Exhibit C1
`
`
`
`U.S. Patent No. 5,249,586 (“Morgan”), alone or in combination with other prior art, anticipates and/or renders obvious under 35 U.S.C. §§ 102 and
`103 the asserted claims (27-30) of U.S. Patent No. 9,901,123 (the “’123 patent”)
`
`Respondents apply the prior art in light of Complainant’s improper assertions of infringement and improper application of the claims. Respondents
`do not agree with Complainant's application of the claims, or that the claims satisfy 35 U.S.C. § 112. Respondents’ disclosures herein are not, and
`should in no way be seen as, admissions or adoptions as to any particular claim scope or construction, or as any admission that any particular element
`is met in any particular way. Respondents’ initial patent disclosures are made in a variety of alternatives and do not represent Respondents’
`agreement or view as to the meaning, definiteness, written description support for, or enablement of any claim contained therein. The citations to the
`prior art below are exemplary and identify exemplary instances where the prior art discloses a given limitation expressly, implicitly, and/or
`inherently.
`
`Where Respondents cite to a particular figure in Morgan or in other art, the citation should be understood to encompass, in addition to the figure
`itself, the caption and description of the figure, and any text relating to the figure. Similarly, where a cited portion of text refers to a figure, the
`citation should be understood to include the figure as well. In addition, citations necessarily include any contextual description and disclosure in
`Morgan.
`
`
`U.S. Patent No. 9,901,123
`Cl.
`27(pre) An electrically-powered, aerosol-generating
`smoking article comprising:
`
`U.S. Patent No. 5,249,586
`To the extent the preamble is limiting, Morgan discloses and/or renders obvious this
`limitation.
`
`See, e.g.,
`
`“An article is provided in which a replaceable tobacco flavor medium is electrically
`heated by a set of permanent reusable heaters to evolve inhalable flavors or other
`components in vapor or aerosol form.” Morgan at Abstract.
`
`“An electrical smoking article according to the present invention can be used, for
`example, to simulate a cigarette.” Id. at 3:9-11.
`
`“The parameters of the heaters are chosen to allow delivery of an effective amount of
`tobacco flavor substance-e.g., an aerosol containing tobacco flavors-to the consumer
`under standard conditions of use.” Id. at 3:58-61.
`
`
`1
`
`Ex. 1037-001
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`27(a)
`
`an electrical power source in the form of a
`battery within a tubular outer housing having
`a mouth-end and an end distal to the mouth-
`end;
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`Morgan at Fig. 2.
`
`“Article 10 includes reusable or "permanent" portion 20 and disposable filter/flavor
`portion or cartridge 21 which is received in a cavity 30 at the mouth end of portion 20.
`Reusable portion 20 includes, at the end remote from the mouth end, a power source 22,
`which could include a battery, a capacitor or both. The battery could be replaceable,
`rechargeable or both. If the battery is rechargeable, or if power source 22 is a capacitor
`alone, then article 10 is provided with charging contacts 11 on its outer surface, for
`connection to an external power supply (not shown) for charging power source 22.
`Power source 22 provides power for heating elements 23, which are energized under the
`control of control circuit 24, which is in turn actuated by pushbutton 25 or by a puff-
`actuated sensor (not shown). Indicators 26, which could be light-emitting diodes or other
`visual indicators, reflect the status of the various heaters 23. The functions of power
`source 22, control circuit 24, pushbutton 25 (or a puff-actuated sensor), and indicators
`26 are described in more detail in above-incorporated copending, commonly-assigned
`patent application Ser. No. 07/444,746, filed Dec. 1, 1989, now U.S. Pat. No. 5,060,671.
`Portion 20 is preferably covered by cigarette wrapping paper 31, to give it the appearance
`of a conventional cigarette. Perforations 12 may be provided in the wall of portion 20 to
`allow outside air to be drawn in during puffing, or outside air may be drawn through all
`of portion 20 via openings (not shown) at its far end 13.” Id. at 4:44-5:5.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`
`2
`
`Ex. 1037-002
`
`

`

`Cl.
`27(b)
`
`U.S. Patent No. 9,901,123
`at least one electrical resistance heater
`powered by said electrical power source,
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“Reusable portion 20 includes, at the end remote from the mouth end, a power source 22,
`which could include a battery, a capacitor or both. The battery could be replaceable,
`rechargeable or both. If the battery is rechargeable, or if power source 22 is a capacitor
`alone, then article 10 is provided with charging contacts 11 on its outer surface, for
`connection to an external power supply (not shown) for charging power source 22.
