-53) made up of a filler comprised of small thin walled hollow beads coated with a heat tackifiable resin that is formed into a gel (column 1, lines 63-69). The resin serves as a binder (column 2, lines 33-44) and is a thermosetting resin (column 2, lines 70-72, column 3, lines 1-7).
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 beads of Seo with the binder of Bozzacco. One would have been motivated to do so since Bozzacco teaches a binder that holds hollow beads together. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Regarding claim 2, Seo claims that the ceramic material is perlite (claim 14).
These are provisional nonstatutory double patenting rejections.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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