IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent
`Attorney Docket No. 1021238-001249
`
`In re Patent Application of
`
`Gerard Zuber et al.
`
`Application No.: 12/954,701
`
`Filed: November 26, 2010
`
`For: ELECTRICALLY HEATED
`SMOKING SYSTEM WITH
`INTERNAL OR EXTERNAL
`HEATER
`
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`MAIL STOP AMENDMENT
`
`Group Art Unit: 1747
`
`Examiner: Phu Hoang Nguyen
`
`Confirmation No.: 5978
`
`AMENDMENT AND REPLY
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`In response to the Office Action dated June 28, 2012, Applicants respectfully
`
`request reconsideration of the outstanding rejections in view of these amendments
`
`and remarks.
`
`Amendments to the Claims begin on page 2.
`
`Remarks begin on page 4.
`
`Buchanan Ingerson,.;, Rooney Pc
`
`Attorneys & Government Relations Professionals
`
`Ex. 2036-0001
`
`
`
`Patent
`Attorney Docket No. 1021238-001249
`
`In re Patent Application of
`
`Gerard Zuber et al.
`
`Application No.: 12/954,701
`
`Filed: November 26, 2010
`
`For: ELECTRICALLY HEATED
`SMOKING SYSTEM WITH
`INTERNAL OR EXTERNAL
`HEATER
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`MAIL STOP AMENDMENT
`
`Group Art Unit: 1747
`
`Examiner: Phu Hoang Nguyen
`
`Confirmation No.: 5978
`
`AMENDMENT AND REPLY
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`In response to the Office Action dated June 28, 2012, Applicants respectfully
`
`request reconsideration of the outstanding rejections in view of these amendments
`
`and remarks.
`
`Amendments to the Claims begin on page 2.
`
`Remarks begin on page 4.
`
`Buchanan Ingerson,.;, Rooney Pc
`
`Attorneys & Government Relations Professionals
`
`Ex. 2036-0001
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954, 701
`Page 2
`
`AMENDMENTS TO THE CLAIMS:
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`
`application:
`
`LISTING OF CLAIMS:
`
`1.
`
`(Currently Amended) An electrically heated smoking system comprising:
`
`an aerosol forming substrate; and
`
`a heater for heating the substrate to form the aerosol, the heater including a
`
`first heating element,
`
`wherein the electrically heated smoking system and the first heating element
`
`are arranged such that, when the aerosol forming substrate is received in the
`
`electrically heated smoking system, the first heating element extends a distance only
`
`partially along a length of the aerosol forming-substrate, and the first heating element
`
`is positioned towards a downstream end of the aerosol forming substrate and
`
`wherein the first heating element is arranged to be inserted into the aerosol
`
`forming substrate such that a downstream end of the first heating element is
`
`upstream of the downstream end of the aerosol forming substrate.
`
`2.
`
`(Cancelled)
`
`3.
`
`(Cancelled)
`
`4.
`
`(Currently Amended) The electrically heated smoking system of Claim 1,
`
`wherein [[a]] the downstream end of the first heating element is upstream of the
`
`Ex. 2036-0002
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954.701
`Page 3
`
`downstream end of the aerosol forming substrate by a distance greater than or equal
`
`to about 1 mm.
`
`5.
`
`(Original) The electrically heated smoking system of Claim 1, wherein an
`
`upstream end of the first heating element is downstream of an upstream end of the
`
`aerosol forming substrate by a distance ranging from about 2 mm to about 6 mm.
`
`6.
`
`(Original) The electrically heated smoking system of Claim 5, wherein the
`
`upstream end of the first heating element is downstream of the-upstream end of the
`
`aerosol forming substrate by a distance of about 4 mm.
`
`7.
`
`(Original) The electrically heated smoking system of Claim 1, wherein the
`
`ratio of the distance that the first heating element extends along the aerosol forming
`
`substrate, to the length of the aerosol forming substrate, ranges from about 0.35 to
`
`about 0.6.
`
`8.
`
`(Original) The electrically heated smoking system of Claim 1, wherein the
`
`ratio of the distance that the first heating element extends along the aerosol forming
`
`substrate to the length of the aerosol forming substrate is about 0.5.
`
`9.
`
`(Original) The electrically heated smoking system of Claim 1, wherein the
`
`heater further includes a second heating element arranged, when the aerosol
`
`forming substrate is received in the electrically heated smoking system, to extend a
`
`distance only partially along the length of the aerosol forming substrate, and to be
`
`upstream of the first heating element.
