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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
●heating article in claims 16, 18, 19, 25, 26, 28, and 29
●aerosol-generating elements in claims 16, 28, and 29
●heat-conducting element in claim 21
●first heating article in claim 27
●second heating article in claim 27
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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(s) 18-19, 25-26, and 29-30 is/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 18 is considered to be indefinite in that the antecedent of “at least one heating article” (Ln2) is not clearly defined. Does this refer to the at least one heating article in claim 16 or to a new heating article? Also, the same applies to “at least one heating article” (L3) in claim 19 -- thus, the antecedent of “the at least one heating article” in claim 19 (Lns4-5) is not clearly defined. Also, see claim 25 at line 2; claim 26 at line 2; and claim 29 at line 3.
Claim 29 is considered to be indefinite in that the antecedent of “at least one aerosol-generating element” (Ln4) is not clearly defined. Does this refer to the at least one aerosol-generating element in claim 28 or to a new aerosol-generating element? Thus, the antecedent of “the at least one heating article” in claim 30 (Lns1-2) is not clearly defined.
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.
Claim(s) 16-22 and 24-27 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kieslich (US 2018/0092399 A1).
Claim 16: Kieslich teaches an aerosol-generating system, comprising:
●an aerosol-generating device comprising:
●mouthpiece 400 (a closure) (para31)
●heating chamber (comprising at least liquid container 130 [first heating
chamber section] and reaction element 210 [second heating chamber section]) (paras50-51)
●at least one heating article (comprising at least calcium chloride) disposed in
the heating chamber (para51)
●consumable chamber (comprising at least the portion of the aerosol-generating
device housing depot 300) in fluid communication with mouthpiece 400, the consumable chamber comprising an opening (end of the device in Fig8 at far right) and the closure movable between an open position and a closed position (para32 para50 para55 paras60-61)
●a plurality of the aerosol-generating elements disposed in the consumable
chamber (para32 para50 para55 paras60-61).
It is noted that the limitation of “in which a plurality of aerosol-generating elements may be inserted into or removed from the consumable chamber through the opening” and “in which the plurality of aerosol-generating elements are retained in the consumable chamber” refer to a method of use of the claimed aerosol-generating system and are not considered to provide a structural limitation to the claimed structure. Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
With respect to claimed the claimed heating article and aerosol-generating elements, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches structures for these pieces to perform the claimed functions. Kieslich teaches structures for these pieces to perform the same claimed functions. Kieslich is thus considered to meet these limitations of the claim.
Claim 17: the heating chamber (in view of the face-side end of reaction element 210) and the consumable chamber are isolated from each other such that the heating chamber is not in fluid communication with the consumable chamber (para51 para61).
Claim 18: the heating chamber includes an opening (at seal 212) (para51 Fig8). It is noted that the limitation of “such that at least one heating article may be inserted into and removed from the heating chamber” refers to a method of use of the claimed aerosol-generating system and is not considered to provide a structural limitation to the claimed structure.
With respect to claimed heating article, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating article to perform the claimed function. Kieslich teaches a structure for the heating article to perform the same claimed function. Kieslich is thus considered to meet this limitation of the claim.
Claim 19: the closure of the consumable chamber also closes the opening of the heating chamber (in that mouthpiece 400 closes off the structures there-beside from the outside of the aerosol-generating system). It is noted that the limitation of “such that when the closure is in the open position at least one heating article may be inserted into or removed from the heating chamber, and when the closure is in the closed position, the at least one heating article is retained in the heating chamber” refers to a method of use of the claimed aerosol-generating system and is not considered to provide a structural limitation to the claimed structure.
With respect to claimed heating article, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating article to perform the claimed function. Kieslich teaches a structure for the heating article to perform the same claimed function. Kieslich is thus considered to meet this limitation of the claim.
Claim 20: the closure comprises mouthpiece 400, as discussed above.
Claim 21: the aerosol-generating system further comprises heat-conducting element 232 disposed between the heating chamber and the consumable chamber (para58 para62).
With respect to claimed heating-conducting element, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating-conducting element to perform the claimed function. Kieslich teaches a structure for the heating-conducting element to perform the same claimed function. Kieslich is thus considered to meet this limitation of the claim.
Claim 22: the aerosol-generating system further comprises external housing 100, wherein external housing 100 is necessarily heat insulating in that it is held by a user where the user is not burned by an exothermic reaction within the aerosol-generating system (para32 paras47-49).
Claim 24: the heating chamber is formed from a resiliently deformable material such as aluminum (para50).
Claim 25: the heating chamber is configured to receive at least one heating article, which is configured to generate heat by an exothermic chemical and physical change (paras47-49).
With respect to claimed heating article, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating article to perform the claimed function. Kieslich teaches a structure for the heating article to perform the same claimed function. Kieslich is thus considered to meet this limitation of the claim.
