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 .
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)(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.
Claim(s) 16, 20, 24, 26-31 and 33 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by LI et al. (US 2023/0136305).
With respect to claim 16, LI et al. discloses an aerosol generating device (Abstract; Title) comprising a cavity (e.g., chamber) (Paragraph [0043]; Figure 2) configured to accommodate a smokable material, A, of a consumable (Paragraphs [0042]-[0044]; Figure 2); a heater, 30, sized to be inserted into the smokable substance within the chamber and heat the smokable material from the inside of the smokable material (Abstract; Paragraphs [0005]-[0021]). LI et al. further discloses a gap, 50, formed between the heater and the smokable material when the smokable material is inserted into the chamber (Paragraphs [0046], [0051], [0056]; figures 2-8).
The smokable substance of a consumable is a material worked upon by the apparatus. The courts have generally held that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
Thus, the recitations with respect to the smokable material do not impart patentability to the claims.
Moreover, the courts have generally held that Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I.
Also, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114.
The “gap” is formed directly as a result of the features of the smokable material (which do not impart patentability to the claims) and the act of inserting said smokable material (which is a manner of operating the device and functional relationships between the heater and smokable material) are features that are not required to meet the structural relationships of the claimed inhaler.
The structure of the heater of LI et al. includes a feature that forms a gap with the inserted smokable material. Thus, the heater of LI et al. is capable of performing the same function using a smokable material having the associated claimed features of the smokable material, simply by providing such a smokable material.
With respect to claim 20, LI et al. discloses a wall, 40, with the smokable material between the wall and the heater (Paragraphs [0042], [0043]; Figure 2) and there is a gap between the wall and the heater, with the wall in contact with the smokable material.
It is noted that the stopper is part of the smokable material, which is a material worked upon by the apparatus and does not impart patentability to the claims. As such, the wall being in contact with the stopper is not a structural feature that is necessary to meet the structural limitations of the claims. By providing such a smokable material, the wall is capable of being in contact with a stopper.
With respect to claim 24, LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
With respect to claim 26, the first and second portions are coaxial (Paragraph [0048]; Figures 2, 6, 7 and 8).
With respect to claim 27, LI et al. discloses that the outer diameter of the first portion is larger than the second portion (Paragraph [0048]; Figures 2, 6, 7 and 8). Thus, when looking in the insertion direction, the second portion would necessarily be located within the outer circumferential face of the first portion.
With respect to claim 28, LI et al. discloses an aerosol generating device (Abstract; Title) comprising a cavity (e.g., chamber) (Paragraph [0043]; Figure 2) configured to accommodate a smokable material, A, of a consumable (Paragraphs [0042]-[0044]; Figure 2); a heater, 30, sized to be inserted into the smokable substance within the chamber and heat the smokable material from the inside of the smokable material (Abstract; Paragraphs [0005]-[0021]). LI et al. further discloses a gap, 50, formed between the heater and the smokable material when the smokable material is inserted into the chamber (Paragraphs [0046], [0051], [0056]; figures 2-8). LI et al. discloses a wall, 40, disposed around the heater and a gap is formed between the heater and the wall (Paragraphs [0042], [0043]; Figure 2).
The smokable substance of a consumable is a material worked upon by the apparatus. The courts have generally held that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
Thus, the recitations with respect to the smokable material do not impart patentability to the claims.
Moreover, the courts have generally held that Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I.
Also, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114.
The “gap” is formed directly as a result of the features of the smokable material (which do not impart patentability to the claims) and the act of inserting said smokable material (which is a manner of operating the device and functional relationships between the heater and smokable material) are features that are not required to meet the structural relationships of the claimed inhaler.
The structure of the heater of LI et al. includes a feature that forms a gap with the inserted smokable material. Thus, the heater of LI et al. is capable of performing the same function using a smokable material having the associated claimed features of the smokable material, simply by providing such a smokable material.
