PATENT COOPERATION TREATY
`
`From th~
`INTERNATIONAL SEARCHING AUTHORITY
`
`To:
`
`. see form PCT/ISA/220
`
`Applicant's or agent's file reference
`see form PCT/ISA~20
`
`International application No.
`PCTAJS2007..081461
`
`PCT
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`(PCT Rule 43bis.1)
`
`Date of mailing
`(day/month/year) see form PCTASA,210 (second sheel)
`
`FOR FURTHER ACTION
`See paragraph 2 below
`
`International filing date (dayAnonthlyear)
`16.10.2007
`·
`I
`
`Priority date (day/month/year)
`18.10.2006
`
`International Paten1 Classification (IPC) or both national classification and IPC
`INV. A24F47..00
`
`Applicant
`R. J. REYNOLDS TOBACCO COMPANY
`
`1.
`
`This opinion contains indications relating to the following items:
`
`!81
`Box No. I
`(cid:143)
`Box No. II
`!81
`Box No. Ill
`(cid:143)
`Box No. IV
`!81 B.ox No. V
`
`Basis of the opinion
`Priority
`Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
`Lack of unity of invention
`Reasoned statement under Rule 43bis.1 (a)(i) with regard to novelty, inventive step or industrial
`applicability; citations and explanations supporting such statement
`D Box No. VI Certain documents cited
`!81 Box No. VII Certain defects in the international application
`!81 Box No. VIII Certain observations on the international application
`
`2.
`
`FURTHER ACTION
`
`If a demand for international preliminary examination is made, this opinion will usually be considered to be a
`written opinion of the International Preliminary Examining Authority ("IPEA") except that this does not apply where
`the applicant chooses an Authority other than this one to be the IPEA and the chosen IPEA has notifed the
`International Bureau under Rule 66.1 bis(b) that written opinions of this International Searching Authority
`will not be so considered.
`·
`
`If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to
`submit to the IPEA a written reply together, where appropriate, with amendments, before the expiration of 3 months
`from the date of mailing of Form PCT/ISA/.220 or before the expiration of 22 months from the priority date,
`whichever expires later.
`·
`
`For further options, see Form PCTASA,220.
`
`3.
`
`For further details, see notes to Form PCTASA!.220.
`
`Name and mailing address of the ISA:
`
`European Patent Office
`D-80298 Munich
`Tel. +49 89 2399 • O Tx: 523656 epmu d
`Fax: +49 89 2399 -4465
`
`Date of completion of
`this opinion
`
`Authorized Officer
`
`see form
`PCTt1SAt210
`
`Maier, Michael
`
`Telephone No. +49 89 2399-2477
`
`Form (PCTASA/237) (Cover Sheet) (April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 001
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US2007,081461
`
`Box No.·-1 · Basis of the opinion
`
`1. With regard to the language, this opinion has been established on the basis of:
`
`181-
`(cid:143)
`
`. 2. (cid:143)
`
`the international application iri the language in which it was filed
`
`a translation of the international application into , which is the language of a translation furnished for the
`purposes of international search (Rules 12.3(a) and 23.1 (b)):
`
`This opinion has been established taking into account the rectification of an obvious mistake authorized
`by or notified to this Authority under Rule 91 (Rule 43bis.1 (a))
`·
`
`3. With regard to any nucleotide andibr amino acid sequence disclosed in the international application and
`necessary to the claimed invention, this opinion has been established on the basis of:
`
`a sequence listing
`
`table(s) related to the sequence listing
`
`a. type of material:
`(cid:143)
`(cid:143)
`b. format of material:
`(cid:143)
`· on paper
`(cid:143)
`in electronic form
`c. time of filingifurnishing:
`(cid:143) • contained in the international application as filed.
`(cid:143)
`filed together with the international application in electronic form.
`(cid:143)
`
`fumished subsequently to this Authority for the purposes of search:
`
`4. (cid:143)
`
`In addition, in the case that more than one version or copy of a sequence listing andibr table relating thereto
`has been filed or furnished, the required statements that the information in the subsequent or additional
`copies is identical to that in the application as filed or does not go beyo·nd the application as filed, as
`appropriate, were furnished.