`Power source 22 provides power for heating elements 23, which are energized under the
`control of control circuit 24, which is in turn actuated by pushbutton 25 or by a puff-
`actuated sensor (not shown).” Morgan at 4:48-59.
`
`“An article is provided in which a replaceable tobacco flavor medium is electrically
`heated by a set of permanent reusable heaters to evolve inhalable flavors or other
`components in vapor or aerosol form.” Id. at Abstract.
`
`“More preferably, the heaters should have an active surface area of between about 3 mm2
`and about 20 mm2 and a resistance of between about 1.0 ohm and 1.6 ohms. These
`requirement are interrelated, because heater power consumption is determined by
`resistance, which in turn is determined by resistivity and size.” Id. at 4:9-15.
`
`“25. The article of claim 1 wherein said electrical heating means has a resistance of
`between about 0.5 ohm and about 3.0 ohms.” Id. at Claim 25.
`
`“26. The article of claim 25 wherein said electrical heating means has a resistance of
`between about 1.0 ohm and 1.6 ohms.” Id. at Claim 26.
`Id. at Figs. 2-8.
`
`“Alternatively, the heaters can protrude from the end of the cavity, so that they actually
`pierce and extend into the disposable portion.” Id. at 3:33-36.
`
`“In another embodiment 70 shown in FIGS. 7 and 8, heating elements 71 are spaced
`somewhat further from the wall of cavity 30, and each is provided with a somewhat
`
`3
`
`Ex. 1037-003
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`sharper “V” tip 72, as well as with fold 73 to increase their rigidity. In this way, heating
`elements 71 actually pierce and extend into disposable portion 21 to provide the desired
`intimate thermal contact.” Id. at 6:46-52.
`
`“The circuitry is designed so that at least one but less than all of the heating elements are
`actuated for any one puff, so that a pre-determined number of puffs, each containing a
`premeasured amount of tobacco flavor substance, is delivered to the smoker.” Id. at
`1:32-36.
`
`“Heating elements 23 are preferably distributed substantially uniformly around the
`circumference of cavity 30, and should preferably be spaced apart sufficiently that the
`regions of disposable portion 21 heated by neighboring heating elements 23 do not
`overlap, which could lead to reheating and the production of undesired compounds and
`off tastes.” Id. at 5:18-25.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`
`See, e.g.,
`
`UCSF Declaration of Custodian Records, Attachment 1 at 2051806791 (“Method of
`Making a Bullet Shaped Heater: This heater has a shape of a bullet with very sharp head
`(tip) that upon insersion into a cigarette rod would cut the fillers and compress them to
`the sides and position itself [] right at the middle of the cigarette rode.”
`
`
`4
`
`Ex. 1037-004
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`
`27(c)
`
`wherein at least a portion of the resistance
`heating element is elongated and extending
`downstream toward the mouth-end of the
`outer housing, the elongated portion of the
`resistance heating element positioned
`proximal to the center of the outer housing;
`
`
`
`
`See also UCSF Declaration of Custodian Records, Attachment 8 at 2059673307 (“Bullet
`shaped heater . . . [e]liminates smoke condensate inside the article and off-taste from
`paper since no paper is burned.”).
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“Reusable portion 20 includes, at the end remote from the mouth end, a power source 22,
`which could include a battery, a capacitor or both. The battery could be replaceable,
`rechargeable or both. If the battery is rechargeable, or if power source 22 is a capacitor
`alone, then article 10 is provided with charging contacts 11 on its outer surface, for
`connection to an external power supply (not shown) for charging power source 22.
`Power source 22 provides power for heating elements 23, which are energized under the
`control of control circuit 24, which is in turn actuated by pushbutton 25 or by a puff-
`actuated sensor (not shown).” Morgan at 4:48-59.
`
`“An article is provided in which a replaceable tobacco flavor medium is electrically
`heated by a set of permanent reusable heaters to evolve inhalable flavors or other
`components in vapor or aerosol form.” Id. at Abstract.
`
`“More preferably, the heaters should have an active surface area of between about 3 mm2
`5
`
`Ex. 1037-005
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`and about 20 mm2 and a resistance of between about 1.0 ohm and 1.6 ohms. These
`requirement are interrelated, because heater power consumption is determined by
`resistance, which in turn is determined by resistivity and size.” Id. at 4:9-15.
`
`“25. The article of claim 1 wherein said electrical heating means has a resistance of
`between about 0.5 ohm and about 3.0 ohms.” Id. at Claim 25.
`
`“26. The article of claim 25 wherein said electrical heating means has a resistance of
`between about 1.0 ohm and 1.6 ohms.” Id. at Claim 26.
`
`Id. at Figs. 2-8.
