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 .
Status of the Claims
Claims 1-18 are pending.
Claims 12-15 have been withdrawn.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-11 and 16-18, drawn to a heating element for a consumable article.
Group II, claim(s) 12-13, drawn to a consumable kit.
Group III, claim(s) 14-15, drawn to a method for producing an aerosol from a consumable kit.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a heating element comprising heat absorbing/releasing material configured to absorb heat during a pre-heating phase carried out when the element body is received in the energy supplying cavity of the external energy supplied device; and release the absorbed heat to the storage portion to the vaporizable material during a vaping phase carried out upon a triggering event. This technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Silvestrini (US 20160021932).
During a telephone conversation with Mitesh Mehta on July 1, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11 and 16-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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(s) 1-5, 8-11, 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvestrini (US 20160021932).
Regarding claims 1, 2 and 17, Silvestrini teaches a heating element for a consumable article ([0006]),
the consumable article (2) comprising a storage portion storing a vaporizable material ([0111] and [0115]),
the heating element comprising an element body (“cavity”) configured to be engaged in an engaged position at least partially around the storage portion of the consumable article and be disengaged with the consumable article ([0006]);
the element body further configured to be received at least partially in an energy supplying cavity of an external energy supplied device ([0079]-[0080]);
the element body further comprising a heater ([0081]) configured to generate heat upon inductive interaction with the external energy supplied device ([0083]); and,
the element body comprising a heat absorbing/releasing material (“first solid-liquid phase-change material” and “second solid-liquid phase-change material”), wherein the heat absorbing/releasing material is a phase change material ("PCM"), specifically inorganic salt hydrates ([0041] and [0062]).
Silvestrini teaches that the heat absorbing/releasing material is configured to: absorb heat during a pre-heating phase carried out when the element body is engaged with the consumable article and received in the engaged position with the consumable article in the energy supplying cavity of the external energy supplied device; and while the element body is in the engaged position with the consumable article, release the absorbed heat to the storage portion to the vaporizable material during a vaping phase carried out upon a triggering event ([0186]).
Silvestrini does not expressly teach that (1) the element body is removably received in the energy supplying cavity of the external energy supplied device, or (2) the heater comprises at least one susceptor.
With respect to (1), the courts have held that absent new or unexpected results, the fact that a part of a claimed structure is manually removable is not sufficient by itself to patentably distinguish over an otherwise old device. See MPEP 2144.04 V. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the element body removable from the external energy supplied device with a reasonable expectation of success and predictable results.
With respect to (2), Silvestrini teaches that the heating elements are inductive heating elements, thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included at least one susceptor in the heater with a reasonable expectation of success and predictable results, specifically the susceptor is heated by the electromagnetic energy generated by the inductor, which thereby enables the susceptor to serve as a heating element.
Regarding claim 3, Silvestrini teaches that the heater is configured to: during the pre-heating phase, generate heat and transfer the heat to the heat absorbing/releasing material ([0184]); and/or during the vaping phase, transfer heat from the heat absorbing/releasing material to the vaporizable material ([0186]).
Regarding claim 4, Silvestrini teaches that the heater (inside housing 12, [0178]-[0182]) is configured to be arranged at least partially around the storage portion of the consumable article, when the element body is in the engaged position with the consumable article (Fig. 1).
Regarding claim 5, Silvestrini teaches that the heater, specifically the "hollow conductive tube" ([0184]), is configured to be interposed between the storage portion of the consumable article (2) and the heat absorbing/releasing material (16 and 18), when the element body is in the engaged position with the consumable article (Fig. 1).
Regarding claim 8, Silvestrini teaches that the element body further comprises an insulator arranged at least partially around the heat absorbing/releasing material ([0093]).
Regarding claim 9, Silvestrini teaches that the element body forms a ring, specifically the "hollow conductive tube" ([0184]), able to be engaged with the consumable article by sliding along an article axis (Fig. 1).
Regarding claim 10, Silvestrini teaches further comprising anchoring means, specifically piercing member (20), configured to fix the element body on the consumable article, when the element body is engaged with the consumable article ([0183]).
Regarding claim 11, Silvestrini teaches that the triggering event comprises expiring a predetermined time delay ([0186]), wherein "predetermined time delay" reads on any amount of time.
Regarding claim 16, Silvestrini teaches that the phase change material (PCM) is configured to melt during the pre-heating phase ("The thermal energy is absorbed by the first solid-liquid phase-change material 16 causing the temperature of the first solid-liquid phase-change material 16 to increase… the first solid-liquid phase-change material 16 stores thermal energy as it changes phase from a solid to a liquid," [0184]) and solidify during the vaping phase ("The stored thermal energy released by the first solid-liquid phase-change material 16 as it solidifies heats the first compartment 6 and the second compartment 8 of the aerosol-generating article 2 received in the cavity of the aerosol-generating device 4 over an extended time period," [0186]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvestrini as applied to claim 1 above, and further in view of Hatrick (WO 2014048745).
Regarding claim 6, Silvestrini does not expressly teach that the heater comprises a plurality of susceptors mixed with or embedded within the heat absorbing/releasing material.
Hatrick teaches an apparatus configured to volatilize components of smokable material for inhalation (abstract). Hatrick teaches that the heater comprises a base material (7) which is heat retentive and acts to release heat energy received from the heating material (5) over a relatively long period and thereby maintain the smokable material (2) at a volatilizing temperature for the duration of that period (page 5, lines 10-14). Hatrick teaches that the heating material (5) is a susceptor (“the heating material 5 is heated by the effects of electromagnetic induction,” page 4, lines 30-31). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the heater of Silvestrini incorporate susceptor material in the heat absorbing/releasing material, as suggested by Hatrick which teaches a heater that incorporates susceptor material in a base material, in order to have the base material (the heat absorbing/releasing material in Silvestrini) retain the heat from the susceptors and release the heat energy received from the susceptors to the vaporizable material over a relatively long period (Hatrick, page 5, lines 10-14).
Claim(s) 7 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silvestrini as applied to claim 1 above, and further in view of Bessant (WO 2019030363).
Regarding claims 7 and 18, Silvestrini teaches that the element body further comprises a protruding member (20) configured to penetrate the storage portion of the consumable article, when the element body is in the engaged position with the consumable article ([0183]).
Silvestrini does not expressly teach that the protruding member comprises a heater comprising a susceptor.
Bessant teaches a heating element for a consumable article (14) (abstract), wherein the heating element further comprises a protruding member (24) that is a susceptor and is configured to penetrate the storage portion of the consumable article, when the element body is in the engaged position with the consumable article (abstract, page 5, lines 18-19 and Fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the protruding member of Silvestrini comprise a heater comprising a susceptor, as suggested by Bessant, with a reasonable expectation of success and predictable results, specifically heating the consumable article internally.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755
/ERIC YAARY/Examiner, Art Unit 1755
Prosecution Insights