`
`Ex. 2036-0003
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954,701
`Page4
`
`10.
`
`(Original) The electrically heated smoking system of Claim 9, wherein the
`
`separation between the upstream end of the first heating element and the
`
`downstream end of the second heating element is equal to or greater than about 0.5
`
`mm.
`
`11.
`
`(Original) The electrically heated smoking system of Claim 9, wherein the
`
`upstream end of the second heating element is downstream of the upstream end of
`
`the aerosol forming substrate by a distance ranging from about 2 mm to about 4 mm.
`
`12.
`
`(Original) The electrically heated smoking system of Claim 9, wherein the
`
`upstream end of the second heating element is downstream of the upstream end of
`
`the aerosol forming substrate by a distance of about 3 mm.
`
`13.
`
`(Original) The electrically heated smoking system of Claim 9, wherein the
`
`ratio of the distance that the first heating element and the second heating element
`
`together extend along the aerosol forming substrate, to the length of the aerosol
`
`forming substrate ranges from about 0.5 to about 0.8.
`
`14.
`
`(Original) The electrically heated smoking system of Claim 1, wherein the
`
`aerosol forming substrate is a solid substrate.
`
`15.
`
`(Original) The electrically heated smoking system of Claim 1, wherein the
`
`aerosol forming substrate is a liquid substrate.
`
`Ex. 2036-0004
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954, 701
`Page 5
`
`REMARKS
`
`This amendment responds to the Office Action dated June 28, 2012
`
`Claims 1-15 were subject to examination and have been rejected over the
`
`prior art. Claim 1 has been amended to include the features of Claim 3, which has
`
`been cancelled, and selected features of Claim 4, which has been amended. Claim
`
`2 has also been cancelled.
`
`Favorable reconsideration and withdrawal of the rejections is respectfully
`
`requested in view of the following remarks.
`
`Reiections under 35 U.S.C. §102
`
`a.
`
`Claims 1 and 2 were rejected under 35 U.S.C. §102(b) as being anticipated
`
`by Baggett et al. (U.S. Patent No. 5,915,387).
`
`While not acquiescing in the rejection, Claim 2 has been cancelled and Claim
`
`1 has been amended to include the features of Claim 3 and selected features of
`
`Claim 4. As neither Claim 3 nor Claim 4 was rejected as anticipated by Baggett, this
`
`rejection is moot and withdrawal is respectfully requested.
`
`Applicants note, however, that Claims 3 and 4 were rejected as obvious. To
`
`the extent the Office believes the obviousness rejection of Claims 3 and 4 is
`
`pertinent to Claim 1, this rejection is discussed below.
`
`b.
`
`Claim 1 was also rejected under 35 U.S.C. §102(b) as being anticipated by
`
`Deevi et al. (U.S. Patent No. 5,093,894).
`
`While not acquiescing in the rejection, Claim 1 has been amended to include
`
`the features of Claim 3 and selected features of Claim 4. As neither Claim 3 nor
`
`Ex. 2036-0005
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954, 701
`Page 6
`
`Claim 4 was rejected as anticipated by Deevi, this rejection is moot and withdrawal is
`
`respectfully requested.
`
`Applicants note, however, that Claims 3 and 4 were rejected as obvious. To
`
`the extent the Office believes the obviousness rejection of Claims 3 and 4 is
`
`pertinent to Claim 1, that rejection is discussed below.
`
`Rejections under 35 U.5.C. §103
`
`Claims 3-8 are rejected under 35 U.S.C. §103(a) as being unpatentable over
`
`Baggett et al. (U.S. Patent No. 5,915,387) in view of Adams et al. (U.S. Patent
`
`Application Publication No. 2007/0102013).
`
`Claim 3 has been cancelled thereby rendering this rejection moot as to Claim
`
`3.
`
`The Office states:
`
`Regarding claims 4-6, Adams discloses the
`downstream end of the first heating element is upstream
`of the downstream end of the aerosol forming substrate
`by a distance as shown in fig. 7; it would have been
`obvious to one of ordinary skill in the art to perform
`routine experimentation to arrive to the claimed range of
`length of the distance. (Official Action at page 4).