`
`“Alternatively, the heaters can protrude from the end of the cavity, so that they actually
`pierce and extend into the disposable portion.” Id. at 3:33-36.
`
`“In another embodiment 70 shown in FIGS. 7 and 8, heating elements 71 are spaced
`somewhat further from the wall of cavity 30, and each is provided with a somewhat
`sharper “V” tip 72, as well as with fold 73 to increase their rigidity. In this way, heating
`elements 71 actually pierce and extend into disposable portion 21 to provide the desired
`intimate thermal contact.” Id. at 6:46-52.
`
`“The circuitry is designed so that at least one but less than all of the heating elements are
`actuated for any one puff, so that a pre-determined number of puffs, each containing a
`premeasured amount of tobacco flavor substance, is delivered to the smoker.” Id. at
`1:32-36.
`
`“Heating elements 23 are preferably distributed substantially uniformly around the
`circumference of cavity 30, and should preferably be spaced apart sufficiently that the
`regions of disposable portion 21 heated by neighboring heating elements 23 do not
`overlap, which could lead to reheating and the production of undesired compounds and
`off tastes.” Id. at 5:18-25.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`
`6
`
`Ex. 1037-006
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`
`See, e.g.,
`
`UCSF Declaration of Custodian Records, Attachment 1 at 2051806791 (“Method of
`Making a Bullet Shaped Heater: This heater has a shape of a bullet with very sharp head
`(tip) that upon insersion into a cigarette rod would cut the fillers and compress them to
`the sides and position itself [] right at the middle of the cigarette rode.”
`
`
`27(d)
`
`a controller within the tubular outer housing
`and adapted for regulating current flow
`through the electrical resistance heater; and
`
`
`
`
`See also UCSF Declaration of Custodian Records, Attachment 8 at 2059673307 (“Bullet
`shaped heater . . . [e]liminates smoke condensate inside the article and off-taste from
`paper since no paper is burned.”).
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“Power source 22 provides power for heating elements 23, which are energized under the
`control of control circuit 24, which is in turn actuated by pushbutton 25 or by a puff-
`actuated sensor (not shown). Indicators 26, which could be light-emitting diodes or other
`visual indicators, reflect the status of the various heaters 23. The functions of power
`
`7
`
`Ex. 1037-007
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`source 22, control circuit 24, pushbutton 25 (or a puff-actuated sensor), and indicators
`26 are described in more detail in above-incorporated copending, commonly-assigned
`patent application Ser. No. 07/444,746, filed Dec. I, 1989, now U.S. Pat. No. 5,060,671.”
`Morgan at 4:56-67.
`
`Id. at Fig. 2
`
`“Suitable control circuitry is described in above-incorporated copending, commonly-
`assigned patent application Ser. No. 07/444,746, filed Dec. 1, 1989, now U.S. Pat. No.
`5,060,671.” Id. at 3:20-25.
`
`“An electrical smoking generating article is described in commonly-assigned U.S. patent
`application Ser. No. 07/444,746, filed Dec. 1, 1989, now U.S. Pat. No. 5,060,671, which
`was copending with parent application Ser. No. 07/666,926, filed Mar. 11, 1991, and
`which is hereby incorporated by reference in its entirety. That application describes an
`electrical smoking article which is provided with a disposable set of electrical heating
`elements on each of which is deposited an individual charge of tobacco flavor medium
`containing, for example, tobacco or tobacco-derived material. The disposable heater
`/flavor unit is mated to a more or less permanent unit containing a source of electrical
`energy such as a battery or capacitor, as well as control circuitry to actuate the heating
`elements in response to a puff by a smoker on the article or the depression of a manual
`switch. The circuitry is designed so that at least one but less than all of the heating
`elements are actuated for any one puff, so that a pre-determined number of puffs, each
`containing a premeasured amount of tobacco flavor substance, is delivered to the smoker.
`The circuitry also preferably prevents the actuation of any particular heater more than
`once, to prevent overheating of the tobacco flavor medium thereon and consequent
`production of undesired compounds yielding off tastes.” Id. at 1:15-41.
`
`“The functions of power source 22, control circuit 24, pushbutton 25 (or a puff-actuated
`sensor), and indicators 26 are described in more detail in above-incorporated
`copending, commonly-assigned patent application Ser. No. 07/444,746, filed Dec. 1,
`1989, now U.S. Pat. No. 5,060,671.” Id. at 4:62-67.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`
`8
`
`Ex. 1037-008
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`27(e)
`
`a cigarette-type device removably engaged
`with the mouth-end of the tubular outer
`housing and comprising a tobacco segment
`circumscribed by a wrapping material and
`comprising a tobacco material and an
`aerosol-forming material, wherein the
`elongated portion of the resistance heating
`element extends into the tobacco segment
`when the cigarette-type device is engaged
`with the mouth-end of the outer housing,
`such that during draw, aerosol-forming
`material can be volatilized to produce a
`visible mainstream aerosol incorporating
`tobacco components or tobacco-derived
`components that can be drawn into the mouth
`of the user of the smoking article.
