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 1-14 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-13) in the reply
filed on 09/01/2026 is acknowledged.
Claim 14 is withdrawn as being directed to a non-elected invention.
Specification
The disclosure is objected to because of the following informalities:
Reference character “4343” should be “43” in paragraphs [43], [50], [52] and [53]).
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.
Claim 3 is 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 3 is indefinite for reciting “the aerosol generating device of claim 2, further comprising a plurality of stoppers protruding from the inside of the pipe” because claims 1 and 2 already define a stopper and it is unclear if the plurality of stoppers are in addition to the originally claimed stopper or if they replace the original stopper. For purposes of examination the “a plurality of stoppers” is being interpreted as the stopper further comprising a plurality of stoppers.
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) 1, 5, and 8-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kim et al. (WO-2020101213-A1, hereinafter referring to the English Translation previously provided).
Kim, directed to an aerosol generating device, discloses the aerosol generating device comprising:
a cartridge for holding a liquid material (i.e., container) ([0018]);
liquid delivery means such as a wick for delivering liquid from the liquid storage unit ([0050]);
a heating element arranged in structure wound around the liquid delivery means (wick) and configured to heat the wick ([0051]); and
protrusions 71p (i.e., stopper) that are within an inside of the cigarette hole 71 (i.e., pipe) that protrude from an inside of the pipe and narrow an inner diameter of the pipe (Figure 8; [0091]).
In regards to claim 5, Kim discloses the wick is spaced apart from an inner surface of the pipe in a direction intersecting the longitudinal direction of the pipe (Figure 9).
In regards to claim 8, Kim discloses the stopper is a plurality of stoppers 71p protruding from the inside of the pipe ([0106]-[0107]) and are disposed symmetrically with respect to the central axis of the pipe (Figure 8).
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In regards to claim 9, Kim discloses a plurality of stoppers protruding from the inside of the cylindrically shaped pipe (Figure 8; [0106]-[0107]), and are sequentially arranged in a circumferential direction of the pipe (Figure 8).
In regards to claim 10, Kim discloses the plurality of stoppers are arranged at equal intervals in the circumferential direction of the pipe (Figure 8).
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.
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO-2020101213-A1, hereinafter referring to the English Translation provided) as applied to claim 5 above.
In regards to claim 6, Kim discloses the wick is spaced apart from an inner surface of the pipe by a distance in a direction perpendicular to the longitudinal direction of the pipe. Refer to annotated Figure 9 provided below. However, Kim is silent regarding this distance and therefore does not explicitly disclose a distance ranging from 4 to 6 mm.
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Kim discloses the wick is spaced apart from a central axis of the pipe in a direction perpendicular to the longitudinal direction of the pipe by a chamber 50p to partition a space where the aerosol is generated to discharge the aerosol to the cigarette side ([0082]) and that the chamber 50p creates inhalation pressure so that the primary aerosol generated from the liquid material of the cartridge can be delivered to the user ([0089]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the distance between the wick and the central axis of the pipe in a direction perpendicular to the longitudinal direction of the pipe since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed distance is critical and has unexpected results. In the present invention, one would have been motivated to optimize the distance between the central axis and the wick motivated by the desire to create a chamber such that the pressure formed in the chamber is adequate to deliver aerosol to the user ([0089]).
In regards to claim 7, Kim discloses the heater comprises a wire that is wound around at least a portion of an outer surface of the wick ([0051]) and is spaced apart from an inner surface of the pipe in the direction intersecting the longitudinal direction of the pipe .
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yilmaz (US-20200383379-A1), and further in view of Kim et al. (WO-2020101213-A1, hereinafter referring to the English Translation provided).
In regards to claim 1, Yilmaz, directed to an aerosol generating device, disclose the aerosol generating device comprising:
a cartridge 304 (i.e., container) including a channel (i.e., hollow pipe) ([0043]-[0047]) which is shaped to define a receiving portion (i.e., insertion space) ([0054]) and a porous wall 308a (i.e., outer wall) surrounding the pipe (Figures 3-4; [0047]-[0048]),
the pipe and the outer wall shaped to define a liquid container 308 (i.e., storage space) ([0040];[0047]);
a wick 307 that extends laterally across the pipe and at least a portion disposed in the storage space 308 (Figure 3; [0076]);
a heater ([0007]-[0009]); and
a supporting element 311 (i.e., stopper) protruding from an inside of the pipe and narrowing an inner diameter of the pipe relative to other portions of the inside of the pipe (Figures 1-4; [0076]).
Yilmaz does not explicitly disclose a heater disposed around a portion of the wick and being configured to heat the wick, and instead teaches it is known in the art to have this heating configuration, but that it is not utilized in the current disclosure of Yilmaz . However, since Yilmaz acknowledges a heater wrapped around the wick is known in the art and further teaches the wick can comprise a metal mesh ([0049]), it would be obvious to one of ordinary skill in the art that Yilmaz makes obvious a heater disposed around a portion of the wick to heat the wick and is therefore considered prima facie obvious.
Additionally, Kim, directed to a directed to an aerosol generating device, discloses the aerosol generating device comprising liquid delivery means such as a wick for delivering liquid from the liquid storage unit ([0050]) and a heating element arranged in structure wound around the liquid delivery means (wick) and configured to heat the wick ([0051]).
