DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-5, 9-10, 13-21, 23, 25-28 and 31-33 are pending.
Claims 1 and 10 have been amended.
Response to Arguments
Applicant's arguments filed 4/9/2026 have been fully considered but they are not persuasive.
Regarding the Applicant’s arguments that because amended claim 1 employs the phrase “consisting of” the Examiner must evaluate each recited alternative layer as limited to the expressly claimed material, rather than broadly equating prior-art coatings having fillers in addition to the claimed sheet layers or elements, the Examiner respectfully disagrees. The Applicant is reading limitations into the claims which are not supported by the claims, specifically “elements consisting of carbon nanotubes,” “elements consisting of fullerenes” and “elements consisting of graphene,” respectively, are not referring to layers.
The Examiner maintains the rejection that was affirmed by the Patent Board Decision on 9/19/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 1 recites that “the multi-layer inner wrapping material being selected from the group consisting of; a sheet layer consisting of graphene engaged with the foil sheet layer; a sheet layer consisting of graphene engaged with the foil sheet layer engaged with a tobacco sheet layer; a paper sheet layer engaged with a sheet layer consisting of graphene engaged with the foil sheet layer; elements consisting of carbon nanotubes engaged with a paper sheet layer engaged with the foil sheet layer; elements consisting of carbon nanotubes engaged with the foil sheet layer; elements consisting of fullerenes engaged with a paper sheet layer engaged with the foil sheet layer; elements consisting of fullerenes engaged with the foil sheet layer; and elements consisting of graphene engaged with the foil sheet layer;”
However there is no support in the original disclosure for “a sheet layer consisting of graphene”, “elements consisting of carbon nanotubes”, “elements consisting of fullerenes” or “elements consisting of graphene”.
The original disclosure states, “wrapping paper 90 may be configured as any of a paper- foil sheet laminate, a paper-foil-paper sheet laminate, a paper-foil-tobacco sheet laminate, a non- woven graphite sheet, a non-woven graphite and graphene composite sheet, a graphene sheet, a graphene-foil sheet laminate, a graphene-foil-paper sheet laminate, a paper-graphene sheet laminate, a graphene ink imprinted on a paper sheet, a graphene ink imprinted on a foil sheet, carbon nanotubes engaged with a paper sheet or a foil sheet, fullerenes engaged with a paper sheet or a foil sheet, and graphene engaged with a paper sheet or a foil sheet,” (page 13) and “In other aspects, a graphene foil or graphene conductive sheet can be placed between the cigarette paper (i.e., the outer wrapping material 75) and the aluminum foil (i.e., the foil sheet layer associated with the wrapping paper 90) to create a paper/graphene/foil laminate structure encompassing the outer wrapping material 75 and the wrapping paper 90,” (page 14).
However, the original disclosure does not support excluding all other components from the graphene layer, the carbon nanotubes layer, the fullerenes layer or graphene elements layer.
Claims 1-5, 9, 10, 13-21, 23, 25-28 and 31-33, respectively, are similarly rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 recites “elements consisting of carbon nanotubes,” “elements consisting of fullerenes” and “elements consisting of graphene”. It is not clear what structural feature of the claim, the term “elements” is referring to and this is not elucidated by the specification.
For purposes of examination these limitations are interpreted as “carbon nanotube elements”, “fullerene elements” and “graphene elements”, respectively.
Claims 1-5, 9, 10, 13-21, 23, 25-28 and 31-33, respectively, are similarly rejected by virtue of dependency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 9, 10, 18-21, 23, 27 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP2647301 (CROOKS hereinafter) in view of US 20050016556 (ASHCRAFT hereinafter).