`
`5. Additional comments:
`
`Form PCTASA/ 237 (April 2007)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 002
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/l.JS2007!081461
`
`Box No. Ill Non-establishment of opinion with regard to novelty, inventive step and industrial
`applicability
`
`The questions whether the claimed invention appears to be novel, to involve an inventive step (to be non
`obvious), or to be industrially applicable have not been examined in respect of
`(cid:143)
`121
`
`the entire international application
`
`claims Nos. 2-28
`
`because:
`(cid:143)
`
`the said international application, or the said claims Nos.
`not require an international search (specify):
`
`relate to the following subject matter which does
`
`121
`
`the description, claims or drawings (indicate particular elements below) or said claims Nos. 2-28 are so
`unclear that no meaningful opinion could be formed (specify):
`
`see separate sheet
`
`121
`
`the claims, or said claims Nos. 2-28 are so inadequately supported by the description that no meaningful
`opinion could be formed (specify):
`
`see separate sheet
`
`l2l no international search report has been established for the whole application or for said qlaims Nos. 2-28
`(cid:143)
`
`a meaningful opinion could not be formed without the sequence listing; the applicant did not, within the
`prescribed tir:ne limit:
`'
`(cid:143)
`
`furnish a sequence listing on paper complying with the standard provided for in Annex C of the
`Administrative Instructions, and·such listing was not available to the International Searching
`Authority in a form and manner acceptable to it.
`
`(cid:143)
`
`I
`
`furnish a sequence listing in electronic form complying with the standard provided for in Annex C
`of the Administrative_ Instructions, and such listing was not available to the International Searching
`Authority in a form and manner acceptable to it.
`·
`(cid:143) pay the required late furnishing fee for the furnishing of a sequence listing in response to an
`invitation under Rules 13ter.1 (a) or (b).
`
`,
`
`•
`
`(cid:143)
`
`(cid:143)
`(cid:143)
`
`a meaningful opinion could not be formed without the tables related to the sequence listings; the applicant
`did not, within the prescribed time limit, furnish such tables in electronic form complying with the technical
`requirements provided for in Annex C-bis of the Administrative Instructions, and such tables were not
`available to the International Searching Authority in a form and manner acceptable to it.
`
`the tables related to the nucleotide andibr amino acid sequence listing, if in electronic form only, do not
`comply with the technical requirements provided for in Annex C-bis of th_e Administrative Instructions.
`
`See Supplemental Box for further details
`
`Form PCTASA/237 (April 2007)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 003
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US2007,081461
`
`Box No. V Reasoned statement under Rule 43bis.1(a)(i) with regard to novelty, inventive step or
`industrial applicability; citations and explanations supporting such statement
`
`1.
`
`Statement
`
`Novelty (N)
`
`Inventive step (IS)
`
`Industrial applicability (IA)
`
`2.
`
`Citations and explanations
`
`see separate sheet
`
`Yes:
`No:
`
`Claims
`Claims
`
`Yes:
`No:
`
`Claims
`Claims
`
`Yes:
`No:
`
`Claims
`Claims
`
`1
`
`1
`
`1
`
`Box No. VII Certain defects in the international application
`
`The following defects in the form or contents of the international application have been noted:
`
`see separate sheet
`
`Box No. VIII Certain observations on the international application
`
`Th·e following observations on the clarity of the claims, description, and drawings or on the question whether the
`claims are fully supported by the description, are made:
`
`see separate sheet
`
`Form PCTASA/ 237 (April 2007)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 004
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING
`AUTHORITY (SEPARATE SHEET)
`
`. Re Item Ill
`
`International application No.
`
`PCT/US2007 /081461
`
`1
`
`The present claim 1 relates to an extremely large number bf possible apparatus.
`Support and disclosure in the sense of Article 6 and 5 PCT is to be found' however for
`orily a very small proportion of the apparatus claimed, see the first embodiment
`described from page 25, line 22, to page 32, line 21, and depicted in Fig. 1, However,
`this description relies to a great part on technical features not described at all in the
`present application, but in a multitude of prior art documents mentioned in the
`description. Particularly two devices "Ruyan Atomizing Electronic Pipe" and "Ruyan
`Atomizing Electronic Cigarette" are repeatedly referred to, which are not described in
`sufficient detail in the present application. The non-compliance with the substantive
`provisions is to such an extent, that the search was performed taking into
`consideration the non-compliance in determining the extent of the search of claim 1
`(PCT Guidelines 9.19 and 9.23).
