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
Applicant's election with traverse in the reply filed on 9/22/2026 is acknowledged. Applicant’s arguments have been fully considered and are persuasive. The restriction/election requirement of 9/22/2026 is withdrawn, and all claims will be examined simultaneously.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 6, case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims],” otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all limitations within the scope of the claim can be used as claimed and whether the claim meets the test is stated in MPEP § 2164.01. Upon applying this test to the claim, it is believed that undue experimentation would be required because the claims require determining an electrical parameter based on an eddy current loss, however, there is no guidance provided as to how to how a measured eddy current loss corresponds to an electrical parameter. The prior art does teach using eddy current loss to determine the presence and/or proximity of a metallic component. For instance, Gordon (US 7,754,985) teaches using an inductive sensor to detect an eddy current loss caused by the presence of metal in an electromagnetic field (column 7, lines 42-67), Woolsey (US 6,424,145) teaches a proximity sensor that operates by measuring inductance in a coil in an eddy current loss mode (column 10, lines 31-67), and Yu (US 2023/0420991) teaches an inductor design equation [0188] that includes the maximum current as a parameter [0191], and that eddy current losses are positively correlated to coil currents [0222]. However, neither the prior art nor applicant’s specification specify how a measurement of eddy current loss is converted to an electrical parameter of an electrical flow that is being provided from a battery to an operating inductor that is providing heat. The quantity of experimentation required for one of ordinary skill in the art to read applicant’s specification and then make and use the claimed invention is therefore excessive, indicating that the claim does not comply with the enablement requirement. In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of the claim.
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.
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 1-5, 7-8 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Seo (US 2023/0063257) in view of Jung (US 11,882,875).
Regarding claims 1 and 8, Seo discloses a controller that measures a measurer that measures current from a heater portion [0062] and performs operations based on the result of the measurement [0063]. The measurement determines whether a susceptor element is present in an aerosol generating article [0074]. The amount of current decreases when the susceptor element is not present [0075]. The article has a housing, a heater, and a battery [0042] that supplies power to the heating portion under the control of a controller [0046]. Heating is stopped when an inserted aerosol generating article is determined to be unsuitable [0067]. The controller uses a measured temperature of the cigarette [0097] and operates the device according to a profile associated with the aerosol generating article [0069], which is considered to meet the claim limitation of meeting a preset temperature. The device follows a temperature profile [0069], which is considered to indicate that it has a preset temperature that the heater is driven to reach. Seo does not explicitly discloses stopping power when the cigarette is removed.
Jung teaches an aerosol generating apparatus in which a current value flowing through a coil is detected to control the device (abstract) and detects when the cigarette is separated (column 13, lines 36-48) and stops operation of the heater when separation occurs (column 14, lines 24-33).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the controller of Seo with the shutting down when the cigarette is removed of Jung. One would have been motivated to do so since Jung teaches shutting down a heater when a cigarette is removed.
Regarding claims 2-3 and 14-15, the claims are considered to be obvious since the embodiment in which removal is determined by a change amount of the parameter is disclosed by Seo (see claim 4 below) and applicant’s amendment of 7/24/2026 (page 9) indicates that the instantly claimed embodiments are obvious variants of the change amount embodiment.
Regarding claim 4, Seo discloses that the article measures a decrease of the current that is related to the magnetic permeability of the material [0083], and that an increase in the current indicates that the susceptor is inserted and the opposite indicates that the susceptor is removed [0075], which is considered to meet the claim limitation of a change amount.
Regarding claims 5 and 16, Seo discloses that the inductor is an inductor coil [0045] that has a heating frequency applied to it [0047]. The frequency is a frequency of the current [0106]. A susceptor is embedded in the article and is inductively heated by the inductor [0044], which is considered to meet the claim limitation of an electromagnetic induction heater.
Regarding claim 7, Seo discloses that the device can also measure the voltage instead of the current [0062].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Seo (US 2023/0063257) in view of Jung (US 11,882,875), as evidenced by Mironov (US 9,820,512).
Regarding claim 6, modified Seo teaches all the claim limitations as set forth above. Seo additionally discloses that the aerosol generating article is heated through the inductor when a frequency is applied to the inductor [0017]. The determining operating is performed on the basis of an electrical signal that is measured [0017] and used to determine characteristics of the article [0020]. The measured signal is therefore considered to be based on the heating itself since the electrical signal causes the heating.
Mironov teaches that the power dissipated by a susceptor element is released in the form of eddy current losses to generate heat (column 11, lines 25-33). One of ordinary skill in the art would therefore recognize that the measured electrical current is based on the eddy current losses caused by the heating.
Claims 9-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Seo (US 2023/0063257) in view of Jung (US 11,882,875) as applied to claim 8 above, and further in view of Lee (US 12,733,684).
Regarding claims 9, 11-13 and 18, the claims are considered to be obvious since the embodiment in which removal is determined by a change amount of the parameter is disclosed by Seo (see claim 4 below) and applicant’s amendment of 7/24/2026 (page 9) indicates that the instantly claimed embodiments are obvious variants of the change amount embodiment.
Regarding claim 10, modified Seo teaches all the claim limitations as set forth above. Seo additionally discloses that the article measures a decrease of the current that is related to the magnetic permeability of the material [0083], and that an increase in the current indicates that the susceptor is inserted and the opposite indicates that the susceptor is removed [0075], which is considered to meet the claim limitation of a change amount. The device can measure power in place of current [0072]. Modified Seo does not explicitly teach the power being supplied based on a temperature curve.
Lee teaches an aerosol generating device (abstract) that supplies electric power based on a temperature profile (column 49, lines 1-8) that performs control based on the power profile, which is considered to meet the claim limitation of a preset power curved, based on predetermined heating time (column 41, lines 15-22) so that the temperature can be controlled (column 41, lines 23-25). It is evident that any drop in power must occur during the predetermined heating time.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the control method of modified Seo with the linked temperature and power profile of Lee. One would have been motivated to do so since Lee teaches a method of applying power to reach a desired temperature profile.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Seo (US 2023/0063257) in view of Jung (US 11,882,875) as applied to claim 8 above, and further in view of Hasegawa (US 12,214,119).
Regarding claim 17, modified Seo teaches all the claim limitations as set forth above. Modified Seo does not explicitly a heating time being longer than a cooling time.
Hasegawa teaches a method for producing aerosols (abstract) in which a dose of a drug is emitted by using plateau heating to control the size of the released dose (column 29, lines 23-35) in which the temperature is increased for a longer time period than the temperature is decreased to provide controlled release of the drug (column 46, lines 46-57, figure 4).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the controller of modified Seo with the plateau heating profile of Hasegawa. One would have been motivated to do so since Hasegawa teaches a heating profile that provides controlled release of a substance that forms an aerosol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
