U.S. Patent No. 8,365,742
`Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VMR PRODUCTS LLC
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`Petitioner
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`v.
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`FONTEM HOLDINGS 1 B.V.
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`Patent Owner
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`U.S. Patent No. 8,365,742
`Issue Date: February 5, 2013
`Title: AEROSOL ELECTRONIC CIGARETTE
`Inventor: Lik Hon
`Filed: April 5, 2011
`U.S. Application Serial No. 13/079,937
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`____________________________________________________________
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`DECLARATION OF GREGORY BUCKNER, Ph.D.
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`VMR-Ex. 1002-001
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`Petition for Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VMR PRODUCTS LLC
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`Petitioner
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`v.
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`FONTEM HOLDINGS 1 B.V.
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`Patent Owner
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`
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`U.S. Patent No. 8,365,742
`Issue Date: February 5, 2013
`Title: AEROSOL ELECTRONIC CIGARETTE
`Inventor: Lik Hon
`Filed: April 5, 2011
`U.S. Application Serial No. 13/079,937
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`____________________________________________________________
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`
`DECLARATION OF GREGORY BUCKNER, Ph.D.
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`VMR-Ex. 1002-001
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`I.
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`I, Gregory Buckner, declare:
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`INTRODUCTION
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`A. Engagement
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`1.
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`I have been retained by VMR Products LLC as an expert witness in
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`the above-captioned proceeding. I have been asked to render an opinion regarding
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`the patentability of claims 1, 2 and 3 of U.S. Patent No. 8,365,742 (“the ’742
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`Patent”), which is submitted herewith as Exhibit 1001. The following is my
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`written report which contains my opinions and the support for same.
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`B.
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`2.
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`Background and Qualifications
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`I am a Professor of Mechanical and Aerospace Engineering, and
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`Affiliate Faculty of Biomedical Engineering, at North Carolina State University
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`(NCSU) in Raleigh, NC. I am Director of NCSU’s Electromechanics Research
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`Laboratory and CEO of emTECH LLC, and have been involved with
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`electromechanics research and development for more than 20 years. My research
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`focuses on biomedical applications, primarily actuated technologies to facilitate
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`minimally-invasive clinical procedures. Current projects focus on the development
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`of actuated catheters to enhance the delivery of radioactive microspheres and
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`improve the targeting and treatment of tumors in liver cancer patients.
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`3.
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`I received a Ph.D. (1996) in mechanical engineering from the
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`University of Texas at Austin, a M.S. (1987) in mechanical engineering from
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`VMR-Ex. 1002-002
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`Virginia Tech, and a B.S. (1986) in mechanical engineering from Louisiana State
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`University. At the University of Texas at Austin, I specialized in electromechanics
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`research and development, working as a post-doctoral research engineer at the
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`University of Texas Center for Electromechanics.
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`4.
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`I have over 20 years of product design, development and consulting
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`expertise covering a wide range of industries and products. Over that time, I have
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`maintained a consistent focus on medical devices and technologies, which includes
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`my particular expertise in electromechanical design and real-time control systems.
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`I have directed more than $5M of federally and industrially sponsored research,
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`including multiple projects funded by the National Institutes of Health (NIH)
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`focused on the development of actuated devices to facilitate minimally-invasive
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`clinical procedures. These projects have resulted in multiple patents and license
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`agreements to facilitate technology transfer to clinical practice. My Curriculum
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`Vitae is submitted herewith as Exhibit 1002.
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`C. Compensation and Prior Testimony
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`5.
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`I am being compensated at a rate of $250 per hour for my study and
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`testimony in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and testimony in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`VMR-Ex. 1002-003
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`D. Materials Considered
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`6. My opinions are based on my years of education, research and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the following materials.
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`Exhibit Description
`Exhibit
`1001 U.S. Patent No. 8,365,742 (“’742 Patent”)
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`1004 China Patent CN 2719043 (“Hon ‘043”) – issue date August 24, 2005
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`1005 Certified English translation of Hon (CN 2719043) pursuant to 37
`C.F.R. 42.63(b)
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`1006 WO 2005/099494, which is the PCT application equivalent of Hon (CN
`2719043) (“Hon ‘494”)
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`1007 Certified English translation of WO 2005/099494 pursuant to 37 C.F.R.
