DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s amendments and remarks filed May 26, 2026. Claims 7 and 17-18 have been amended. Claims 9, 13, 15-16 and 19-21 have been cancelled. Claims 7-8, 10-12, 14, and 17-18 are pending and stand rejected.
Claim Objections
Claims 10 and 14 are objected to under 37 CFR 1.75(c) as being in improper form because it depends from cancelled claim. See MPEP § 608.01(n). Appropriate correction is required.
Claim 10 previously depended on claim 9 which has been cancelled. Therefore, it cannot depend upon a cancelled claim (claim 9). Given the amendments, examiner believes this is an instance where the dependency was not updated. For the purpose of this Office action claim 10 has been treated as if depending from claim 7.
Similarly Claim 14 previously depended on claim 13 which has been cancelled. Therefore, it cannot depend upon a cancelled claim (claim 13). Applicant has recited that claim 14 depends on claim 1, which has been cancelled since claim amendments filed December 13, 2022. Given the current amendments, examiner believes this is am instance where the dependency was not properly updated. For the purpose of this Office action claim 14 has been treated as if depending from claim 7.
Appropriate correction is required.
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.
Claims 7-8, 10-12, and 14 are 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. Applicant has amended claim 7 to recite, “the non-combustible aerosol generating article being received within the aerosol generating device such that the heater remains external to the wrapper to externally heat the aerosolizable material to generate an aerosol,” This limitation is not described in the written description as filed. The limitation is not supported by the figures. Therefore this is considered to be new matter.
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.
Claims 7-8, 10-12, and 14 are 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.
Claims 7 and 10 recites the limitation "the rod". There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites “the wrapper” (line 4) before introducing “a wrapper” (line 7). For purposes of examination these are considered to be the same wrapper.
Claims 8, 10-12, and 14 are rejected insomuch as they depend on claim 7.
Claim Rejections - 35 USC § 103
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.
Claims 7-8, 10-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160295916 A1 (hereinafter MALGAT) in view of US 20170055576 A1 (hereinafter BEESON). In the alternative, claim 7 is rejected under MALGAT in view of BEESON and US 3208458 A (hereinafter CHALUPA).
Regarding claim 7, MALGAT discloses a heated aerosol-generating article for use with an aerosol-generating device (abstract). MALGAT discloses an electrically-operated aerosol generating system (Fig. 4, aerosol generating device 2010, ¶80). MALGAT discloses a heater (Fig. 4, heater blade 2100, ¶80) is able to pierce the foil and when actuated through a user drawing on the mouth end, air is able to flow into the article (Fig. 4, aerosol forming substrate 1020, ¶82) and deliver aerosol to the user (¶80). MALGAT discloses that the device comprises a housing and an electrical energy supply to power the heater and a controller (¶82-¶83).
MALGAT discloses a non-combustible aerosol generating article (Fig. 3, aerosol-generating article 3000, ¶79) comprising aerosolizable material (Fig. 3, aerosol-forming substrate 3020, ¶79) having a distal end (Fig. 3, distal end 3013, ¶79). MALGAT discloses that the article is designed to produce an aerosol when heated rather than burned (¶5). Regarding the recitation of “non-combustible,” as with the instant application the article of MALGAT is designed to be used for aerosol generation as a result of heat not burn and is treated such that there is a lower propensity for flame ignition (¶5, ¶7).
MALGAT discloses the non-combustible aerosol generating article further comprises a wrapper (Fig. 3, cigarette paper 3060, ¶79) wrapped around the rod of aerosolizable material.
MALGAT teaches the non-combustible aerosol generating article being received within the aerosol generating device such that the heater remains external to the wrapper to externally heat the aerosolizable material to generate an aerosol. MALGAT teaches that an aerosol-generating article has a heating element that surrounds the article adjacent to the aerosol forming substrate (¶77, emphasis added). MALGAT teaches that this is an alternate embodiment to the disclosure where the heating element is inserted into the substrate (thus being internal to the wrapper). A preferred embodiment or alternate embodiment does not constitute a teaching away where the specification teaches more broadly. See MPEP 2123, II. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
MALGAT does not disclose the wrapper that is wrapped around the rod of aerosolizable material is formed from a single continuous sheet that extends over and encloses the distal end of the aerosolizable material so that the distal end of the aerosolizable material is completely enclosed in the wrapper.
