Reissue – Final Rejection
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
Patent claims 1-15 and new claims 16-31 are pending.
Improper Amendment
The amendment filed 5 June 2026 proposes amendments to the claims that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
Specifically, in claim 28 double-bracketing is used to indicate deleted subject matter. This is improper. Claim 28 is a new claim and an amendment of a "new claim" (i.e., a claim not found in the patent, that was previously presented in the reissue application) must be done by presenting the amended "new claim" containing the amendatory material, and completely underlining the claim, including the claim number. The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reissue are made vis-à-vis the original patent, and not in comparison to the prior amendment. See MPEP 1453 V.D.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22 and 23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 22 and 23 recite the first and second induction sources comprise first and second AC generators, respectively. However, claim 16 has been amended to recite separate first and second AC generators and thus, claims 22 and 23 do not further limit the subject matter of the claim from which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1, 2, 6, 8-10, and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20160003136 (hereinafter KR ‘136).
With respect to claims 1 and 6, KR ‘136 teaches an aerosol-generating device 1300 for use with a plurality of aerosol-forming substrates, the device comprising: a receiving sleeve comprising an inner receiving zone 1350 within the receiving sleeve (walls of inner receiving zone) for receiving at least a first aerosol-forming substrate,
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and an outer receiving zone 1313 extending across at least a portion of an outer circumferential periphery of the receiving sleeve for receiving at least a second aerosol-forming substrate; and an electrical heater 1320,1355 for heating at least one of the first aerosol-forming substrate and the second aerosol-forming substrate when being received in the first and the second receiving zone, respectively, wherein the electrical heater is configured for heating each one of the first and the second aerosol-forming substrate individually.
The description of Figure 13 states that the receiving zones 1313,1350 “may accommodate different vaporization targets” and the vaporizers 1320,1355 may each be a “hot-line vaporizing member” (an electric wire resistant heater).
As to claim 2, the inner receiving zone 1350 is “rod-shaped” inasmuch as it is straight and has a longer length than width. Further, the outer receiving zone 1313 is “sleeve-shaped” inasmuch as it is tubular and extends around the inner receiving zone.
With respect to claim 8, KR ‘136 discloses that vaporizing elements 1320 and 1355 are positioned in air passages in the outer receiving zone and inner receiving zone, respectively, to communication between the receiving zones and flow hole 1312. See description of Figure 13.
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As to claims 9, 14, and 15, the aerosol-forming substrates are composed of an inner core (within zone 1350) and outer sleeve (within zone 1313). The outer sleeve is spaced circumferentially from the inner core so as to form a slot between the inner core and the outer sleeve, the circumferential slot being open at a distal end of the article. Note that when the inner core and outer sleeve are removed from the device 1300, the space previously filled by the wall of inner receiving zone 1350 creates a circumferential slot with an open distal end. As shown in the figure above, the cross-sectional profile of the substrate sleeve within zone 1313 is larger than an outer cross-sectional profile of the receiving sleeve within zone 1350.
With respect to claim 10, the substrates of KR ‘136 may be adapted for containing a liquid. See 4th and 6th paragraph of Description-of-Embodiments and the claims.
As to claim 13, Figure 13 discloses a mouthpiece 1311 at a proximal end of the article.
Claim(s) 9, 10, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 2529201 to Buchberger (hereinafter Buchberger).
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With respect to claim 9, Buchberger teaches an aerosol-generating article for use with an aerosol- generating device 1’, the article comprising an inner substrate core 26 and an outer substrate sleeve 36 surrounding the inner substrate core at a distance such as to form a circumferential slot between the inner substrate core and the outer substrate sleeve, the circumferential slot being open at a distal end of the article, wherein the inner substrate core contains or is adapted for containing at least a first aerosol-forming substrate and the outer substrate sleeve contains or is adapted for containing at least a second aerosol-forming substrate. See Figure 2; paras [0024-0026]. Note that when the inner core 26 and outer sleeve 36 are removed from the device 1’, the space previously filled by wall 37 creates a circumferential slot with an open distal end.
As to claim 10, both the inner core and the outer sleeve may include a liquid retention material. See paras [0026, 0030].
With respect to claim 13, the device includes a mouthpiece 3 at a proximal end of the article.
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) 3-5, 7, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR ‘136 as applied to claims 1 and 9 above, and further in view of US 2017/0055583 to Blandino et al. (hereinafter Blandino).