`42.63(b)
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`1008 CA 2562581, which is the Canadian equivalent of Hon (CN 2719043)
`(“Hon ‘581”)
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`1009 US 2007/0267031, which is the U.S. equivalent of Hon (CN 271043)
`(“Hon ‘031”)
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`1010
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`EP 0845220 (“Susa”) – Published June 3, 1998
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`1011 U.S. Patent No. 5,144,962 (“Counts”) – issue date September 8, 1992
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`1012 WO 03/034847 (“Abhulimen”), Published May 1, 2003
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`1013 U.S. Patent No. 2,057,353 (“Whittemore”) – issue date October 13,
`1936
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`1014
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`Litigation proceedings in CV 14-1645 – Rulings on Claims
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`VMR-Ex. 1002-004
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`Construction
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`1015 WO 2007/131449, which is the PCT application for the ‘742 Patent
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`1016
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`‘742 Prosecution History, Preliminary Amendment
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`1017
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`‘742 Prosecution History, Non-final office action
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`1018
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`‘742 Prosecution History, Amendment
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`1019
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`‘742 Prosecution History, Supplemental Amendment
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`1020
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`‘742 Prosecution History, Examiner Interview Summary
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`1021
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`‘742 Prosecution History, Notice of Allowance
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`1022
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`‘742 Prosecution History, Certificate of Correction
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`1023 DECISION - Institution of Inter Partes Review in IPR2013-00387,
`Paper 7
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`7.
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`I may rely upon these materials and/or additional materials to rebut
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`arguments raised by the patent owner. Further, I may also consider additional
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`documents and information in forming any necessary opinions, including
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`documents that may not yet have been provided to me.
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`8. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`VMR-Ex. 1002-005
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`II. LEGAL STANDARDS FOR PATENTABILITY
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`9.
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`In expressing my opinions and considering the subject matter of the
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`claims of the ‘742 Patent, I am relying upon certain basic legal principles that have
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`been explained to me.
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`10.
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`I have been asked to provide my opinions regarding whether claims 1,
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`2 and 3 of the ‘742 Patent would have been obvious to one of ordinary skill in art
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`at the time of the alleged invention. It is my understanding that a patent claim is
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`unpatentable under 35 U.S.C. § 103 if the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the alleged invention was made to a person
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`having ordinary skill in the art to which said subject matter pertains. I further
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`understand that an obviousness analysis takes into consideration factual inquiries
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`such as the level of ordinary skill in the art, the scope and content of the prior art,
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`and the differences between the prior art and the patent claim.
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`11.
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`I have been informed that that there are several recognized rationales
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`for combining references and/or for modifying a reference as part of an
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`obviousness analysis. These rationales include combining prior art elements
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`according to known methods to yield predictable results, simple substitution of a
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`known element for another to obtain predictable results, a predictable use of prior
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`art elements in accordance with their established functions, applying a known
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`VMR-Ex. 1002-006
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`technique to improve a known device or process and yielding predictable results,
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`and choosing from a finite number of known predictable solutions with a
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`reasonable expectation of success. It is further my understanding that an
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`obviousness analysis takes into consideration whether the prior art provides a
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`teaching, suggestion, or motivation to combine teachings of multiple prior art
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`references to arrive at the patent claim.
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`III. THE PERSON OF ORDINARY SKILL IN THE ART
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`12.
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`In rendering the opinions set forth in this declaration, I was asked to
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`consider the patent claims through the eyes of “one of ordinary skill in the art.” I
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`was asked to consider factors such as the educational level and years of experience
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`of those working in the pertinent art; the types of problems encountered in the art;
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`the teachings of the prior art; patents and publications of other persons or
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`companies; and the sophistication of the technology. I understand that the person
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`of ordinary skill in the art is not an actual individual, but rather a hypothetical
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`individual having the qualities reflected by the factors discussed above.
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`13.