Regarding claims 1, 18 and 19, CROOKS teaches an elongate smoking article having a mouth end (18), the smoking article comprising:
a mouth end portion (65) at mouth end;
a heat generation portion (35) disposed longitudinally opposite to the mouth end (14);
an aerosol generating portion (51) disposed longitudinally between the heat generation portion and the mouth end portion, the aerosol-generating portion abutting the heat generation portion and including an aerosol-generating segment (55) (Fig. 2). CROOKS teaches that the heat generating segment and the aerosol-generating portion form a system (60) and the physical arrangement of those components preferably is such that heat is transferred from the heat generating segment to the aerosol-generating portion ([0039]);
an outer wrapping material, specifically paper (64), wrapped at least about an inner wrapping material, wherein the inner wrapping material is a heat-conducting material such as foil paper ([0094]). CROOKS further teaches that a heat exchange relationship can be achieved by extending a heat conductive material from the vicinity of the heat source into or around the region occupied by the aerosol generating segment ([0028]). Thus, it would have been obvious for one of ordinary skill in the art at the time of the invention to have extended the inner wrapping material, which is foil paper, from the vicinity of the heat source and around the region occupied by the aerosol generating segment, which defines a cylindrical rod, to achieve a heat exchange relationship between the heat source and the aerosol generating segment.
CROOKS does not expressly teach that the inner wrapping material is one of the claimed multi-layer inner wrapping materials.
ASHCRAFT teaches smokable rods of cigarettes which have wrapping materials that have multilayer coatings and least one of the coating layers can have a filler material dispersed or suspended within a film-forming material of that layer (abstract and [0065]). ASHCRAFT teaches that the coating formulation can incorporate graphite as the only filler material ([0073]), wherein graphite is a carbon material. The coating formulation thus has “graphite elements” or “elements consisting of graphite”. It would have been obvious for one of ordinary skill in the art at the time of the invention to have incorporated the graphite coating layer of ASHCRAFT on the wrapping material of CROOKS because the alterations to the wrapping material enable the smoking article to possess controlled burn characteristics ([0009]). It would have been obvious for one of ordinary skill in the art at the time of the invention to substitute graphene for graphite with a reasonable expectation of success and predictable results.
Regarding the limitation, “wherein the inner multi-layer wrapping material is configured to distribute heat from the heat generation portion, away from the outer wrapping material, such that the heat from the heat generation portion is instead directed to the aerosol-generating portion in abutment therewith to prevent scorching of the outer wrapping material” this limitation is a result of the materials and claimed structure of the instant smoking article. Since all of the claimed components of the smoking article are taught by the prior art, the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. See MPEP 2114 (I).
Regarding claims 2-4, CROOKS teaches that the aerosol-generating portion comprises a fluted rod member with a channel extending longitudinally therethrough (Fig. 6B). The fluting increases the surface area of the rod member such that it would be greater than the surface area of a right cylinder with the same length and diameter and no fluting.
Regarding claim 5, CROOKS teaches that the rod member, or substrate, is extruded from a mixture including tobacco, calcium carbonate, binder, glycerin and water ([0091]). CROOKS teaches that the tobacco is in powder form ([0032]) and that the substrate may also contain flavoring agents ([0032]).
Regarding claim 9, Modified CROOKS does not expressly teach that the paper layer is a tobacco wrapping paper sheet and the tobacco sheet comprises a reconstituted tobacco sheet; however, CROOKS teaches using reconstituted tobacco paper ([0015]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have applied any reasonable paper layer, including tobacco wrapping paper layer, with a reasonable expectation of success and predictable results.
Regarding claim 10, CROOKS does not specify that that foil paper comprises a continuous foil sheet; however, “foil paper” suggests a continuous foil sheet. It the alternative, it would have been obvious for one of ordinary skill in the art to have made the foil paper with a continuous foil sheet since the purpose of the foil sheet is as a heat-conducting material and this can be better achieved with a continuous foil sheet.
Regarding claims 20 and 21, the tobacco is cut filler tobacco ([0083]) treated with glycerin in the amount of about 5 to about 50 weight percent ([0034]).
Regarding claim 23, the aerosol-generating portion includes a first portion and a second portion, the first portion and second portion being of different materials (Fig. 9).
Regarding claim 27, the aerosol former comprises glycerin and the tobacco extract comprises nicotine ([0026]-[0027]).