With respect to claims 3 and 5, KR ‘136 teaches the heater is a hot-wire type resistive heater. KR ‘136 does not disclose an inductive heater. Blandino discloses it was known in the art at the time the invention was filed to use an inductive heater comprising an inductor coil 122 and a susceptor 114 to vaporize various vaporizable components (paras [0050—53]) within zone 113. See Figure 5. It would have been obvious to a POSITA to substitute the inductive heater of Blandino for the hot-wire electric heater of KR ‘136 because the substitution of one known element for another
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yields predictable results to one of ordinary skill in the art. See MPEP 2143 I.B. In this instance, use of inductive heaters in place of the resistive heaters of KR ‘136 would have resulted in the predictable result of heating the aerosol substrates.
As to claims 4 and 12, the resistive heaters 1320,1355 of KR ‘136 are arranged at different axial positions with respect to the longitudinal axis of the receiving sleeve. Thus, when substituting the inductive heater of Blandino for the heaters of KR ‘136 they would likewise be arranged at different axial positions.
With respect to claim 7, one of ordinary skill in the art would have found it obvious to replace one or both of the resistive heaters of KR ‘136 with the inductive heater of Blandino, because the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
As to claim 11, Blandino discloses that the inductive heater includes a susceptor 14 arranged on the outer circumferential surface of core 115. When combining Blandino with KR ‘136, it would have been obvious to place the susceptor in a position capable of conducting generated heat to the aerosol substrate.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Buchberger as applied to claim 9 above, and further in view of Blandino.
Buchberger discloses heating element 10 for aerosol generation but does not teach the heating element is inductive. See paras [0025-0026]. Blandino discloses it was known in the art at the time the invention was filed to use an inductive heater comprising an inductor coil 122 and a susceptor 114 to vaporize various vaporizable components (paras [0050—53]) within zone 113. See Figure 5 above. It would have been obvious to a POSITA to substitute the inductive heater of Blandino for the heater 10 of Buchberger because the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143 I.B. Blandino discloses that the inductive heater includes a susceptor 14 arranged on the outer circumferential surface of core 115. When combining Blandino with Buchberger, it would have been obvious to place the susceptor in a position capable of conducting generated heat to the aerosol substrate.
Claim(s) 16-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/091258 to Silvestrini et al. (hereinafter Silvestrini) in view of Blandino.
With respect to claims 16, 19, 20, 22-27, and 29, Silvestrini teaches an electrical heater for an aerosol-generating device 100 including a receiving sleeve 104 having a cylindrical shape forming an inner receiving zone 103 for receiving one or more aerosol-forming substrates 118,120; a first heating coil 106 arranged within the receiving sleeve wound around the receiving zone 103; and a second heating coil 136 arranged within
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the receiving sleeve wound around the receiving zone 103, wherein the first and second heating coils 106,136 are arranged at different axial positions with regard to a longitudinal axis of the receiving sleeve, wherein the first and second heating coils are arranged operatively connected to a first and second power profile, respectively, for individual heating control of the first and second inductor coils (page 16, lines 18-27). As shown in the figure above, the receiving sleeve 104 extends coaxially to a longitudinal axis of the electrical heater 106,136. Silvestrini is silent regarding the use of inductive heaters or that an axial length of the first coil is larger than an axial length of the second coil.
Blandino discloses it was known in the art at the time the invention was filed to use an inductive heater comprising an AC generator, a helical inductor coil 122 and a susceptor 114 to vaporize various vaporizable components (paras [0011, 0050-0053]) within zone 113. It would have been obvious to a POSITA to substitute the inductive heater and the respective AC generator of Blandino for each heating coil 106,136 of Silvestrini because the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143 I.B. In making the substitution, one would have found it obvious to supply power to the two induction coils separately, using separate AC generators, as Silvestrini teaches the importance of controlling each heater individually. Silvestrini specifically teaches providing less power to one heater (page 16, lines 25-27). As to one inductive coil having a length larger than the other, it is well within the skill of one in the art to optimize the size of the coil based on the size of substrate in Silvestrini in order to achieve the desired heating thereof.
As to claim 17, Blandino discloses that the inductive heater includes a coil 122 arranged between an inner 130 and outer 140 circumferential surface of a receiving sleeve. When combining Blandino with Silvestrini, it would have been obvious to place the coil in a position capable of generating heat for the aerosol substrate.
With respect to claim 18, the inner receiving zone is rod-shaped inasmuch as it is straight and has a longer length than width.
As to claim 21, an airflow passage passes through the inner receiving zone. See Silvestrini page 15, lines 23-34.