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`In my opinion, based on my experience in research and product
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`development of electromechanical medical devices and my understanding of the
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`skills and background that graduates of engineering programs should possess, a
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`person of ordinary skill in the art of electromechanical medical devices similar to
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`the one disclosed in the ‘742 Patent at the time of filing of the ‘742 Patent is
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`VMR-Ex. 1002-007
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`generally at least one who has a Bachelor’s degree in electrical engineering,
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`mechanical engineering or biomedical engineering, along with at least five years
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`experience designing electromechanical medical devices.
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`IV. THE ‘742 PATENT
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`A. Overview of the ‘742 Patent
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`1.
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`The Description
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`14. The ‘742 Patent is generally directed to an aerosol electronic cigarette.
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`Ex. 1001, ‘742 Patent, Title. More particularly, the ‘742 Patent is directed to an
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`electronic cigarette having a battery assembly, an atomizer assembly and a
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`cigarette bottle assembly. Ex. 1001, col. 1, lns. 28-30. The basic configuration of
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`the electronic cigarette described in the ‘742 Patent is shown in Figure 1 (set forth
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`below).
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`15.
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`In this embodiment, hollow shell (a) contains removable bottle
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`assembly (b). Ex. 1001, col. 2, lns. 30-37. The battery assembly in Figure 1
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`includes an operating indicator (1), a battery (3), an electronic circuit board (4) and
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`VMR-Ex. 1002-008
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`an airflow sensor (5), all of which are connected to the battery. Ex. 1001, col. 2,
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`lns. 39-44.
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`16. The atomizer assembly in Figure 1 is depicted by atomizer (8), which
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`includes a porous component. Several different atomizer assembly configurations
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`are disclosed in the ’742 Patent. The embodiment relevant to claims 1, 2 and 3 is
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`shown in Figures 17 and 18 (set forth below).
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`17.
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`In this embodiment, a porous component (81) is set on a frame (82).
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`Ex. 1001, Fig. 7, col. 5, lns. 42-46. A heating wire (83) is wound around a portion
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`of the porous component which extends across the central opening of a run-
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`through hole (821). Ex. 1001, Figs. 17 and 18, col. 5, lns. 42-49.
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`2.
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`The Prosecution History of the ‘742 Patent
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`a.
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`Preliminary Amendment
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`18. The application which led to the ‘742 Patent was filed on April 5,
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`2011 as U.S. Application Serial No. 13/079,937. The application was a divisional
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`application of U.S. Patent Application No. 12/226,818, filed on October 29, 2008
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`VMR-Ex. 1002-009
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`(now U.S. Patent No. 8,156,944), which is the national stage entry of PCT
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`Application No. PCT/CN2007/001575, filed on May 15, 2007, which claimed
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`priority to CN Patent Application No. 2006/20090805, filed on May 16, 2006. Ex.
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`1015. The application was filed with 29 original claims. Id. In an April 5, 2011
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`Preliminary Amendment, the Applicant cancelled all 29 original claims, added one
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`new claim, and amended the specification. Ex. 1016 at 2-3. 1
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`b.
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`First Office Action Rejects Claim 30 as Indefinite
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`19. On July 19, 2012, the Examiner rejected the sole claim, claim 30. Ex.
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`1017. Specifically, claim 30 was rejected under 35 USC § 112 as being indefinite.
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`Id. at 2. The Examiner found that it was unclear which “part” and “side” to which
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`the Applicant was referring in the claim recitation of “the said porous component is
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`wound with heating wire in the part that is on the side in the axial direction of the
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`run through hole . . . .” Id. Although the Examiner indicated that Claim 30 would
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`be allowable if the § 112 rejection was overcome, the Examiner explicitly stated
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`that Hon ‘043 was the closest prior art and that only one limitation was lacking.
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`The Examiner believes that the closest prior art record, namely
`the CN 2719043 reference, neither teaches nor reasonably
`suggests an aerosol electronic cigarette having the claimed
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`1
`For ease of reference, and to avoid confusion, all citations to office actions
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`or responses are to the numbered page on the original office action or response.
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`VMR-Ex. 1002-010
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`combination of structural features, including “an atomizer,
`which includes a porous component and a heating body; the
`said heating body is heating wire . . . the heating wire is
`wound on the said porous component”.
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`Id. at 2-3 (emphasis added).
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`c.
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`Applicant Adds “Heating Wire Wound on a Porous
`Component”
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`20.