Regarding claim 31, the heat generation portion includes a heating element of a carbonized material, specifically carbon ([0056]).
Claims 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, and further in view of US 20150296882 (MIRONOV hereinafter).
Regarding claims 13 and 14, Modified CROOKS do not expressly teach a non-woven graphite sheet.
MIRONOV teaches a graphite sheet that is wrapped around the heat source and the aerosol-forming substrate of smoking articles to provide a thermal link ([0026]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have included the graphite sheet of MIRONOV in Modified CROOKS, with a reasonable expectation of success and predictable results, to provide a thermal link (MIRONOV, [0026]).
Claims 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, in view of US 20150157052 (ADEME hereinafter) and further in view of US 5066691 (KAMAKURA hereinafter)
Regarding claims 15 and 16, Modified CROOKS does not expressly teach an adhesive.
ADEME teaches a smoking article with a wrapping material as a foil-lined paper ([0077]) with an adhesive as part of the laminate ([0048]). It would have been obvious for one of ordinary skill in the art at the time of the invention to incorporated adhesive, as taught by ADEME, between the inner wrapping material and the outer wrapping material of Modified CROOKS with a reasonable expectation of success and predictable results.
The combined teachings of Modified CROOKS and ADEME do not expressly teach that the adhesive contains aluminum hydroxide.
KAMAKURA teaches adhesive compositions for metal clad laminates and states that aluminum hydroxide is added to adhesive compositions as a filler to improve the peel strength at high temperatures (col. 2, lines 15-20). Thus, it would have been obvious for one of ordinary skill in the art at the time of the invention to have added aluminum hydroxide to the adhesive of the laminate of Modified CROOKS. The motivation to do so would have been to improve the peel strength at high temperatures (col. 2, lines 15-20).
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, and further in view of US 4819665 (ROBERTS hereinafter).
Regarding claim 17, Modified CROOKS fails to teach a glass fiber sheet.
ROBERTS teaches an aerosol delivery article with a glass fiber sheet within the outer wrapping member. It would have been obvious for one of ordinary skill in the art at the time of the invention to have included a glass fiber sheet under the outer wrapping member of Modified CROOKS for added insulation with reasonable expectation of success and predictable results.
Claims 25, 26 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, and further in view of US 5611360 (TANG hereinafter).
Regarding claims 25 and 26, Modified CROOKS does not expressly teach that the aerosol-generating portion comprises a porous ceramic rod.
TANG teaches a smoking article with a porous ceramic rod member defining at least one conduit extending longitudinally therethrough (abstract), wherein the porous ceramic rod member includes a tobacco extract (col. 1, lines 35-41). It would have been obvious for one of ordinary skill in the art at the time of the invention to have included the porous ceramic rod and tobacco extract inside the porous ceramic rod with a reasonable expectation of success and predictable results.
Regarding claim 28, Modified CROOKS teaches that the aerosol-generating portion comprises a fluted rod member with a channel extending longitudinally therethrough (Fig. 6B). The fluting increases the surface area of the rod member such that it would be greater than the surface area of a right cylinder with the same length and diameter and no fluting.
Modified CROOKS does not expressly teach that the rod is ceramic.
TANG teaches a smoking article with a porous ceramic rod member defining at least one conduit extending longitudinally therethrough (abstract). It would have been obvious for one of ordinary skill in the art at the time of the invention to have included the porous ceramic rod and tobacco extract inside the porous ceramic rod with a reasonable expectation of success and predictable results.
Claim 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, and further in view of US 20130118513 (KALJURA hereinafter).
Regarding claim 32, Modified CROOKS does not expressly teach an overwrap material wrapped at least about the outer wrapping material wrapped at least about the inner wrapping material wrapped about the heat generation portion.
However, KALJURA teaches a smoking article which has an overwrap material that is embossed (abstract). It would have been obvious for one of ordinary skill in the art at the time of filing to have included the embossed overwrap of KALJURA around the smoking article of Modified CROOKS with a reasonable expectation of success and predictable results, specifically optimization of the ignition propensity of the smoking article (KALJURA, [0005]).