Kim further discloses the heating element for heating a liquid composition can include a metal heating wire, a metal heating plant, a ceramic heater, etc. but is not limited thereto ([0051]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yilmaz by making the heating element comprise a wire wrapped around the wick, as taught by Kim, because both are directed to aerosol generating devices, Kim teaches it is known in the art to use different types of heating elements and that a wire disposed around a portion of the wick heats a liquid composition to generate an aerosol ([0051]), and this merely involves applying a known technique of applying a wire to a wick of a similar device to yield predictable results.
In regards to claim 2, Yilmaz discloses the pipe is shaped to define an outlet 134/234/343/434 (i.e., opening) at a first end of the pipe which communicates with the outside of the pipe and the insertion space ([0039]-[0040]; [0054]).
Yilmaz further discloses the stopper comprises a support surface facing the opening 434 and extending in a direction perpendicular to a longitudinal direction of the pipe of the container and the stopper 411 disposed adjacent to the wick 407 ([0076]). Refer to annotated Figure 4 provided by the Examiner below.
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In regards to claim 3, Yilmaz discloses at least two stoppers 111/211/311/411 (i.e., plurality of stoppers), narrowing the inner diameter of the pipe and wherein at least in one embodiment the support surface of the plurality of stoppers collectively define one support plane (Figures 1-4). Refer to Figure 4 annotated by the Examiner provided above.
In regards to claim 4, Yilmaz discloses the stopper may shelter an outer portion of the wick 107 from the heated air flow, hence leaving only a portion 107a ([0050]), but is silent regarding the distance between the support plane and an outer surface of the wick. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the distance between the support plane and an outer surface of the wick since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed distance is critical and has unexpected results. In the present invention, one would have been motivated to optimize the distance between an outer surface of the wick and the support plane motivated by the desire to modify the amount of wick exposed from heated air flow by the stopper.
In regards to claim 5, Yilmaz discloses the wick is spaced apart from an inner surface of the pipe in a direction intersecting the longitudinal direction of the pipe (Figures 1-4).
In regards to claim 7, Modified Yilmaz discloses the wire wound around at least a portion of the outer surface of the wick (Kim [0051]) and is spaced apart from the inner surface of the pipe in a direction intersecting the longitudinal direction of the pipe (Yilmaz Figures 1-4).
Claim(s) 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yilmaz (US-20200383379-A1), in view of Kim et al. (WO-2020101213-A1, hereinafter referring to the English Translation provided) as applied to claim 1 above, and further in view of Voerman et al. (US-20210378305-A1).
In regards to claim 11, Yilmaz discloses the stopper extending along a circumference of the inside of the pipe (Figures 1-4), but does not explicitly disclose the stopper defines a ring shape.
However, it would be a mere change in shape to make the stopper of Yilmaz a ring shape, because changes in shape are merely a design choice and a ring shaped stopper would have been an obvious design choice to one of ordinary skill in the art absent persuasive absent evidence that the particular configuration of the claimed container was significant. See MPEP 144.04 IV. B.
Alternatively, Voerman directed to an electronic cigarette comprising a wick (abstract), discloses the electronic cigarette comprising a replaceable cartridge ([0006]; 0105]).
Voerman further discloses a seal 39 in the form of a collar (i.e., ring shaped stopper) that surrounds the base of the wick 21 and provides a connection between the wick and the main body and supports the wick ([0143]).
Voerman further discloses the stopper extending along the end of the wick portion is beneficial because it inhibits bending of the wick portion which could lead to damage of the wick ([0124]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Yilmaz by making the stopper extend along a circumference of the inside of the pipe to define a ring shape stopper, as taught by Voerman, because both all are directed to aerosol generating devices, Voerman teaches the ring shaped stopper supports the wick and prevents bending/damage of the wick ([0124];[0143]), and this merely involves applying a known technique of using a known shape of a similar stopper of a similar device to yield predictable results.
In regards to claim 12, Yilmaz discloses the pipe is shaped to define an outlet 134/234/343/434 (i.e., opening) at a first end of the pipe which communicates with the outside of the pipe and the insertion space ([0039]-[0040]; [0054]).
Modified Yilmaz further discloses the stopper is a ring-shaped stopper (Voerman [0143]) and comprises a support surface facing the opening and extending in the direction perpendicular to the longitudinal direction of the pipe and is disposed adjacent of the pipe (Yilmaz annotated Figure 4 provided above).
In regards to claim 13, Yilmaz discloses the element 124/224/324/424 (i.e., stick) inserted into the insertion space can comprise a tobacco-containing material (i.e., medium) and can be wrapped by a wrapping material ([0066];[0084]).
The Examiner notes that the claim is directed to a manner of operating a device and therefore the prior art is only required to show the structure is equivalent and capable of supporting a stick if inserted. Since Yilmaz discloses a stopper beneath the stick, Yilmaz teaches a stopper capable of supporting a stick when inserted (Figure 3).
Modified Yilmaz further discloses the ring shaped stopper supports both the cartridge and the wick (Voerman [0124]). Therefore, the prior art makes obvious the devices capabilities claimed in claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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