With respect to claim 29, LI et al. LI et al. discloses an aerosol generating device (Abstract; Title) comprising a cavity (e.g., chamber) (Paragraph [0043]; Figure 2) configured to accommodate a smokable material, A, of a consumable (Paragraphs [0042]-[0044]; Figure 2); a heater, 30, sized to be inserted into the smokable substance within the chamber and heat the smokable material from the inside of the smokable material (Abstract; Paragraphs [0005]-[0021]). LI et al. further discloses a gap, 50, formed between the heater and the smokable material when the smokable material is inserted into the chamber (Paragraphs [0046], [0051], [0056]; figures 2-8).
The smokable substance of a consumable is a material worked upon by the apparatus. The courts have generally held that "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
Thus, the recitations with respect to the smokable material do not impart patentability to the claims.
Moreover, the courts have generally held that Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). MPEP 2114, I.
Also, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114.
The “gap” is formed directly as a result of the features of the smokable material (which do not impart patentability to the claims) and the act of inserting said smokable material (which is a manner of operating the device and functional relationships between the heater and smokable material) are features that are not required to meet the structural relationships of the claimed inhaler.
The structure of the heater of LI et al. includes a feature that forms a gap with the inserted smokable material. Thus, the heater of LI et al. is capable of performing the same function using a smokable material having the associated claimed features of the smokable material, simply by providing such a smokable material.
LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
With respect to claim 30, LI et al. discloses that the heater is a pin-type heater (Paragraph [0044]).
With respect to claim 31, the acetate filter is a feature of the smokable material, which a material worked upon by the apparatus and does not impart patentability to the claims (See rejection of claim 16).
With respect to claim 33, the tobacco material is a feature of the smokable material, which a material worked upon by the apparatus and does not impart patentability to the claims (See rejection of claim 16).
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) 17, 18, 21 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al. (US 2023/0136305) in view of ROJO-CALDERON et al. (US 2018/0279681).
With respect to claim 17, LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
LI et al. does not explicitly disclose that the first portion is a heat-producing portion while the second portion is a non-heat-producing portion.
ROJO-CALDERON et al. discloses an aerosol generating article (Abstract). The heating portion includes susceptor sections that are separately heatable so that individual portions of the aerosol material can be heated (Paragraphs [0034]-[0040]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to configure the heater of LI et al. to have selectively heatable sections (e.g., the second and the first portions of LI et al.), as taught by ROJO-CALDERON et al. so the smokable material can be selectively heated.
By having the two portion being selectively heatable, the second portion can be non-heat-producing while the first portion produces heat.
With respect to claim 18, LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
With respect to claims 21 and 25, LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
LI et al. does not explicitly disclose that the first portion is a heat-producing portion while the second portion is a non-heat-producing portion.
ROJO-CALDERON et al. discloses an aerosol generating article (Abstract). The heating portion includes susceptor sections that are separately heatable so that individual portions of the aerosol material can be heated (Paragraphs [0034]-[0040]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to configure the heater of LI et al. to have selectively heatable sections (e.g., the second and the first portions of LI et al.), as taught by ROJO-CALDERON et al. so the smokable material can be selectively heated.
By having the two portion being selectively heatable, the second portion can be non-heat-producing while the first portion produces heat.
LI et al. discloses that the heater includes a first portion, 31, and a second portion, 32, that are each located in an insertion direction of the heater, the second portion having a cross-section area less than the cross sectional area of the first portion. The first portion is located closer to a tip of the heater than is the second portion, and the gap is located at the second portion (Paragraphs [0046]-[0048]; Figures 2 and 3).
LI et al. discloses a wall, 40, with the smokable material between the wall and the heater (Paragraphs [0042], [0043]; Figure 2) and there is a gap between the wall and the heater, with the wall in contact with the smokable material.