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`In response to the first office action, on August 3, 2012 Applicant
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`made amendments to claim 30 in which “porous component is wound with heating
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`wire in the on the side in the axial direction of the run-through hole” was replaced
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`with “the heating wire is wound on a part of the porous component that is
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`substantially aligned with the run-through hole.” Ex. 1018 at 2 (claim 30) and 4
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`(Remarks). Applicant also added new claims 31-32. Id. at 2-3. With respect to
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`these new claims, Applicant argued that “[n]ew claim 31 is similar to claim 30 and
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`includes the elements of claim 30, but written with more common English usage.”
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`Id. at 4. Further, “[n]ew claim 32 is similar to claims 30 and 31 but describes a
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`heating wire wound on a part of the porous component substantially aligned with
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`the run-through hole . . . and with the porous component in contact with a liquid
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`supply in the housing . . .” Id. Finally, Applicant alleged that “[n]ew claims 31
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`and 32 are believed to be allowable for the same reason that claim 30 is indicated
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`to be allowable at paragraph 4 of the Office Action.”
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`VMR-Ex. 1002-011
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`21. Four days later, on August 7, 2012 Applicant supplemented its
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`response to the July 19, 2012 Office Action. Ex. 1019. In the supplemental
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`response, the Applicant provided a substitute specification with numerous
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`substantive changes from the previous version. Id. at 2.
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`d.
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`Examiner Interview
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`22. Although the prosecution history does not show any additional
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`rejections after the Applicant filed the August 7, 2012 response, Applicant
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`conducted an examiner interview on August 14, 2012. Ex. 1020. The Examiner
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`Interview Summary states that during the interview, the Examiner and the
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`Applicant’s counsel discussed claims 30, 31 and 32 as well as the following prior
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`art references: “Voges, U.S. Patent No. 6,196,218; Robinson, U.S. Patent No.
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`1,775,947; Counts, U.S. Patent No. 5,144,962; Brooks, U.S. Patent No. 4,947,875;
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`Japan Tobacco, EP 0 845 220 B1; Hon Lik WO/2004/095855; and Hon Lik
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`WO/2005/099494”. Ex. 1020. According to the Summary, “[n]o agreement was
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`reached.” Id.
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`e.
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`Notice of Allowance
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`23. On November 14, 2012, the USPTO issued a notice of allowance. Ex.
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`1021. The ‘742 Patent issued on February 5, 2013. Claims 30, 31 and 32 issued as
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`claims 1, 2 and 3, respectively. Ex. 1001. On July 2, 2013, the USPTO issued a
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`certificate of correction. Ex. 1022.
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`VMR-Ex. 1002-012
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`3.
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`The Issued Claims
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`24.
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`I refer to the elements of the issued claims as follows:
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`Claim 1
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`1. [Preamble] An aerosol electronic cigarette, comprising:
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`[1.1] a battery assembly, an atomizer assembly and a cigarette bottle assembly,
`and a shell that is hollow and integrally formed;
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`[1.2] the battery assembly electrically connected with the atomizer assembly and
`both are located in the shell;
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`[1.3] the cigarette bottle assembly is detachably located in one end of the shell,
`and fits with the atomizer assembly inside it;
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`[1.4] the shell has through-air-inlets;
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`[1.5] the atomizer assembly is an atomizer, which includes a porous component
`and a heating body;
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`[1.6] the heating body is heating wire;
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`[1.7] the atomizer includes a frame;
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`[1.8] the porous component is supported by the frame;
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`[1.9] the heating wire is wound on the porous component;
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`[1.10] the frame has a run-through hole;
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`[1.11] a heating wire wound on a part of the porous component that is
`substantially aligned with the run-through hole; and
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`[1.12] with the porous component also positioned substantially within the
`cigarette bottle assembly.
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`2. [Preamble] An electronic cigarette, comprising:
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`Claim 2
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`12
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`VMR-Ex. 1002-013
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`[2.1] a battery assembly and an atomizer assembly within a housing with the
`battery assembly electrically connected to the atomizer assembly;
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`[2.2] a liquid storage component in the housing;
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`[2.3] with the housing having one or more through-air-inlets;
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`[2.4] the atomizer assembly including a porous component supported by a frame
`having a run-through hole;
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`[2.5] a heating wire wound on a part of the porous component in the path of air
`flowing through the run-through hole; and
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`[2.6] the porous component substantially surrounded by the liquid storage
`component.
