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)(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.
Claims 1 – 2 and 11 – 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020070110 A1 (Taurino).
Regarding claim 1, Taurino teaches a cartridge (100) which includes a housing (105) containing a heater assembly (120) and a liquid storage compartment (103) having a first portion (130) connected to a second portion (135) (page 17 lines 15 – 16; figure 1). Taurino further teaches both a high retention material (136) and a transport material (124) which read on the claim limitation of a porous wick. The high retention material (136) is a material that is capable of absorbing and/or storing liquid and is capable of conveying the liquid (for example, by capillary action) to the transport material. A transport material (124) is a material that actively conveys liquid from one end of the material to another, for example by capillary action such as a wick (page 5 lines 9 – 13). The portion of the cartridge bordering or between the second portion (135) and the high retention material (136) reads on the claim limitation of a discharge opening (figures 1 & 2). Taurino also teaches a barrier layer which may be disposed on the heating element (between the heating element and the airflow passage), between the transport material and the heating element, between the high retention material and the transport material (this location reads on option ii), between the high retention material and the heating element, or between the liquid storage portion and the high retention material (this location reads on options i & iii). The barrier may prevent transfer of the liquid substrate from the high retention material or from the liquid storage portion to the transport material, heating element or the airflow passage (page 2 lines 12 – 20; figure 1). Additionally, the barrier has a threshold temperature at which point the barrier will switch from impermeable to permeable to allow liquid to pass from the high retention material or the liquid storage portion (page 10 lines 10 – 13). The threshold temperature may be anywhere from 60 - 200˚C (page 10 lines 20 – 23).
Regarding claim 2, Taurino teaches that the threshold temperature may be 60˚C or higher, 70˚C or higher, 80˚C or higher, 90˚C or higher, or 100˚C or higher (page 10 lines 20 – 23). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Regarding claim 11, Taurino teaches that the barrier layer may have a thickness of about 10µM or greater, about 20µM or greater, about 50µM or greater, or about 100µM or greater. The barrier layer may have a thickness of about 1000µM or less, about 800µM or less, about 500µM or less or about 300µM or less (page 13 lines 5 – 8). These thicknesses cover barrier thicknesses of option (i), (ii), and (iii). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I)
Regarding claim 12, Taurino teaches that the high retention material may include any suitable material or combination of materials. Examples of suitable materials are sponge or foam material, ceramic- or graphite-based materials in the form of fibers or sintered powders, a fibrous material, for example made of spun or extruded fibers, or ceramic or glass (page 5 lines 22 – 25). This reads on both options (i) and (ii) of claim 12.
Regarding claim 14, Taurino teaches that the invention includes an aerosol-generating device or base unit constructed to accept a cartridge that contains the aerosol-forming substrate in a high retention material (page 2 lines 4 – 5). Taurino further teaches that a heating element heats the transport material and the barrier layer upon activation of the system, and that the barrier layer then becomes permeable, allowing liquid to pass from the high retention material or the liquid storage portion (page 10 lines 10 – 13).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 3 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020070110 A1 (Taurino) as applied to claim 1 above, and further in view of Shirtcliffe et al. “Porous materials show superhydrophobic to superhydrophilic switching”, Chemical Communications, 2005, 3135 – 3137 (Shirtcliffe).
Regarding claim 3, Taurino teaches a pod for an aerosol generating device as described by claim 1. Taurino does not teach that the temperature switchable material is a porous material made from silicon alkoxide. Shirtcliffe teaches an experiment for identifying the superhydrophobic to superhydrophilic transition temperature of mixtures of phenyl triethoxysilane and tetraethyl orthosilicate, both of which are silicon alkoxides (page 3137 paragraph 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the barrier of Taurino with the silicone-alkoxide material of Shirtcliffe, with reasonable expectation of success, because Shirtcliffe indicates that the sol-gel silicon alkoxide materials such as the ones they produced show promise as superhydrophobic surfaces and are relatively cheap to produce. The ability to alter the transition temperature of the silicon alkoxide material also provides one of ordinary skill in the art the opportunity to generate a silicon alkoxide compound with a suitable transition temperature for use with temperatures generated by vape heaters. Additionally, combining prior art elements according to known methods to yield predictable results is a prima facia case of obviousness (see MPEP 2141 (III)).