Claim 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over CROOKS in view of ASHCRAFT as applied to claim 1 above, and further in view of US 4987908 (SPRINKEL hereinafter).
Regarding claim 33, Modified CROOKS does not expressly teach a thermochromic ink material interacted with the outer wrapping material.
SPRINKEL teaches a smoking article with a coating material, or thermal indicator, comprised of compounds which physically change to either reveal a colored substrate or create a color change as an indication of temperature change. The indicators are applied directly to the surface whose temperature is to be monitored. SPRINKEL teaches the coating thins and is absorbed into the surface (i.e., into the paper cigarette wrapper). The substrate, previously hidden beneath the opaque coating, becomes visible as an indication of temperature change (col. 2). It would have been obvious for one of ordinary skill in the art at the time of the invention to have placed the ink of SPRINKEL on the outer wrapping of Modified CROOKS in order to display an indication of temperature change.
Claims 1, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over EP2647301 (CROOKS hereinafter) in view of US 20050016556 (ASHCRAFT hereinafter), as evidenced by US 20110190544 (NAVARRINI hereinafter).
Regarding claims 1, 18 and 19, CROOKS teaches an elongate smoking article having a mouth end (18), the smoking article comprising:
a mouth end portion (65) at mouth end;
a heat generation portion (35) disposed longitudinally opposite to the mouth end (14);
an aerosol generating portion (51) disposed longitudinally between the heat generation portion and the mouth end portion, the aerosol-generating portion abutting the heat generation portion and including an aerosol-generating segment (55) (Fig. 2). CROOKS teaches that the heat generating segment and the aerosol-generating portion form a system (60) and the physical arrangement of those components preferably is such that heat is transferred from the heat generating segment to the aerosol-generating portion ([0039]);
an outer wrapping material, specifically paper (64), wrapped at least about an inner wrapping material (58), wherein the inner wrapping material is a heat-conducting material such as foil paper ([0094]). CROOKS further teaches that a heat exchange relationship can be achieved by extending a heat conductive material from the vicinity of the heat source into or around the region occupied by the aerosol generating segment ([0028]). Thus, it would have been obvious for one of ordinary skill in the art at the time of the invention to have extended the inner wrapping material, which is foil paper, from the vicinity of the heat source and around the region occupied by the aerosol generating segment, which defines a cylindrical rod, to achieve a heat exchange relationship between the heat source and the aerosol generating segment.
CROOKS does not expressly teach that the inner wrapping material is one of the claimed inner wrapping materials.
ASHCRAFT teaches smokable rods of cigarettes which have wrapping materials that have multilayer coatings and least one of the coating layers can have a filler material dispersed or suspended within a film-forming material of that layer (abstract and [0065]). ASHCRAFT teaches that the coating formulation can incorporate graphite as the only filler material ([0073]), wherein graphite is a carbon material. The coating formulation thus has “graphite elements” or “elements consisting of graphite”. It would have been obvious for one of ordinary skill in the art at the time of the invention to have incorporated the graphite coating layer of ASHCRAFT on the wrapping material of CROOKS because the alterations to the wrapping material enable the smoking article to possess controlled burn characteristics ([0009]). It would have been obvious for one of ordinary skill in the art at the time of the invention to substitute graphene for graphite with a reasonable expectation of success and predictable results.
It would have been obvious for one of ordinary skill in the art at the time of the invention to substitute fullerenes or carbon nanotubes for graphite as the filler material with a reasonable expectation of success and predictable results, as evidenced by NAVARRINI, which teaches fullerenes, carbon nanotubes and graphite are carbonaceous materials.
Regarding the limitation, “wherein the inner wrapping material is configured to distribute heat from the heat generation portion, away from the outer wrapping material, such that the heat from the heat generation portion is instead directed to the aerosol-generating portion in abutment therewith to prevent scorching of the outer wrapping material” this limitation is a result of the materials and claimed structure of the instant smoking article. Since all of the claimed components of the smoking article are taught by the prior art, the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. See MPEP 2114 (I).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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