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`3. [Preamble] An electronic cigarette, comprising:
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`Claim 3
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`[3.1] a battery assembly and an atomizer assembly within a housing with the
`battery assembly electrically connected to the atomizer assembly;
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`[3.2] with the housing having one or more through-air-inlets and an outlet;
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`[3.3] the atomizer assembly includes a frame having a run-through hole, and a
`porous component between the frame and the outlet;
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`[3.4] a heating wire wound on a part of the porous component which is
`substantially aligned with the run-through hole; and
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`[3.5] with the porous component in contact with a liquid supply in the housing.
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`V. CLAIM CONSTRUCTION
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`25.
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`It is my understanding that, in construing a claim term, one looks
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`primarily to the “intrinsic” patent evidence, which includes the words of the claims
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`VMR-Ex. 1002-014
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`themselves, the remainder of the patent specification, and the prosecution history.
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`It is also my understanding that “extrinsic” evidence, which is evidence external to
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`the patent and the prosecution history, may also be useful in interpreting patent
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`claims. Extrinsic evidence can include dictionaries, treatises, textbooks, and the
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`like.
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`26.
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`It is my understanding that claims subject to inter partes review
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`receive the broadest reasonable construction in light of the specification of the
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`patent in which it appears. For purposes of my analysis, I have operated under the
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`premise that claim terms take on their ordinary and customary meaning that the
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`terms would have to one of ordinary skill in the art in view of the specification of
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`the ‘742 Patent, except as specifically discussed below.
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`A.
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`Terms Construed
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`1.
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`“Porous Component”
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`27. All three independent claims of the ‘752 Patent recite a “porous
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`component.” Ex. 1001, col. 6, lns. 17, 33 and 46. While this term is entitled to the
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`broadest reasonable construction, it received treatment when a Request for Trial
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`was granted in connection with IPR2013-00387 regarding U.S. Patent No.
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`8,156,944 (“’944 Patent”). Ex. 1023. It is my understanding that the ‘742 Patent
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`is a divisional of the application that led to the ‘944 Patent and therefore both
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`patents share the same specification. In the Decision (“’944 Patent Decision”) by
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`14
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`VMR-Ex. 1002-015
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`the Patent Trial and Appeal Board (“PTAB”), “porous component” was interpreted
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`to be “a component of the atomizer assembly in the electronic cigarette that
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`includes pores and is permeable to liquid, such as cigarette solution from the
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`cigarette solution storage area.” Ex. 1023 at 11.
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`2.
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`“Frame”
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`28. All three independent claims of the ‘742 Patent recite a “frame.” Ex.
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`1001, col. 6, lns. 19, 34 and 45. The term “frame” was the subject of claim
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`construction proceedings in Fontem Ventures B.V. and Fontem Holdings 1 B.V. v.
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`VMR Products, LLC, Case No.: 2:14-cv-01655 (and related cases consolidated
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`with Case No. 2:14-cv-01645). Ex. 1014, Court’s Rulings on Claims Construction.
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`In those proceedings, the Patent Owner took the position that “frame” means “a
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`support.” Ex. 1014, p. 5. Although the Court disagreed with this construction, it
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`held that “frame” need not be a structure on which the porous component is set.
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`Id. at 5-7. Rather, “frame” means a “rigid structure.” Id. at 7.
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`3.
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`“Liquid Storage Component” or “Liquid Supply”
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`29. Claim 2 of the ‘742 Patent recites a “liquid storage component.” Ex.
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`1001, col. 6, ln 31. According to the Court’s Rulings on Claims Construction, this
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`term did not require construction, but was not limited to a hollow, walled container
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`for storing liquid. Ex. 1014, p. 19-21. Claim 3 of the ‘742 Patent recites a “liquid
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`supply.” Ex. 1001, col. 6, ln. 51. According to the Court’s Rulings on Claims
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`15
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`VMR-Ex. 1002-016
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`Construction, this term did not require construction, but was not limited to a liquid
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`supply bottle. Ex. 1014, p. 19-21.
