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 .
Election/Restrictions
The restriction/election requirement dated 7 April 2026 is withdrawn in its entirety
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 55 – 70 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.
Regarding Claim 55, the claim recites “a non-aerosol-generating substrate”. It is unclear as to what conditions are occurring to the substrate such that the substrate can be considered “non-aerosol generating”, thus rendering the claim indefinite. For example, does the substrate not generate an aerosol when heated within a heating chamber? Does the substrate not generate an aerosol when at room temperature?
Claims dependent upon a rejected claim are therefore rejected as well.
Claim Rejections - 35 USC § 102
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.
Claim(s) 55, 56, 59, 62, 63, 66 - 69 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koyama et al. (WO 2021/020348).
Regarding Claim 55, Koyama discloses a testing article (1) for insertion into a heating chamber (chamber in which 105 lies) of an aerosol-generating device (101) [0002], the testing article comprising: an elongate body configured to be received within the heating chamber of the aerosol-generating device (Figure 4); and a heatable substrate (10) configured to be received within the elongate body and to be heated when the testing article is located within the heating chamber of the aerosol- generating device [0002], wherein the heatable substrate is a non-aerosol-generating substrate (e.g. tobacco does not generate aerosol at room temperature).
Regarding Claim 56, Koyama discloses the heatable substrate comprises a fibrous material [0012].
Regarding Claim 59, Koyama discloses comprising a substrate cavity configured to receive the heatable substrate (cavity in which 10 lies) (Figure 4), the substrate cavity being defined within the elongate body (Figure 4).
Regarding Claim 62, Koyama discloses a cooling opening (in 14) configured to establish a fluid communication between the heatable substrate and an exterior of the testing article (Figure 4), the cooling opening being defined on the elongate body (Figure 4).
Regarding Claim 63, Koyama discloses a heat insulating element (13b) circumscribing a portion of the elongate body (Figure 4).
Regarding Claim 66, Koyama discloses a testing system comprising a testing article according to claim 55 (see rejection of Claim 55 above) and an aerosol-generating device (101), the aerosol-generating device comprising a heating chamber (chamber in which 105 lies) and a heating element (105) configured to externally heat a testing article received within the heating chamber [0002, 0012] (Figure 4).
Regarding Claim 67, Koyama discloses a method of testing an aerosol-generating device (101) with a testing article according to claim 55 (see rejection of Claim 55 above), the method comprising the steps of: inserting the testing article into a heating chamber of the aerosol-generating device comprising a heating element (105) [0012]; and performing a testing cycle comprising: activating the heating element so as to heat the testing article received within the heating chamber [0020, 0072], and deactivating the heating element [0072].
Regarding Claim 68, Koyama discloses each testing cycle comprises drawing air through the testing article [0072].
Regarding Claim 69, Koyama discloses a plurality of testing cycles is performed [0072].
Conclusion
As the claims are rejected under 112(b), a complete search and consideration of the claims was not possible. Upon applicant’s clarification of the claims, a comparison with the prior art will again be made.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MERCADO whose telephone number is (571)270-7094. The examiner can normally be reached Monday - Thursday 9am - 4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached at (571) 272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER A. MERCADO
Primary Examiner
Art Unit 2855
/ALEXANDER A MERCADO/ Primary Examiner, Art Unit 2855
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