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 § 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) 9, 13, and 19 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.
Claims 9 and 19: the term “overall” renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13: the term "preferably" renders the claim indefinite because it is unclear whether the limitation following the term is part of the claimed invention.
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, 7-8, 10-12, and 14-17 is/are rejected under 35 U.S.C. 102(a)(1) and 102 (a)(2) as being anticipated by Mironov (US 2021/0204604 A1).
Claim 1: Mironov teaches an aerosol-generating article (Abstract) (“for use with an aerosol-generating device” refers to an intended use of the claimed article and is not considered to provide a structural limitation for the claimed article (structure)), comprising
●a susceptor element (comprising at least susceptor assembly 10, axial end cover 40, main body 80, puff sensor 86) comprising a hollow tubular proximal region and a closed distal end (see location of puff sensor 86 (para73 para77 paras84-85) (see portion of Fig4 annotated below)
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●a hollow tubular wick element (comprising at least liquid retention element 30) coaxially circumscribing at least a portion of the hollow tubular proximal region of the susceptor element (paras 73-74).
Claim 2: the closed distal end is configured as a cup-shaped distal end region (i.e. “cup-shaped” encompasses a tubular shape having a flat bottom) (Fig4).
Claim 3: the cup-shaped distal end region provides a reservoir (“for collecting condensed liquid droplets” refers to an intended use of the claimed article and is not considered to provide a structural limitation for the claimed article (structure)).
Claims 4, 14, 16, and 17: at least a portion of the susceptor element is fluid permeable (claim 4) (para74). The closed distal end is fluid permeable (claim 14) (para74). At least a portion of the hollow tubular proximal region of the susceptor element is fluid permeable (claim 16) (para74). At least a portion of the hollow tubular proximal region of the susceptor element is fluid permeable (claim 17) (para74). At least a portion of the closed distal end is fluid impermeable (stainless steel) (claim 17) (para72).
Claims 5 and 12: one or both of the hollow tubular proximal region and the closed distal end of the susceptor element comprises a porous material (for example – a mesh) (claim 5) (para72 para74). There is a porous wall element provided at an interface between the high-retention material and the wick element (for example – a mesh) (claim 12) (para72 para74).
Claim 7: there is an airflow path 21 extending along a longitudinal center axis of the hollow tubular proximal region of the susceptor element (para73).
Claim 8: one or more of the air inlets 93 are located at a position proximal to the closed distal end (para84).
Claim 10: there is a hollow tubular liquid storage portion (comprising at least liquid reservoir 50) coaxially circumscribing the wick element (para73 Fig4).
Claim 11: the hollow tubular liquid storage portion comprises a high-retention material (in that it is capable of absorbing and storing liquid and is capable of conveying the liquid (see paragraph 34 of the instant specification) adjacent to a side wall of the wick element (paras 73-74).
Claim 15: Batista teaches an aerosol-generating system, comprising:
●an article according to claim 1
●an aerosol-generating device, comprising:
●a heating chamber (comprising at least cavity 12) for insertion of at least a portion of the article
●an inductor coil 75 at least partially circumscribing the heating chamber for inductively heating the article (paras73-77 paras84-85).
Claim Rejections - 35 USC § 103
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.
Claim(s) 6, 9, 13, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mironov.
Claims 6 and 18: Mironov does not teach that the porous material has a porosity value range of 45% to 80% (claim 6; claim 18: 55% to 70%). However, the porosity value range of the porous material, to which one skilled in the art would consider providing when making the aerosol-generating article, is a function of, among other variables, the desired energy-use efficiency of the magnetic field, the heat requirements for aerosol generation, the composition of the porous material, and the size of the susceptor element. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the porosity value range of the porous material, to which one skilled in the art would consider based on known variables, such as those listed for example; and thus, the claimed porosity cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 9 and 19: necessarily present in the aerosol-generating article is a predetermined overall resistance to draw due to – for example – the presence of inner pieces within the article which aerosol and air pass over. Necessarily present is the impact of the two (“number”) air inlets 93 each have a “size” and an “arrangement”. The air inlets 93 and other parts of the aerosol-generating article each necessarily have an impact on the overall resistance to draw.
Claims 9 and 19: Mironov does not teach a specific value range for this overall resistance to draw (claim 9: 50-200mm of water; claim 19: 100-160mm of water). However, the value range of the overall resistance to draw, to which one skilled in the art would consider providing when making the aerosol-generating article, is a function of, among other variables, the friction between inner surfaces of the aerosol-generating article and the aerosol/air, the area of the airflow path 21, and the composition of liquid (and the quantity) present in the center of the susceptor element as such is heated. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the value range of the overall resistance to draw, to which one skilled in the art would consider based on known variables, such as those listed for example; and thus, the claimed value range of the overall resistance to draw cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 13 and 20: the aerosol-generating article has a cylindrical shape (Fig1 Fig2) (para39).
Claims 13 and 20: Mironov does not teach that an outer diameter of the article is between 5 millimeters to 10 millimeters (claim 13; claim 20: 6 millimeter to 8 millimeter). However, the value range of the outer diameter, to which one skilled in the art would consider providing when making the aerosol-generating article, is a function of, among other variables, the size of the aerosol-generating system for receiving the article, the makeup of targeted consumer groups, the capabilities of the composition of the materials making up the article, and the desired quantity of aerosol per puff. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the value range of the outer diameter, to which one skilled in the art would consider based on known variables, such as those listed for example; and thus, the claimed value range of the outer diameter cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Batista teaches an electrically heated aerosol-generating device comprising a cartridge. The instant specification refers to cartridges. Marchant teaches a vaporizer having a wick of silica and/or ceramic. The instant specification refers to silica and/or ceramic wicks.33
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.
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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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