Claim 26: the heating chamber is configured to receive at least one heating article, which generates heat without electrical power in that such generates heat by an exothermic chemical and physical change (paras47-49).
With respect to claimed heating article, because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The instant specification teaches a structure for the heating article to perform the claimed function. Kieslich teaches a structure for the heating article to perform the same claimed function. Kieslich is thus considered to meet this limitation of the claim.
Claim 27: the heating chamber is divided into first heating chamber section 130 and second heating chamber section 210 by chamber barrier 212 (para51 Fig8) such that a first heating article (comprising at least a liquid and pin 133) disposed in the first heating chamber section is kept apart from a second heating article (comprising at least calcium chloride) disposed in the second heating chamber section (paras5-6 paras50-51 para61).
Prior Art of Record
The following prior art is made of record and not relied upon is considered pertinent to applicant’s invention: Potter teaches exothermic chemical reactions to produce heat for a non-burning tobacco device. Selby teaches a smoking device having a plurality of tobacco plugs in succession and teaches the use of exothermic reactions. Jin teaches beads of liquid tobacco. Rucker teaches a vaporizer having a lid which opens for insertion of a sachet. Von teaches an inhalation device having a door which opens for insertion of a capsule.
Allowable Subject Matter
Claim 23 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.
Claim 28 is allowed.
Claims 29-30 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance: claim 23, the closest prior art of record to Kieslich, alone or in combination with the other prior art of record, does not teach or fairly suggest that the heating chamber comprises a longitudinal opening in which the consumable chamber is disposed in that Kieslich specifically recites that the heating chamber (in view of the face-side end of reaction element 210) and the consumable chamber are isolated from each other (para51 para61).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
The following is an examiner’s statement of reasons for allowance: claim 28, the closest prior art of record to Kieslich teaches an aerosol-generating system, comprising: ●an aerosol-generating device comprising: ●mouthpiece 400 (a closure) (para31), ●heating chamber (comprising at least liquid container 130 [first heating chamber section] and reaction element 210 [second heating chamber section]) (paras50-51), ●at least one heating article (comprising at least calcium chloride) disposed in the heating chamber (para51), ●consumable chamber (comprising at least the portion of the aerosol-generating device housing depot 300) in fluid communication with mouthpiece 400, the consumable chamber comprising an opening (end of the device in Fig8 at far right) and the closure movable between an open position and a closed position (para32 para50 para55 paras60-61), and ●a plurality of the aerosol-generating elements disposed in the consumable chamber (para32 para50 para55 paras60-61). It is noted that the limitation of “in which the at least one plurality of aerosol-generating element may be inserted into or removed from the consumable chamber through the opening” and “in which the at least one aerosol-generating elements is retained in the consumable chamber” refer to a method of use of the claimed aerosol-generating system and are not considered to provide a structural limitation to the claimed structure. However, Kieslich, alone or in combination with the other prior art of record, does not teach or fairly suggest that the heating chamber is disposed within a longitudinal opening in the consumable chamber in that Kieslich specifically recites that the heating chamber (in view of the face-side end of reaction element 210) and the consumable chamber are isolated from each other (para51 para61).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
The following is an examiner’s statement of reasons for allowance: claim 29, the closest prior art of record to Kieslich teaches a kit of parts, comprising: an aerosol generating device according to claim 28 (Kieslich teaches an aerosol-generating system, comprising: ●an aerosol-generating device comprising: ●mouthpiece 400 (a closure) (para31), ●heating chamber (comprising at least liquid container 130 [first heating chamber section] and reaction element 210 [second heating chamber section]) (paras50-51), ●at least one heating article (comprising at least calcium chloride) disposed in the heating chamber (para51), ●consumable chamber (comprising at least the portion of the aerosol-generating device housing depot 300) in fluid communication with mouthpiece 400, the consumable chamber comprising an opening (end of the device in Fig8 at far right) and the closure movable between an open position and a closed position (para32 para50 para55 paras60-61), and ●a plurality of the aerosol-generating elements disposed in the consumable chamber (para32 para50 para55 paras60-61). It is noted that the limitation of “in which the at least one plurality of aerosol-generating element may be inserted into or removed from the consumable chamber through the opening” and “in which the at least one aerosol-generating elements is retained in the consumable chamber” refer to a method of use of the claimed aerosol-generating system and are not considered to provide a structural limitation to the claimed structure), the at least one heating article sized to be received in the heating chamber; and the at least one aerosol-generating element sized to be received in the consumable chamber. However, Kieslich, alone or in combination with the other prior art of record, does not teach or fairly suggest that the heating chamber is disposed within a longitudinal opening in the consumable chamber in that Kieslich specifically recites that the heating chamber (in view of the face-side end of reaction element 210) and the consumable chamber are isolated from each other (para51 para61).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 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, Phil 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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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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