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“An electrical smoking article according to the present invention can be used, for
`example, to simulate a cigarette. In such a case, the tobacco flavor medium would
`be a material containing tobacco or tobacco derivatives. In accordance with the
`invention, the electrical article would include a removable disposable portion which
`included the tobacco flavor medium and, if desired, a filter, and a reusable "permanent"
`portion including a source of electrical energy, a set of reusable heating elements, and
`control circuitry for energizing the heaters in an appropriate sequence, in response to
`manual actuation or puff-induced actuation.” Morgan at 3:9-20.
`
`“The reusable or permanent portion includes a cavity at the mouth end thereof for
`insertion of the disposable portion. The reusable heaters are disposed in the cavity
`in such a·way that they make thermal contact with the disposable portion when the
`disposable portion is inserted into the cavity.” Id. at 3:25-31.
`
`“The parameters of the heaters are chosen to allow delivery of an effective amount of
`tobacco flavor substance-e.g., an aerosol containing tobacco flavors-to the consumer
`under standard conditions of use.” Id. at 3:58-61.
`
`“A first preferred embodiment of an electrical smoking article 10 according to the
`invention is shown in FIGS. 1-4. Article 10 includes reusable or "permanent" portion 20
`and disposable filter/flavor portion or cartridge 21 which is received in a cavity 30 at the
`mouth end of portion 20.” Id. at 4:42-47.
`
`“Disposable portion 21 preferably includes a flavor segment 27 and a filter segment 28,
`attached by a plug wrap or other fastening means (not shown). Filter segment 28 is
`preferably a conventional cellulose acetate filter segment, and preferably is very short,
`being provided mostly for the sake of appearance and to give article 10 a “mouth feel”
`
`9
`
`Ex. 1037-009
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`similar to a conventional cigarette. Flavor segment 27 can be any material that liberates
`flavors when hot air passes over or through it. Preferably, flavor segment 27 is a
`cylindrical portion of an extruded open-cell foamed tobacco product of the kind
`described in commonly-assigned U.S. Patent No. 4,510,950, which is hereby
`incorporated by reference in its entirety, except that approximately 10% of an aerosol
`precursor such as glycerine is added to the composition. It is desirable to add an aerosol
`precursor to deliver the tobacco flavor substance as an aerosol, so that when the
`consumer exhales the tobacco flavor substance, the visible condensed aerosol may mimic
`the appearance of cigarette smoke.” Id. at 5:26-46. See also, id. at 5:47-68.
`
`“The length of portion 21 is preferably such that some part of filter segment 28 protrudes
`from cavity 30 to aid removal of spent portions 21. However, portion 21 could be
`inserted flush into cavity 30, and a separate ejection mechanism (not shown) could be
`provided.” Id. at 5:65-6:2. See also, id. at 5:34-6:7.
`
`“The diameter of filter/flavor portion 21 is at most equal to the inner diameter of cavity
`30, and should be at least somewhat greater than the diameter of the cylindrical space
`between heating elements 23, which are bowed out from the wall of cavity 30 as
`discussed above, so that elements 23 press into flavor segment 27 for intimate thermal
`contact. To that end, flavor segment 27 should be firm but compressible.” Id. at 5:47-54.
`
`“In another embodiment 70 shown in Figs. 7 and 8, heating elements 71 are spaced
`somewhat further from the wall of cavity 30, and each is provided with a somewhat
`sharper “V” tip 72, as well as with fold 73 to increase their rigidity. In this way, heating
`elements 71 actually pierce and extend into disposable portion 21 to provide the desired
`intimate thermal contact.” Id. at 6:46-53.
`
`Id. at Figs. 1-2, 7-8.
`
`“3. The article of claim 1 wherein said cavity and said removable portion are
`substantially cylindrical and have substantially the same diameter.” Id. at Claim 3.
`
`“4. The article of claim 3 wherein said removable portion is longer than said cavity and
`has an end protruding from said cavity, said protruding end providing a grip for said
`
`10
`
`Ex. 1037-010
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`smoker for insertion and removal of said portion.” Id. at Claim 4.
`
`“10. The article of claim 1 wherein said tobacco flavor medium comprises an extruded
`tobacco material.” Id. at Claim 10.
`
`“11. The article of claim 10 wherein said extruded tobacco material is a tobacco foam
`material.” Id. at Claim 11.
