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.
Claims 16-30 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 16 and 30 recite "a third adhesive layer disposed between the second adhesive layer and the temperature sensor" in the last 3-4 lines of each claim. While the plain meaning of the phrase appears to require a third adhesive layer between the second adhesive layer and temperature sensor, it appears Applicant intended for the third adhesive layer to be disposed between the second substrate layer and the temperature sensor. Examiner notes that the specification and figures do not disclose an adhesive layer between a second adhesive layer and a temperature sensor in the working embodiments (see Figs. 2, 3; pgs 11-12), but rather an adhesive layer between the second substate layer and the temperature sensor. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. See MPEP 2173.03. For the purpose of examination, it is assumed to be between the second substrate layer and the temperature sensor.
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.
Claims 16-19, 21-23 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Sandou (JP 2017117525) in view of Petit (US 6054690).
Regarding claim 16, Sandou discloses a heating assembly (see heater 10), the heating
assembly comprising:
a first substrate layer, the first substrate layer being an electrically isolating substrate layer (see top ceramic layer 1);
a heating element arranged on the first substrate layer (see heat generation pattern 2);
a second substrate layer, the second substrate layer being an electrically isolating substrate layer, wherein the second substrate layer is arranged covering the heating element and the first substrate layer (see middle ceramic layer 1);
a temperature sensor arranged on the second substrate layer (see sensor pattern 3); and
a third substrate layer, the third substrate layer being an electrically isolating substrate layer, wherein the third substrate layer is arranged at least partly covering the temperature
sensor and covering the second substrate layer (see bottom ceramic layer 1).
As to the recitation of "for an aerosol generating device" in the preamble, If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02 (II).
Sandou teaches the ceramic materials that are electrically insulating ([0012])
Sandou does not disclose one or more adhesive layers disposed between the ceramic layers, heater, and sensor; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the heater with adhesive between at least one of the layers and the heater or sensor since (1) Sandou discloses forming the ceramic layers with heat and sensor patterns in a stack made of a laminate of ceramic layers 1; and (2) Petit, similarly directed towards a heating element, teaches forming a multilayered heating element by adhering substrate layers via adhesive (col 2, lines 53-57). One would have been motivated to secure the layers of Sandou together.
Regarding claims 17 and 18, Sandou teaches a resistive heater comprising a heating track ([0013]).
Regarding claim 19, Sandou does not disclose printing; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have printed the heating element on the first substrate layer since it is well known and convention to form electrical resistive heating elements by printing on a substrate (see Petit, col 2, lines 41-45).
Regarding claims 21-23, Sandou teaches through holes extending in the ceramic layers for forming contacts with the temperature sensor ([0027]; two holes would be necessary to form a circuit, also see two ends of the sensor patterns in Figs. 1, 2).
Regarding claim 30, Sandou teaches providing and arranging three ceramic layers with temperature sensor and heating element arranged therein ([0012-0020]; see discussion above). Sandou teaches the ceramic materials that are electrically insulating ([0012]). Sandou does not disclose one or more adhesive layers disposed between the ceramic layers, heater, and sensor; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the heater with adhesive between at least one of the layers and the heater or sensor since (1) Sandou discloses forming the ceramic layers with heat and sensor patterns in a stack made of a laminate of ceramic layers 1; and (2) Petit, similarly directed towards a heating element, teaches forming a multilayered heating element by adhering substrate layers via adhesive (col 2, lines 53-57). One would have been motivated to secure the layers of Sandou together.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 16, 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of copending Application No. 18702016 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 26 of App. '016 similarly discloses a heating assembly for an aerosol generating device comprising a first electrically isolating substrate layer, a heating element, a second electrically isolating substrate layer, a temperature sensor, a third electrically isolating substrate layer, and adhesive layers between the layers/heater/sensor (see claim 26 plus intervening claims 16 and 17). As to claim 21, claim 16 of app '016 recites two electrical contacts on the sensor.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 30 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23-34 of copending Application No. 18700834 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 23-34 of App. '834 similarly disclose a method for manufacturing a heating assembly for an aerosol generating device comprising providing a first electrically isolating substrate layer, arranging a heating element, providing a second electrically isolating substrate layer, arranging a temperature sensor, arranging a third electrically isolating substrate layer, and providing adhesive layers between the layers/heater/sensor (see claims 23, 24, and 26 plus intervening claims 21 and 22).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 20, 24-29 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the provisional nonstatutory double patenting rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is represented by Sandou (JP2017117525) and Kim (KR 20190030262). Sandou is discussed above. Sandou fails to further teach or suggest the heating assembly as rolled into a tube, a heat shrink wrap layer, polyamide films, or an aerosol generating device comprising the heating assembly as recited in the dependent claims. Kim (KR 20190030262) discloses a heating assembly for an aerosol generating device, the heating assembly comprising a first substrate layer (insulating layer 20), a heating element (electrode wiring pattern 30), a second substrate layer (inner cover layer 50), a temperature sensor (temperature sensor 60), and a third substrate layer (outer cover layer 67). Kim specifically discloses forming the insulating layer 20 by coating or casting on thin plate 10 so that a separate adhesive is not needed; the electrode wiring pattern is formed by metal by etching or printing; the inner cover layer is a metal foil on which an insulating adhesive layer is formed; and the temperature sensor is formed by printing on the surface of the inner cover layer 50. The prior art of record does not disclose or suggest the combination of adhesive layers and electrically isolating substrate layers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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