`
`Amended Claim 1 recites an electrically heated smoking system comprising:
`
`an aerosol forming substrate; and a heater for heating the substrate to form the
`
`aerosol, the heater including a first heating element, wherein the electrically heated
`
`smoking system and the first heating element are arranged such that, when the
`
`aerosol forming substrate is received in the electrically heated smoking system, the
`
`first heating element extends a distance only partially along a length of the aerosol
`
`forming-substrate, and the first heating element is positioned towards a downstream
`
`end of the aerosol forming substrate and wherein the first heating element is
`
`Ex. 2036-0006
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954, 701
`Page 7
`
`arranged to be inserted into the aerosol forming substrate such that a downstream
`
`end of the first heating element is upstream of the downstream end of the aerosol
`
`forming substrate.
`
`Under 35 U.S.C. § 103(a), the Examiner bears the initial burden of factually
`
`supporting any prima facie conclusion of obviousness. M.P.E.P. § 2142. As set
`
`forth in M.P.E.P. § 2143, one requirement for establishing a prima facie case of
`
`obviousness is that the combination of references must teach or suggest all the
`
`claim features (Emphasis Added). In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438
`
`(Fed. Cir. 1991).
`
`Baggett discloses an electrical smoking system. The smoking system
`
`includes a partially-filled, filler cigarette and a reusable lighter. The cigarette is
`
`adapted to be inserted into and removed from a receptacle at a front end portion of
`
`the lighter. (Col. 6, lines 1-5). However, as admitted in the Official Action at page 4,
`
`"Baggett does not expressly disclose the heating element is arranged to be inserted
`
`into the aerosol forming substrate."
`
`The Official Action turns to Adams for the alleged disclosure of "the
`
`downstream end of the first heating element is upstream of the downstream end of
`
`the aerosol forming substrate by a distance" and points to fig. 7 of Adams for this
`
`disclosure. (See Official Action at page 4).
`
`Adams discloses a heating assembly including an end piece 70 and a
`
`projection 72 as shown in Figure 7. The projection 72 can be inserted into and
`
`received by a tobacco plug. (See paragraph [0045] of Adams). However, since the
`
`heating assembly of Adams discloses that the heating assembly includes an end
`
`piece 70 as shown in Figure 7, Adams does not disclose that the downstream end of
`
`Ex. 2036-0007
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954,701
`Page 8
`
`the first heating element is upstream of the downstream end of the aerosol substrate
`
`as recited in amended Claim 1.
`
`Additionally, Applicants further note that Baggett teaches to superpose a
`
`portion of a heater footprint 98 over a void 91, with the heater being disposed
`
`adjacent a layer of tobacco material 60. (See Fig. 6 of Baggett). Applicants
`
`respectfully submit that the arrangement of Baggett and Adams cannot be combined
`
`without destroying the function of Baggett.
`
`For at least these reason, Claim 1 and all claims dependent thereon are
`
`patentable over Baggett in view of Adams.
`
`Claims 9-13 are rejected under 35 U.S.C. §103(a) as being unpatentable over
`
`Baggett et al. (U.S. Patent No. 5,915,387) in view of Deevi et al. (U.S. Patent No.
`
`5,093,894).
`
`Claims 9-13, which depend from Claim 1, are patentable for at least the
`
`reasons Claim 1 is patentable and further because Deevi fails to remedy the
`
`deficiencies of Baggett and Adams.
`
`Claim 15 is rejected under 35 U.S.C. §103(a) as being unpatentable over
`
`Baggett et al. (U.S. Patent No. 5,915,387) in view of Fernando et al. (U.S. Patent
`
`Application Publication No. 2009/0230117).
`
`Claim 15, which depends from Claim 1, is patentable for at least the reasons
`
`Claim 1 is patentable and further because Fernando fails to remedy the deficiencies
`
`of Baggett in view of Adams.
`
`Ex. 2036-0008
`
`
`
`Attorney Docket No. 1021238-001249
`Application No. 12/954,701
`Page 9
`
`Conclusion
`
`In view of the foregoing, it is submitted that all claims are in condition for
`
`allowance. Should any questions arise in connection with this application or should
`
`the Examiner believe that a telephone conference with the undersigned would be
`
`helpful in resolving any remaining issues pertaining to this application, the
`
`undersigned respectfully requests that he be contacted at the number indicated
`
`below.
`
`The Director is hereby authorized to charge any appropriate fees under 37
`
`C.F.R. §§1.16, 1.17 and 1.20(d) and 1.21 that may be required by this paper, and to
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`credit any overpayment, to Deposit Account No. 02-4800.
`
`Respectfully submitted,
`
`BUCHANAN INGERSOLL & ROONEY PC
`
`Date: October 31. 2012
`
`By:
`
`Customer No. 21839
`703 836 6620
`
`Ex. 2036-0009
`
`
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