`
`“12. The article of claim 11 wherein said tobacco foam material is an open-cell foam.”
`Id. at Claim 12.
`
`“13. The article of claim 11 wherein: said tobacco foam material comprises an aerosol
`forming material; and when said tobacco flavor medium is heated, an aerosol comprising
`tobacco components is formed.” Id. at Claim 13.
`
`“14. The article of claim 13 wherein said aerosol-forming material comprises glycerine.”
`Id. at Claim 14.
`
`“15. The article of claim 1 wherein: said tobacco flavor medium comprises tobacco; and
`when said tobacco flavor medium is heated, a tobacco flavor substance comprising
`tobacco components is formed.” Id. at Claim 15.
`
`“16. The article of claim 1 wherein: said tobacco flavor medium comprises an aerosol
`forming material; and when said tobacco flavor medium is heated, an aerosol is formed.”
`Id. at Claim 16.
`
`“17. The article of claim 16 wherein said aerosol-forming material comprises glycerine.”
`Id. at Claim 17.
`
`“18. The article of claim 17 wherein said aerosol-forming material further comprises
`water.” Id. at Claim 18.
`
`“19. The article of claim 16 wherein said aerosol-forming material comprises water.”
`Id. at Claim 19.
`
`11
`
`Ex. 1037-011
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`28
`
`The smoking article of claim 27, wherein the
`cigarette-type device further comprises a
`filter element downstream from the tobacco
`segment.
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`
`“20. The article of claim 1 wherein: said tobacco flavor medium comprises tobacco and
`an aerosol-forming material; and when said tobacco flavor medium is heated, an aerosol
`comprising tobacco components is formed.” Id. at Claim 20.
`
`“22. The article of claim 20 wherein said aerosol-forming material comprises glycerine.”
`Id. at Claim 22.
`
`“23. The article of claim 22 wherein said aerosol-forming material further comprises
`water.” Id. at Claim 23.
`
`“24. The article of claim 20 wherein said aerosol-forming material comprises water.” Id.
`at Claim 24.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“Disposable portion 21 preferably includes a flavor segment 27 and a filter segment 28,
`attached by a plug wrap or other fastening means (not shown). Filter segment 28 is
`preferably a conventional cellulose acetate filter segment, and preferably is very short,
`being provided mostly for the sake of appearance and to give article 10 a “mouth feel”
`similar to a conventional cigarette. Flavor segment 27 can be any material that liberates
`flavors when hot air passes over or through it.” Morgan at 5:26-35.
`
`Id. at Fig. 2.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`
`12
`
`Ex. 1037-012
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`29
`
`The smoking article of claim 27, further
`comprising an actuation mechanism in the
`form of a switching mechanism that can be
`manually operated by the user in order to
`heat the cigarette-type device.
`
`30
`
`The smoking article of claim 27, wherein the
`electrical resistance heating element provides
`surface region temperatures of at least 200°
`C. and less than 600° C. such that the
`tobacco material does not burn during use.
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“The disposable heater /flavor unit is mated to a more or less permanent unit containing a
`source of electrical energy such as a battery or capacitor, as well as control circuitry
`to actuate the heating elements in response to a puff by a smoker on the article or the
`depression of a manual switch.” Morgan at 1:26-32.
`
`“In accordance with the invention, the electrical article would include a removable
`disposable portion which included the tobacco flavor medium and, if desired, a 15
`filter, and a reusable "permanent" portion including a source of electrical energy, a set of
`reusable heating elements, and control circuitry for energizing the heaters in an
`appropriate sequence, in response to manual actuation or puff-induced actuation.” Id. at
`3:13-20.
`
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`Morgan discloses and/or renders obvious this limitation.
`
`See, e.g.,
`
`“This invention relates to smoking articles in which tobacco flavor media are heated but
`not burned to release tobacco flavors.” Morgan at 1:11-13.
`
`“It has been found that in order to achieve such delivery, the heaters should be able to
`reach a temperature of between about 150˚ C. and about 500˚ C. when in contact with the
`tobacco flavor medium.” Id. at 3:65-68. See also id. at 3:65-4:2.
`
`
`13
`
`Ex. 1037-013
`
`

`

`Cl.
`
`U.S. Patent No. 9,901,123
`
`
`
`Exhibit C1
`
`U.S. Patent No. 5,249,586
`To the extent Complainants contend Morgan does not disclose or render obvious this
`limitation, this limitation was well known and/or it would have been obvious to use the
`methods and systems of Morgan and/or to combine Morgan with the other art identified
`herein.
`
`14
`
`Ex. 1037-014
`
`