`
`2
`
`The search of claim 1 was restricted to those claimed apparatus, which appear to be.
`supported by the passages indicated hereinabove.
`
`3 . · The present app.licatiori further contains 27 dependent claims, numbered claims 2-28.
`Taking into account the limited comprehensibility of the independent claim, which
`puts an undue burden on the start of substantive exaniination, there are so many
`dependent claims, and they are drafted in such a way and are particularly not
`supported by the description in an extent that the claims as a whole are not in
`compliance with the provisions of clarity, conciseness and full support by the
`description of Article 6 PCT, as they erect a smoke screen in front of the skilled
`reader when assessing what should be the subject-matter to search. The
`non-compliance with the s_ubstantive provisions is to such an extent, that no
`meaningful search could be carried out with regard to said claims 2-28 (PCT
`Guidelines 9.19). As no meaningful search could be carried out for the subject-matter
`of dependent claims 2-28, examination as to novelty, inventive step, and industrial
`applicability is not possible for these claims.
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 1) (EPO-April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 005
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING
`•· AUTHORITY.(SEPARATE SHEET)
`
`Re Item V
`
`1
`
`Reference is made to the following documents:
`
`D1: EP-A-0 430 559
`D2: US-A-4 981 522
`
`International application No.
`
`PCT/US2007/081461
`
`2
`
`The present application does not meet the·criteria of Article 33(1) PCT, because the
`subject-matter of claim 1, as far as it can be understood, does not involve ari
`inventive step in the sense of Article 33(3) PCT in the light of the documents D1 and
`D2 for the following seasons.
`
`2.1 The document D1 discloses (column 4, lines 15-35, column 15, line 51-column 17,
`Ii ne 14, Fig. 15-17, the references in parentheses referring to said document): a
`tobacco-containing; electrically-powered smoking article (139) comprising features (a)
`to (f) of claim 1 as follows:
`(a) an outer housing (141, 144) having a mouth-end (28) and an end distal to the
`mouth-end, wherein the mouth-end comprises an opening adapted for egress of an
`aerosol generated within the smoking article and the distal end comprises an opening
`(148) adapted for intake of air into the smoking article;
`(b) an electrical power source (154) within the outer housing and operatively
`positioned downstream of the opening in the distal end of the outer housing such that
`air entering the smoking article passes the electrical power source;
`(c) a first electrical resistance heating element (156) within the outer housing,
`powered by said electrical power source (154), and operatively positioned for heating
`airdrawn through the opening (148) in the distal end of the outer housing;
`(d) a tobacco material (12) positioned within the outer housing;
`(e) an aerosol-forming material (column 2, lines 41-62 of document D2 referred to at
`column 4, lines 27 to 31 of D1) positioned within the outer housing in fluid.
`communication with said tobacco material such that air can be drawn through both
`.the tobacco material and the aerosol-forming material;
`(f) a second electrical resistance heating element (150) within the outer ·housing,
`powered by said electrical power source (154), and operatively positioned for heating
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 2) (EPO.April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 006
`
`

`

`WRITTEN•OPINION OF THE
`INTERNATIONAL SEARCHING
`· AUTHORITY (SEPARATE SHEET)
`
`International application No. -
`
`PCT /US2007 /081461
`
`· .. the aerosol-forming material and tobacco material (12).
`
`2.2 The document further mentions (column 12, line 51 to column 13, Fig. 10) a control
`. circuit 98 comprising a pressure or flow sensor, and controlling the energy available
`to heating element 14 (column 13, lines 40 - 42) of the first described embodiment
`(column 3, line 34-column 11, line 55, Fig. 1-6). These features fully correspond to
`feature (g) - a puff-actuated controller adapted fo~ regulating current flow thre>ugh at
`least one of said first and second electrical resistance heating elements during draw,.
`the controller comprising a sensor adapted for sensing draw by the user on the
`smoking article,
`
`~-3 Column 7, lines 14 to 15 of D1 suggests to utilise active control systems in the
`described embodiments, which are further speci_fied in detail, including the control
`circuit depicted in Fig. 9 and 1 0 and described from column 9, line 51 to column 13,
`line 44. As the skilled person entrusted with the task to carry out a practically usable·
`apparatus using the guidance associated to the embodiment of Fig. 15, to 17 would
`find no obstacle to apply this teaching to the embodiment disclosed in Fig. 15-17 and
`comprising features (a) to (f) of claim 1, the subject-matter of claim 1 does not involve
`an inventive step in the light of the teachings of the document D1, taking into
`consideration the disclosure of the document D2 as referred to in D1 ..