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`4.
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`“Integrally Formed”
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`30. Claim 1 of the ‘742 Patent recites a shell that is hollow and “integrally
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`formed.” Ex. 1001, col. 6, lns. 8-9. According to the Court’s Rulings on Claims
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`Construction, this term means “formed by parts that make up a whole.” Ex. 1014,
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`p. 10. I do not believe that the Court’s construction excludes, or that the broadest
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`construction would exclude, shells (or housings) made of one piece.
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`5.
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`“Substantially”
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`31. All three independent claims of the ‘742 Patent recite the term
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`“substantially.” Ex. 1001, col. 6, lns. 24, 37 and 49. Specifically, claims 1 and 3
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`require a porous component that is “substantially aligned with the run-through
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`hole” and claim 2 requires a porous component that is “substantially surrounded by
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`the liquid storage component.” Id. According to the Court’s Rulings on Claims
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`Construction, in the context of claims 1 (and therefore 3) and 2, “substantially”
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`means “largely but not completely.” Ex. 1014, p. 26. Under this definition, the
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`majority of the porous component need not be aligned with the run-through hole
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`(claims 1 and 3), or surrounded by the liquid storage component (claim 2). Indeed,
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`in the figures of the ‘742 Patent itself, the majority of the porous component is not
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`surrounded by the liquid storage component. Ex. 1001, ‘742 Patent, Fig. 1.
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`16
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`VMR-Ex. 1002-017
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`VI. OPINIONS REGARDING INVALIDITY OF ‘742 PATENT CLAIMS
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`32.
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`It is my opinion that claims 1, 2 and 3 of the ‘742 Patent are invalid as
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`being obvious under 35 U.S.C. § 103 based on first primary reference, Hon ‘043
`
`(Ex. 1004, and English translation Ex. 1005) and/or its PCT equivalent, Hon ‘494
`
`(Ex. 1006 and English Translation Ex. 1007) (collectively, “the Hon References”)
`
`in view of one of the secondary references: Susa (Ex. 1010), Abhulimen (Ex.
`
`1012), Whittemore (Ex. 1013) or Counts (Ex. 1011).
`
`33.
`
`It is also my opinion that claims 1, 2 and 3 of the ‘742 Patent are
`
`invalid as being obvious under 35 U.S.C. § 103(a) based on second primary
`
`reference Susa (Ex. 1010), alone, and in view of one of the secondary references
`
`Abhulimen (Ex. 1012) or Whittemore (Ex. 1013).
`
`34. Specifically, as ground 1, independent claims 1, 2 and 3 would have
`
`been obvious under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon
`
`‘494) in further view of Susa.
`
`35. As ground 2, independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Abhulimen.
`
`17
`
`VMR-Ex. 1002-018
`
`
`
`36. As ground 3, independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Whittemore.
`
`37. As ground 4: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Counts.
`
`38. As ground 5: independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa alone.
`
`39. As ground 6: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa in further view of Abhulimen.
`
`40. As ground 7: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa in further view of Whittemore.
`
`A. GROUND 1: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`HON ‘043 IN FURTHER VIEW OF SUSA
`
`41. Hon ‘043 issued on August 24, 2005. Ex. 1005, Hon ‘043 (English
`
`translation), p. 1. The PCT application equivalent is Hon ‘494, which was
`
`published on October 27, 2005. Ex. 1007, Hon ‘494 (English translation), cover
`
`page.2 Both references name as the inventor Lik Hon, who is the inventor named
`
`2
`The English translation of Hon ‘043 (Ex. 1004) is Ex. 1005. However,
`
`because the translation does not have paragraph numbers or line numbers, citations
`
`18
`
`VMR-Ex. 1002-019
`
`
`
`on the ‘742 Patent. Ex. 1001, cover page; Ex. 1007, Hon ‘494, p. 1. Hon ‘494 is
`
`directed to an electronic atomizing cigarette and discloses a shell 14, an air inlet 4,
`
`a battery 2, an atomizer 9, a liquid-supplying bottle 11, a porous body 27, a cavity
`
`wall 25 and a heating element RL. Ex. 1007, Hon ‘494, Fig. 1; p.1, lns. 4-5; p. 3,
`
`lns. 15-18, 35-37; p. 4, lns. 2 and 18-27.
