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, 3-5, 7-10, 12-18 and 20-27 are pending.
Claims 15-18 and 20-27 remain withdrawn.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Applicant points out that Metrangolo merely discloses a gathered laminate structure comprising bonded layers. Moreover, Applicant states, there is no teaching by Metrangolo of the aerosolizable material being a solid substrate comprising gel in the absence of a carrier or support. Applicant states there is clearly no teaching of a solid substrate in the form of a gel sheet that may be gathered as part of a layered structure including a second sheet comprising heating material to which the gel sheet is not bonded, as explicitly recited in the claims currently on file.
Applicant states Wilke has been relied upon as it allegedly discloses an aerosolizable structure comprising a gel sheet.
With this in mind, Applicant states, there is plainly no suggestion that the gelled sheet disclosed by Wilke has the physical properties to enable it to be gathered in the manner disclosed by Metrangolo. Further, Applicant states, the heating material is provided in particulate form according to Wilke, namely heating elements in the form of spheres, strands or open cell structures. See [0004] and [0012], for example.
The heating elements are combined with the smokable material to form a mixture in which the heating elements are evenly dispersed throughout the smokable material. See [0003], [0012], [0014], [0027], [0035], [0059], [0078] and [0087], for example. Such mixing is, of course, not possible to achieve if the smokable material is in the form of a sheet. The only method of providing the described mixtures is provided in paragraph [0087], which is clearly not applicable to smokable material in the form of a sheet unless the sheet is cut or shredded to form small particles that can be provided to a hopper and mixed with the elements of heating material to provide an even mixture of the materials.
Accordingly, the Examiner is improperly taking only the gel sheet from the teaching of Wilke and is incorporating it in a completely different form (a continuous sheet rather than cut or shredded sheet) and in a completely different manner (gathered rather than mixed or blended) into a consumable according to the teaching of Metrangolo.
Wilke does not provide the disclosure of a sheet consisting of aerosolizable material in gel form that has the necessary physical properties to be gathered to form an aerosolizable structure. Further, there is certainly nothing to suggest that the gelled sheet briefly mentioned by Wilke could be used in the place of the sheet of reconstituted tobacco material disclosed by Metrangolo.
Examiner Response A:
The Examiner respectfully disagrees. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Metrangolo teaches a gathered layered structure comprising: a first sheet of aerosol-generating material and a second sheet of thermally-conductive material (page 2, lines 14-18), wherein the second sheet comprises thermally-conductive material comprised of aluminum foil (page 2, lines 22-23). Wilke teaches that possible aerosol-generating materials are gel or gelled sheet or reconstituted tobacco or homogenized tobacco ([0051]). Wilke is relied upon to teach possible aerosol-generating materials, not the heating material or heating elements.
Regarding the argument that there is nothing to suggest that the gelled sheet briefly mentioned by Wilke could be used in the place of the sheet of reconstituted tobacco material disclosed by Metrangolo, the Examiner respectfully disagrees, as Wilke explicitly states that possible aerosol-generating materials are gel or gelled sheet or reconstituted tobacco or homogenized tobacco ([0051]).
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1, 3-5, 7-10 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013178768 (Metrangolo hereinafter) in view of US 20170055575 (Wilke hereinafter).
Regarding claims 1, 3, 4, 8-10 and 12, Metrangolo teaches an aerosolizable structure, specifically a rod, for use in an article for use with an apparatus for heating aerosolizable material to volatilize at least one component of the aerosolizable material (abstract), the aerosolizable structure comprising: a gathered layered structure comprising: a first sheet of aerosol-generating material and a second sheet of thermally-conductive material (page 2, lines 14-18), wherein the second sheet comprises thermally-conductive material comprised of aluminum foil (page 2, lines 22-23).
Metrangolo does not expressly teach that the aerosol-generating material of the first sheet is a gel.
Wilke teaches an aerosolizable structure for use in an article for use with an apparatus for heating aerosolizable material to volatilize at least one component of the aerosolizable material (abstract). Wilke teaches that possible aerosol-generating materials are gel or gelled sheet or reconstituted tobacco or homogenized tobacco ([0051]). It would have been obvious for one of ordinary skill in the art at the time of filing to have substituted the aerosol-generating material of the first sheet in Metrangolo with the gel or gelled sheet as taught by Wilke because it has been held that the substitution of one known element (i.e. reconstituted tobacco or homogenized tobacco sheet) for another (i.e. gelled sheet) yielding predictable results to one of ordinary skill in the art, specifically providing volatilized components upon heating, typically in the form of vapor or an aerosol (Wilke, [0051]), would have been obvious to one of ordinary skill in the art (See MPEP § 2143 B).
The structure formed by modified Metrangolo, specifically a first sheet of aerosol-generating material which is a gelled sheet, and a second sheet of thermally-conductive material, which is aluminum foil, are not bonded, as both are separate sheet materials.
Regarding claim 5, modified Metrangolo teaches that multiple sheets of aerosol-generating material can be included in the gathered layered structure (Metrangolo, page 4, lines 29-30).
While modified Metrangolo does not expressly state that the second sheet, or thermally-conductive material, is located between two layers of aerosol-forming material (the first and third sheets, respectively), it would have been obvious for one of ordinary skill in the art at the time of the invention to have positioned the layer of thermally-conductive material between the two layers of aerosol-forming material so that both aerosol-forming material layers are in intimate contact with the layer of thermally-conductive material, with a reasonable expectation of success and predictable results, namely efficient heating of the aerosol-forming material layers.
Regarding claim 7, modified Metrangolo teaches that the gathered layered structure is crimped (Metrangolo, page 3, lines 33-35).
Regarding claim 13, modified Metrangolo teaches a wrapper wrapped around the gathered layered structure (Metrangolo, page 2, lines 14-16).
Regarding claim 14, modified Metrangolo teaches that the aerosolizable structure is a rod (Metrangolo, page 2, lines 14-16), which is substantially cylindrical.
Conclusion
THIS ACTION IS MADE FINAL. 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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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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