With respect to claim 28, Silvestrini discloses a mouthpiece at the proximal end of the device for inhaling the vapor therefrom. See page 6, lines 26-30; page 7, lines 21-30.
As to claims 30 and 31, Silvestrini teaches the importance of controlling each heater individually so that each heater can achieve a different desired temperature. Because Silvestrini uses an electrical heater, this is achieved by providing a different power profile to each heater via a different duty cycle. See page 16, lines 18-27. Blandino describes that a characteristic of the AC current passing through coil 122 is adjusted according to the desired temperature within heating zone 113. The characteristic may be the frequency of the current. See paras [0081,0090]. Thus, in the combination of Silvestrini with Blandino, it would have been obvious to operate each of the first and second induction coils at different frequencies since Silvestrini teaches operating the first and second heaters at different operational temperatures.
Response to Arguments
The rejection of the claims based upon a defective reissue declaration has been withdrawn in view of Patent Owner’s comments on pages 9-10 of the Remarks.
Applicant's arguments on pages 11-17 of the Remarks filed 5 June 2026 have been fully considered but they are not persuasive.
With respect to KR ‘136, Patent Owner argues that the references “fails to disclose a receiving sleeve having an inner receiving zone and an outer receiving zone extending across an outer circumferential periphery of the receiving sleeve” or “an open circumferential slot” formed between an inner substrate core and an outer substrate sleeve. As set forth in this and the previous office action, the receiving sleeve of KR ‘136 is formed by the walls of the inner receiving zone 1350 and shown in annotated Figure 13 delineated by the dashed lines. The walls of the receiving sleeve have an inner receiving zone 1350 and an outer receiving zone 1313 extends across an outer circumferential periphery of the receiving sleeve.
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Moreover, the wall of the receiving sleeve that separates the inner receiving zone 1350 and the outer receiving zone 1313 is located within a “circumferential slot” formed between the two zones. While Patent Owner argues on page 12 of the Remarks that KR ‘136 “fails to disclose or slow a sleeve into which an aerosol generating substrate may be slidably received,” the claims do not require the substrate to be slidably received within the sleeve. Moreover, the claims do not require any physical connection or attachment between the two substrates. Thus, although Patent Owner submits that “separate aerosol generating substrates would need to be placed in the spaces 13350 [sic] and 1313” of KR ‘136, the instant claims do not preclude the use of an article comprised of two parts because the article is not claimed as having any connection between the two parts.
It is further noted that in a similar embodiment shown in Figure 6 of KR ‘136, the mouthpiece is removable from the body of the device, enabling easy removal and refill of the apparatus.
As to Buchberger, Patent Owner argues that it “fails to disclose an aerosol-generating article having the claimed inner substrate core, outer substrate sleeve and open circumferential slot.” Specifically, Patent Owner asserts that the flavoring reservoir 36 and matrix 26 are components of the device and not an aerosol-generating article. There is no defined difference between an article used with a device and a component used with a device. The reservoir and matrix together form two parts of the article. There is no requirement in the claims that the two components be physically attached together or connected.
With respect to the combination of Silvestrini and Blandino, Patent Owner argues that Silvestrini does not disclose a two-generator induction architecture and Blandino teaches only a single induction heating coil and AC generator. However, as set forth in the rejection Silvestrini teaches a POSITA to provide two heaters, each independently-controlled for heating two aerosol substrates, each to a different temperature. See page 3, lines 24-37 and page 16, lines 18-27. Thus, when modified by the induction heater of Blandino, it would have been obvious to provide each induction coil with its own AC generator so as to enable individual control of each heater. Note that Blandino teaches that control of AC amplitude or frequency is used to control the temperature within the heating zone. Patent Owner alleges that “use of induction heating does not inherently require a separate AC generator for each coil.” However, there is certainly no unexpected results attained by the use of separate AC generators. In this instance, duplicating the AC generators in the combination of Silvestrini and Blandino would have had the known effect of providing a unique, controllable current source for each induction coil.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to
timely apprise the Office of any prior or concurrent proceeding in which Patent No.
11,477,861 is or was involved. These proceedings would include any trial before the
Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental
examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to
timely apprise the Office of any information which is material to patentability of the
claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and
prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and
1442.04.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH MCKANE whose telephone number is
(571) 272-1275. The examiner can normally be reached on Mon-Thurs; 6:30 am -
4:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Patricia Engle can be reached on 571-272-6660. The fax phone number for
the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
Prosecution Insights