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 14-24 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.
Claim 14 recites the limitation "the integrated cavity" in line 16. There is insufficient antecedent basis for this limitation in the claim.
The term “substantially” in claim 18 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What degree of flow resistance makes the flow resistance of the chamber substantially lower? 5%? 50%?
Claim 19 recites the limitation "the aerosol-forming substrate" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation "the contact surface" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The remaining claims are rejected due to dependency from rejected claims.
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) 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koerner (US 2004/0195352).
Regarding claim 14, Koerner discloses an aerosol-generating device comprising
a vibrating mesh module (Figure 3) for an aerosol-generating device, the vibrating mesh module comprising:
a MEMS (In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e.----, does not depend on its method of production, i.e. ---. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985)) membrane (2a) with a plurality of through-holes (5a) defining perforations of the MEMS membrane (Figure 3);
a flow chamber (3a) located adjacent to the MEMS membrane (Figure 3), wherein the flow chamber defines a volume configured to hold an aerosol-forming substrate and to feed the aerosol-forming substrate to the MEMS membrane (The limitation is interpreted as a recitation of intended use and therefore afforded limited patentable weight; Figure 3), wherein the flow chamber is configured to comprise an inlet (7a) through which the aerosol-forming substrate flows into the volume of flow chamber (Element 7a is a supply channel), and an outlet (13) through which the aerosol-forming substrate may exit the volume of the flow chamber (Paragraph 24, The substrate may exit the chamber by being suctioned by vacuum), wherein the flow chamber is manufactured using MEMS techniques (In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e.----, does not depend on its method of production, i.e. ---. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985));
a liquid storage portion (liquid storage chamber) in fluid communication with the inlet and the outlet of the flow chamber of the vibrating mesh module (Paragraph 21); and a pumping device (14) configured to generate a liquid flow through the integrated cavity (The pump is capable of performing the claimed function).
Regarding claim 15, Koerner discloses the aerosol-generating device according to claim 15 wherein the perforated MEMS membrane comprises an entrance side (lower side), which faces towards the flow chamber (Figure 3), and wherein the perforated MEMS membrane comprises a release side (upper side), through which the aerosol-forming substrate is released into an aerosolization chamber of the aerosol-generating device (by incorporation of ‘219, the substrate is released into a chamber 6 of the aerosol generating device).
Regarding claim 16, Koerner discloses the aerosol-generating device according to claim 15, wherein the flow chamber is further configured such that the aerosol-forming substrate flows through the volume of the flow chamber and in contact with the entrance side of the MEMS membrane (Figure 3).
Regarding claim 17, Koerner discloses the aerosol-generating device according to claim 14, wherein the outlet of the flow chamber is configured to have a flow resistance that is substantially smaller than a flow resistance through the through-holes of the MEMS membrane (Figure 3, The outlet of the flow chamber is larger than the size of the holes, thus producing a lower flow resistance).
Regarding claim 18, Koerner discloses the aerosol-generating device according to claim 14, further comprising a piezo-electric actuator (6a) configured to produce vibrations of the MEMS membrane (Paragraph 24).
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) 19-20 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hess (EP 1468749) in view of Merassi (US20100154790).
Regarding claim 19, Hess discloses a method of manufacturing a vibrating mesh module for an aerosol- generating device, the method comprising:
manufacturing a membrane from a bulk wafer of a first material (Paragraph 5);
manufacturing a flow chamber from a bulk wafer of a second material (Paragraph 5); and
attaching the flow chamber to the membrane to form the vibrating mesh module (Paragraph 5), wherein the flow chamber is configured to comprise an inlet (6a) through which the aerosol-forming substrate flows into the volume of the flow chamber, and an outlet (6b) through which the aerosol-forming substrate may exit the volume of the flow chamber (The fluid may exit the flow chamber through opening 6b), but is silent as to whether the elements are manufactured using a mems process.
Merassi discloses that it is known to make elements of a delivery device using mems methods (Paragraph 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to manufacture the elements using mems technology, in order to provide for a known method to efficiently manufacture the elements, as disclosed by Merassi (Paragraphs 9-10).
Regarding claim 20, Hess in view of Merassi discloses the method according to claim 19, wherein the bulk wafer material of the membrane is a same material as the bulk wafer used in manufacture of the flow chamber (Paragraph 5).
Regarding claim 22, Hess in view of Merassi discloses the method according to claim 19, wherein the manufacturing of the membrane comprises the steps of:
providing a bulk wafer of a first material (Merassi, Paragraph 19), depositing a cover layer of a second material onto the bulk wafer (Merassi, Paragraph 20), providing through-holes to the cover layer using MEMS manufacturing techniques, etching the bulk wafer to define recesses therein, etching the bulk wafer until the bulk wafer material is removed from the recesses (Merassi, Paragraph 23), and cutting out the membrane (Merassi, Paragraphs 35-37).
Regarding claim 23, Hess in view of Merassi discloses the method according to claim 19, wherein one or more piezo-elements are formed on the MEMS membrane (Paragraph 38), but fails to disclose the elements are integrally formed.
It would have been obvious to one having ordinary skill in the art to integrally form the piezo elements, since it has been held that forming in one piece an article which has been formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993).
Regarding claim 24, Hess in view of Merassi discloses the method according to claim 23, wherein the piezo elements are deposited on the contact surface of the membrane structure by sputtering or by coating techniques (Paragraph 38, the piezo may be deposited by adhesive surface treatment, which is interpreted as a coating technique).
Claim(s) 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hess in view of Merassi (US20100154790) and Buestgens (US 2010/0321448).
Regarding claim 21, Hess in view of Merassi discloses the method according to claim 19, but fails to disclose wherein the membrane and the flow chamber are attached to each other by gluing.
Hess discloses that the elements are attached by bonding. Buestgens discloses that gluing is a known bonding technique (Paragraph 77).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach the elements by gluing, as the step was a known alternative step to yield the predictable result of securing the elements of the device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R. DANDRIDGE whose telephone number is (571)270-1505. The examiner can normally be reached M-T 9am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER R. DANDRIDGE
Primary Examiner
Art Unit 3752
/CHRISTOPHER R DANDRIDGE/Primary Examiner, Art Unit 3752
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