`
`Therefore the subject-matter of claim 1, as far as it can be understood, does not
`involve an inventive step (Article 33(3) PCT).
`
`3
`
`The invention as specified in claim 1 is industrially applicable in the tobacco
`processing industry.
`
`Re Item VII
`
`1
`
`· Contrary to the requirements of Rule 5.1 (a)(ii) PCT, the relevant background art
`disclosed in the documents D1 and D2 is not mentioned in the description, nor are
`these documents identified therein.
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 3) (EPO-April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 007
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING
`AUTHORITY (SEPARATE SHEET)
`
`International application No.
`
`PCT/US2007/081461
`
`2 ·
`
`Independent claim 1 is not in the two-part form in accordance with Rul.e 6.3(b) PCT,.
`which in the present case would be appropriate, with those features known in
`combination from the prior art being placed in the preamble (Rule 6.3(b)(i) PCT) and
`with the remaining features being included in the characterising part (Rule 6.3(b)(ii)
`PCT).
`
`3
`
`4
`
`5
`
`The features of the·claims should be provided with reference signs placed in
`parentheses to increase the intelligibility of the claims (Rule 6.2 (b) PCT).
`
`The description indicated on pages 1-4, 11-20, 23-26, 33, 34 and 38 over 200
`· references to prior art, many of which are intended to be incorporated by reference.
`Therefore the requirements Rule 5.1 a) (ii) PCT are not met, as it is not possible for a
`person reading the application to det_ermine whether each piece of prior art cited in
`the application actually is useful for the understanding, searching and examination of
`· the invention, or not, see the PCT Guidelines, Appendix A4.05[2].
`
`The description of the preferred embodiments on pages 25 to 43 relies on
`incorporating by reference prior art documents in great numbers instead of indicating
`technical features necessary for carrying out the invention. Therefore the
`requirements of ~ule 5.1 (iii) and (v) PCT are not met. The designated offices may
`invite the applicant to excise any unnecessary references to prior art (Art 28(3) PCT).
`
`Re Item VIII
`
`1
`
`The features c), d) e) f) and g) of independent claim 1 differ in terminology and
`wording from what is described on pages 25 to 43 of the description as three
`embodiments of the present invention to an extent that the claims in their entirety are
`neither clear nor fully supported by the description, contrary to the requirement of
`Article 6 PCT. Particularly the features "operatively positioned for heating air drawn ...
`" in feature c), "operatively positioned for heating the aerosol-forming material and
`tobacco materiaL.. " in feature f), "positioned ... in fluid communication with said
`tobacco material such that air can be drawn through both the tobacco material and
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 4) (EPO-April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 008
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING
`AUTHORITY· (SEPARATE SHEET)
`
`International application No.
`
`PCT/US2007/081461
`
`the aerosol_-forming material" in feature e), and a "controller adapted for regulating ... "
`· and "a sensor adapted for sensing draw ... " in feature g) are broadly and vaguely
`worded in terms of results to be achieved, while the description does not give a clear
`·indication how these results can- be achieved. Furthermore, the description of the
`main embodiment on pages 25 to 29 relies for most of the essential features to
`referring to prior art documents, and particularly to devices called "Ruyan Atomizing
`Electronic Pipe" a~d "Ruyan Atomizing Electronic Cigarette" which are not introduced
`in further detail at all. The lack of compliance with rules 5.1 and 6.3 PCT is such that
`the claims in their entirety are not supported by the description, contrary to Article 6
`PCT, as it is not comprehensible what exactly is intended to be described. For the
`same reason, the description does not meet the requirements of Article 5 PCT with
`regard to sufficiently clear and complete disclosure of the invention.
`
`2
`
`As dependent claims 2 to 28 do not introduce technical features which correct the
`lacks of clarity and support of the independent clairry, the non-compliance with Article·
`6 PCT of the independent claim extends to the claims in their entirety.
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 5) (EPO-April 2005)
`
`Philip Morris Products, S.A.
`Exhibit 1034
`Page 009
`
`