`
`42. As noted above, during prosecution of the application that led to the
`
`‘742 Patent, the Applicant agreed with the Examiner’s findings, and therefore
`
`conceded, that Hon ‘043 was a close prior art reference that did not teach “an
`
`atomizer, which includes a porous component and a heating body; the said heating
`
`body is heating wire . . . the heating wire is wound on the said porous component”.
`
`In response to this finding, Applicant added this limitation to achieve patentability.
`
`This limitation, however, was long known in the prior art as reflected in several
`
`references provided herein. Accordingly, the single limitation allegedly not
`
`disclosed in Hon ‘043 is disclosed in other patents and publications that were well
`
`known, and the combinations would have been obvious to one of ordinary skill in
`
`the art, particularly given the prevalence of the feature. As explained in detail
`
`below, claims 1, 2 and 3 of the ‘742 Patent are unpatentable under 35 U.S.C. §
`
`will be made to the certified English translation of the PCT equivalent, Hon ‘494
`
`(Exhibit 1007). For ease of reference, and to avoid confusion, all citations to the
`
`prior art will use the original page numbers where columns are not available.
`
`19
`
`VMR-Ex. 1002-020
`
`
`
`103(a) as being obvious in view of Hon ‘043 (Hon ‘494) in further view of several
`
`secondary references.
`
`1.
`
`
`
`
`
`Independent claim 1
`
`a.
`
`Preamble – [1] an aerosol electronic cigarette
`
`43. The preamble of claim 1 recites “an aerosol electronic cigarette.” Ex.
`
`1001, col. 6, ln. 6. Hon ‘494 discloses an aerosol electronic cigarette. Hon ‘494 is
`
`entitled “An Aerosol Electronic Cigarette.” Ex. 1007, Hon ‘494, cover page, Title.
`
`b.
`
`[1.1] a battery assembly, an atomizer assembly and a
`cigarette bottle assembly, and a shell that is hollow
`and integrally formed
`
`44. Claim 1 recites “a battery assembly, an atomizer assembly and a
`
`cigarette bottle assembly, and a shell that is hollow and integrally formed.” Ex.
`
`1001, col. 6, lns. 7-9. Hon ‘494 discloses this limitation. As reflected in Figure 1,
`
`and the accompanying description, “A LED 1, a cell 2, an electronic circuit board
`
`3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an atomizer 9,
`
`a liquid-supplying bottle 11 and a mouthpiece 15 are sequentially provided within
`
`the shell 14.” Ex. 1007, Hon ‘494, p. 3, lns. 15-18; see also, p. 6, lns. 1-18, claim
`
`1.
`
`20
`
`VMR-Ex. 1002-021
`
`
`
`
`
`c.
`
`[1.2] the battery assembly electrically connected with
`the atomizer assembly and both are located in the
`shell
`
`45. Claim 1 recites “the battery assembly electrically connected with the
`
`atomizer assembly and both are located in the shell.” Ex. 1001, col. 6, ln. 10-11.
`
`Hon ‘494 discloses this limitation. Figure 12 shows the electric connection
`
`between the battery (circled in green) and the atomizer including first piezoelectric
`
`element M1 and heating element RL (both circled in red). The locations of M1
`
`and RL in the atomizer are shown in Fig. 6.
`
`Ex. 1007, , p. 3, ln. 50-p. 4, ln. 10.
`
`46.
`
`“Cell 2” and “atomizer 9” are “provided within the shell 14.” Ex.
`
`1007, Hon ‘494, p. 3, lns. 15-18; p. 6, lns. 1-18, claim 1.
`
`
`
`21
`
`VMR-Ex. 1002-022
`
`
`
`d.
`
`[1.3] the cigarette bottle assembly is detachably
`located in one end of the shell, and fits with the
`atomizer assembly inside it
`
`47. Claim 1 recites “the cigarette bottle assembly is detachably located in
`
`one end of the shell, and fits with the atomizer assembly inside it.” Ex. 1001, col.