Regarding claim 4, Taurino modified by Shirtcliffe teaches a pod for an aerosol-generating device according to claim 3. Shirtcliffe further teaches a silicon alkoxide mixture containing both phenylytriethoxysilane with tetraethyl-orthosilicate or only methyltriethoxysilane (page 3137 paragraph 1; table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the barrier of Taurino with the silicone-alkoxide material containing one of PhTEOS, MTEOS or TEOS of Shirtcliffe, with reasonable expectation of success, because Shirtcliffe indicates that the sol-gel materials such as the ones they produced show promise as superhydrophobic surfaces and a relatively cheap to produce. The ability to alter the transition temperature of the silicon alkoxide material with different combinations of PhTEOS with TEOS also provides one of ordinary skill in the art the opportunity to generate a silicon alkoxide compound with a transition temperature suitable for use with temperatures generated by vape heaters. Additionally, combining prior art elements according to known methods to yield predictable results is a prima facia case of obviousness (see MPEP 2141 (III)).
Regarding claim 5, Taurino modified by Shirtcliffe teaches a pod for an aerosol-generating device as described by claim 4. Shirtcliffe further teaches an experiment for determining how ratios of PhTEOS to TEOS (1:2 to 2:1) impacts the hydrophobic to hydrophilic transition temperature and found higher levels of TEOS lowers the transition temperature (page 3137 paragraphs 1 – 2; table 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the barrier of Taurino with the silicone-alkoxide material containing a ratio of PhTEOS to TEOS of Shirtcliffe, with reasonable expectation of success, because Shirtcliffe indicates that Silicon Alkoxide compounds containing higher ratios of TEOS to PhTEOS have a lower hydrophobic/hydrophilic transition temperature. Higher levels of TEOS relative to PhTEOS would provide a temperature switchable material with a transition temperature close to vape heater temperatures. Additionally, combining prior art elements according to known methods to yield predictable results is a prima facia case of obviousness (see MPEP 2141 (III)).
Regarding claim 6, Taurino modified by Shirtcliffe teaches a pod for an aerosol-generating device as described by claim 3. Shirtcliffe further teaches that to test their theories on transition temperatures of their silicon alkoxide hydrophobicity/hydrophilicity transitions they generated sol-gel foams with varying proportions of phenyl triethyoxysilate and methyl triethoxysilane (page 3137 paragraph 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the barrier of Taurino with the silicone-alkoxide sol-gel material of Shirtcliffe, with reasonable expectation of success, because Shirtcliffe indicates that the sol-gel materials such as the ones they produced show promise as superhydrophobic surfaces and are relatively cheap to produce. The ability to alter the transition temperature of the silicon alkoxide material also provides one of ordinary skill in the art the opportunity to generate a silicon alkoxide compound with a suitable transition temperature for use with temperatures generated by vape heaters. Additionally, combining prior art elements according to known methods to yield predictable results is a prima facia case of obviousness (see MPEP 2141 (III)).
Claims 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020070110 A1 (Taurino) as applied to claim 1 above, and further in view of US 20220074586 A1 (Barford).
Regarding claim 7, Taurino teaches a pod for an aerosol-generating device as described by claim 1. Taurino does not teach that the temperature-switchable material comprises a vapor channel structure forming channels in a surface of the porous wick opposite of the surface sealing the discharge opening. Barford teaches a wick with a series of channels on the top surface (400) giving rise to a grooved non-fibrous wick (paragraph 120; figure 4). Modifying the high retention material (wick) of option (ii) would place the channels on the wick opposite the surface sealing the discharge opening.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the wick of Taurino to contain vapor channel structures as in Barford, with reasonable expectation of success, because Barford indicates that the channels can direct vapor or steam towards the heater and help avoid vapor leaking out around the outer edges (paragraph 130).
Regarding claim 8, Taurino modified by Barford teaches a pod for an aerosol-generating device as described by claim 7. Figure 4 of Barford further teaches that the channels of the wick are circular channels.