It is noted that the stopper is part of the smokable material, which is a material worked upon by the apparatus and does not impart patentability to the claims. As such, the wall being in contact with the stopper is not a structural feature that is necessary to meet the structural limitations of the claims. By providing such a smokable material, the wall is capable of being in contact with a stopper.
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Claim(s) 19 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al. (US 2023/0136305) in view of SCHNEIDER et al. (US 2015/0163859).
With respect to claim 19, LI et al. does not explicitly disclose the claimed resistor or cover.
SCHNEIDER et al. discloses a heating assembly for an aerosol generating system (Abstract; Title). The heater includes an electrically resistive heating element in the shape of a blade (Abstract; Paragraph [0027]). The heater also comprises a cover, 94, to protect the heater (Paragraph [0089]; Figure 5). Such a heater is configured so that different portions of the heater have different resistances, and the portion of the heater in contact with the mount can have a lower temperature during use (Paragraphs [0014]-[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 heater of SCHNEIDER et al. for that of LI et al. so that the temperature of the heater can be lower at the mount, and so that the conductive track can be protected.
With respect to claim 20, LI et al. does not explicitly disclose the insulation.
SCHNEIDER et al. discloses a heating assembly for an aerosol generating system (Abstract; Title). The heater includes an electrically resistive heating element in the shape of a blade (Abstract; Paragraph [0027]). The heater also comprises a cover, 94, to protect the heater (Paragraph [0089]; Figure 5). Such a heater is configured so that different portions of the heater have different resistances, and the portion of the heater in contact with the mount can have a lower temperature during use (Paragraphs [0014]-[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 heater of SCHNEIDER et al. for that of LI et al. so that the temperature of the heater can be lower at the mount, and so that the conductive track can be protected.
The heater substrate, 90, is formed of an insulating material and is on one side of the heating trac (Figure 5 and 6 (Paragraph [0021]). Thus, the substrate is between the heating track and the wall.
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Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al. (US 2023/0136305) in view of KUCZAJ (US 2015/0208727)
With respect to claim 22, LI et al. does not explicitly disclose that the wall is tapered. KUCZAJ discloses an aerosol-generating device (Abstract) comprising a cavity, 22, (Paragraphs [0038] and [0065]) that is shaped to receive a smoking article. The shape of the cavity includes a taper that decrease from the base of the heater towards the tip of the heater (Figure 2). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to taper the wall of LI et al. in the manner shown by KUCZAJ so that the smoking article isn’t acted against along its entire length by the wall. Thereby reducing friction between the wall and smoking article and making it easier to insert and remove.
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Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al. (US 2023/0136305) in view of SCHNEIDER et al. (US 2015/0163859) as applied to claims 19 and 23 above, and further in view of CHENG et al. (US 2019/0166654).
With respect to claim 32, modified LI et al. discloses that the heater substrate is made of ceramic (SCHNEIDER et al. ; Paragraph [0021]) but not explicitly disclose that the cover is ceramic.
CHENG et al. discloses that the heating element is coated with ceramic glazes (Paragraph [0011], [0031]) to protect the circuit. 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 ceramic glaze as the covering of modified LI et al., as taught by CHENG et al. so as to protect the heater circuit.
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Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al. (US 2023/0136305) in view of MALGAT et al. (US 2016/0309782)
With respect to claim 34¸ LI et al. discloses the inhaler of claim 16 (See rejection of claim 16) but does not explicitly disclose the claimed consumable. MALGAT et al. discloses an aerosol generating article (Abstract) for use with an aerosol generating device. The article is consumable (Paragraph [0116]) and comprises a rigid hollow tube, 30, in the end thereof nearest the base of the heater (Paragraph [0109]; Figure 2). The tube protects the aerosol forming substrate from flames (Paragraphs [0111]-[0113]). 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 consumable of MALGAT et al. with the device of LI et al., so that the aerosol generating substance can be protected from flame.
Given that the end of the consumable contacts the base of the chamber of LI (Fig. 2), the tube represents the claimed stopper element.
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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