`
`6, lns. 12-14. Hon ‘494 discloses this limitation. Hon ‘494 discloses a detachable
`
`liquid supply bottle. “The mouthpiece 15 is threaded” so when the solution in the
`
`liquid-supplying bottle is used up, “users can screw the mouthpiece 15 out to take
`
`the liquid-supplying bottle 11 out, refill the liquid-supplying bottle 11 with the
`
`nicotine solution, put the liquid-supplying bottle 11 into the shell 14 again, and
`
`then screw the mouthpiece 15.” Ex. 1007, Hon ‘494, Fig. 1, p. 4, lns 34-39.
`
`48. Hon ‘494 not only discloses that the atomizer can be fit inside the
`
`liquid supply bottle, the disclosure of this aspect is virtually identical to the
`
`disclosure in the ‘742 Patent.
`
`Ex. 1007, Hon ‘494, Fig. 1.
`
`
`
`49.
`
`“The atomizer 9 is in contact with the liquid-supplying bottle 11 via
`
`the bulge 36” (circled in green above). Ex. 1007, Hon ‘494, p. 3, lns. 24-26.
`
`22
`
`VMR-Ex. 1002-023
`
`
`
`e.
`
`[1.4] the shell has through-air inlets
`
`50. Claim 1 recites “the shell has through-air inlets.” Ex. 1001, col. 6, ln.
`
`15. Hon ‘494 discloses this limitation. According to Hon ‘494, “air inlet 4 is
`
`provided on the external wall of the shell 14.” Ex. 1007, Hon ‘494, Fig. 1, p. 3, ln.
`
`15.
`
`
`
`f.
`
`[1.5] the atomizer assembly is an atomizer, which
`includes a porous component and a heating body
`
`51. Claim 1 recites “the atomizer assembly is an atomizer, which includes
`
`a porous component and a heating body.” Ex. 1001, col. 6, ln. 16-17. Hon ‘494
`
`discloses this limitation. Figure 6 is a structural diagram of the atomizer. Ex.
`
`1007, Hon ‘494, Fig. 6, p. 2, ln. 48. In operation, the nicotine solution is driven
`
`into “porous body 27” and ejected into “atomization cavity 10,” where the solution
`
`is subjected to “ultrasonic atomization” by the “first piezoelectric element M1” and
`
`atomized by the “heating element RL.” Ex. 1007, Hon ‘494, p. 4, lns 24-27.
`
`g.
`
`[1.6] the heating body is heating wire
`
`52. Claim 1 recites “the heating body is heating wire.” Ex. 1001, col. 6,
`
`ln. 18. Hon ‘494 discloses this limitation. The “heating element” can be made of
`
`23
`
`VMR-Ex. 1002-024
`
`
`
`platinum “wire,” nickel chromium alloy or iron chromium aluminum alloy “wire”
`
`with rare earth element. Ex. 1007, Hon ‘494, p. 2, lns. 16-18.
`
`h.
`
`[1.7] the atomizer includes a frame; and
`[1.8] the porous component is supported by the frame
`
`53. Claim 1 recites “the atomizer includes a frame” and “the porous
`
`component is supported by the frame.” Ex. 1001, col. 6, ln. 19-20. Hon ‘494
`
`discloses these limitations.
`
`
`
`54. The “atomization cavity wall 25” is a frame which supports the
`
`porous component. Ex. 1007, Hon ‘494, Fig. 6. The porous component is
`
`“arranged around the atomization cavity wall” which “can be made of aluminum
`
`oxide or ceramic.” Ex. 1007, Hon ‘494, p. 2, lns. 12; p. 3, ln. 38. Alternatively,
`
`Hon ‘494 discloses that the atomizer includes a vapor-liquid separator (7), which
`
`also constitutes a frame that supports the porous component. Ex. 1007, Hon ‘494,
`
`Figs. 9 and 10, p. 1, lns. 40-41. The vapor-liquid separator is “sequentially
`
`interconnected” with the atomizer and “can be made of plastic or silicon rubber.”
`
`24
`
`VMR-Ex. 1002-025
`
`
`
`Ex. 1007, Hon ‘494, p. 1
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