It would have been obvious to one of ordinary skill in the art, before the filing date of the claimed invention, to modify the wick of Taurino with circular channels of Barford, with reasonable expectation of success, because Barford indicates that the channels can direct vapor or steam towards the heater and help avoid vapor leaking out around the outer edges (paragraph 130).
Regarding claim 9, Taurino modified by Barford teaches a pod for an aerosol-generating device as described in claim 7. Taurino further teaches that the transport material (124) is operably coupled with the heating element (120) such that the transport material (124) may be heated by the heating element. Heating of the transport material also heats the barrier layer and renders the barrier layer permeable to liquids (page 13 lines 19 – 21; figure 1). As the transport material transfers heat to the barrier layer and is adjacent to the high retention material (136) it reads on the claim limitation of a heat transfer material.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020070110 A1 (Taurino) and US 20220074586 A1 (Barford) as applied to claim 9 above, and further in view of both US 20210045445 A1 (Biel) and Yang et al. "Functional silica film on stainless steel mesh with tunable wettability", Surface & Coatings Technology, 2011, 205, 5387-5393. (Yang)
Regarding claim 10, Taurino modified by Barford teaches a pod for an aerosol generating device as described by claim 9. Taurino further teaches that the transport material is preferably in contact with the heating element. Alternatively, there may be an intervening layer between the transport material and the fluid permeable heating element, with the intervening layer assisting in providing fluid communication between the transport material and heating element (page 5 lines 29 – 32). It would be obvious to include intervening layers at other portions of the liquid transfer chain of Taurino to assist fluid movement. Taurino does not teach a metal mesh with a temperature switchable coating, the metal mesh arranged between the vapor channel structure of the temperature-switchable material and the heat transfer layer and the metal mesh being in direct contact with the heat transfer material layer. Biel teaches a wick comprising different metal meshes differing in capillarity, with higher capillarity resulting in higher capillary action, with liquid from the liquid reservoir (34) being drawn by overall capillary action of the capillary element from the ends of the capillary element (30) towards the central portion of the capillary element (30) encircled by the heating coil (28) (paragraph 18; figure 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the liquid transfer path of Taurino modified by Barford to include a metal mesh as found in Biel between the heat transfer material and the temperature switchable barrier, with reasonable expectation of success, because as a capillary element, the metal mesh assists with wicking the aerosol generating material from the reservoir to the heater.
Taurino modified by Barford and Biel teaches a pod for an aerosol generating device comprising a metal mesh arranged between the temperature switchable material and the heat transfer material layer. Taurino modified by Barford and Biel does not teach that the metal mesh has a temperature switchable material. Yang teaches a stainless-steel mesh with temperature tunable wettability (pg 5387 paragraph 3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the liquid transfer path of Taurino modified by Barford and Biel with the stainless steel mesh with tunable wettability of Yang, with reasonable expectation of success, because the metal mesh can function as a barrier to the flow of aerosol generating material at low temperatures, while at high temperatures also functioning as both a wick and a heat transfer material.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020070110 A1 (Taurino) as applied to claim 1 above, and further in view of US 20210045445 A1 (Biel).
Regarding claim 13, Taurino teaches that an airflow passage (140/145) extends through the cartridge (100) from an air inlet (150) formed on a side of the housing (105), past the heater assembly (120), and from the heater assembly (120) to a mouthpiece opening (110) formed at the mouth end (101) of the housing (105) (page 17 lines 24 – 26; figure 1). Taurino does not teach an airflow channel guiding air through a porous wick and/or along a surface of the porous wick. Biel teaches a heating coil (28) wrapped around a capillary element (30) extending across a central passage (32) of the atomizer/liquid reservoir portion (14). An air gap is provided on either side of the heating coil (30) enabling air to flow past the heating coil (28) and the capillary element (paragraph 16; figure 1). Figure 1 shows an air path from the air inlets (38) through the central passage (32) and out the inhalation port (36).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the heater and wick locations of Taurino to be located across the central air passage as in Biel, allowing air to be guided along the porous wick, with reasonable expectation of success, because locating the wick/heater inside the airflow passage allows for greater exposure of the vaporized material to the passage of air.
Conclusion
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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