MALGAT teaches an embodiment where the distal end of the aerosol-forming substrate comprises a distal end spanned by an aluminum foil 1222 which extends around the distal end (Fig. 2, ¶76). MALGAT teaches that the aluminum foil spanning the distal end will prevent a user inadvertently attempting to ignite the aerosol forming substrate (¶76). MALGAT also teaches that the thermally-conductive material to prevent ignition (¶7) may be a co-laminated sheet comprising aluminum foil and a second material such as paper (¶12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of MALGAT to provide the wrapper that is wrapped around the rod of aerosolizable material is formed from a single continuous sheet that extends over and encloses the distal end of the aerosolizable material so that the distal end of the aerosolizable material is completely enclosed in the wrapper. A person of ordinary skill in the art would obviously enclose the distal end of the of the article. MALGAT teaches that providing a wrapper at the distal end of foil would prevent inadvertent combustion of the article (MALGAT ¶76). A person of ordinary skill in the art would obviously make the wrapper of the substrate unitary with the wrapper at the distal end to prevent inadvertent combustion. Since MALGAT teaches that the covering for the distal end 1222 can be a co-laminated sheet with paper it would have been prima facie obvious for one of ordinary skill in the art to make integral a laminated sheet of cigarette paper and aluminum foil. The courts have held that making components integral to be a mere obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.", see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
MALGAT does not disclose the wrapper comprising at least three layers, an innermost peripheral layer disposed in contact with the aerosolizable material and an outermost peripheral layer, wherein the innermost and outermost peripheral layers comprise paper, and an intermediate layer comprises a non-combustible material, wherein at least the intermediate layer and one of the innermost or outermost peripheral layers are provided as a laminate structure.
BEESON teaches a smoking article with an aerosol-generating portion and a wrapping material (Abstract). BEESON teaches that the wrapper comprises at least three layers (¶34), BEESON discloses an embodiment where the wrapping paper 90 may comprise a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). BEESON teaches an innermost peripheral layer that is in contact with the aerosolizable material. BEESON teaches that the wrapping paper 90 maybe a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). Since the wrapping paper 90 is shown in contact with the substrate 85 and the layers are cigarette paper/foil/tobacco paper, the paper layer is in contact with the aerosolizable material (¶34). There is the foil layer (intermediate layer) which is comprised of foil, a non-combustible material. BEESON teaches that the outer most layer comprises paper (¶31, preventing scorching of outer wrapping paper 75). BEESON teaches that the tri-laminate sheet may further facilitate improvement in the taste or sensory experience by the user by reducing, minimizing or eliminating scorching or charring of particular components of the smoking article, and by directing more of the heat toward the aerosol-generating segment (¶34).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified MALGAT to provide that the wrapper comprising at least three layers, an innermost peripheral layer disposed in contact with the aerosolizable material and an outermost peripheral layer, wherein the innermost and outermost peripheral layers comprise paper, and an intermediate layer comprises a non-combustible material, wherein at least the intermediate layer and one of the innermost or outermost peripheral layers are provided as a laminate structure as taught in BEESON. A person of ordinary skill in the art would obviously include an improved wrapper to enclose an aerosolizable material. Doing so would facilitate improvement in the taste or sensory experience by the user by reducing, minimizing or eliminating scorching or charring of particular components of the smoking article, and by directing more of the heat toward the aerosol-generating segment (BEESON ¶34). Further, courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. In this case, BEESON clearly teaches a multi-layer wrapping with paper and non-combustible layers (¶31-¶34). A person of ordinary skill in the art would obviously rearrange these layers with predictable results.
In the alternative, regarding the limitation, the wrapper that is wrapped around the rod of aerosolizable material is formed from a single continuous sheet that extends over and encloses the distal end of the aerosolizable material so that the distal end of the aerosolizable material is completely enclosed in the wrapper, MALGAT does not explicitly disclose this limitation.
MALGAT teaches an embodiment where the distal end of the aerosol-forming substrate comprises a distal end spanned by an aluminum foil 1222 which extends around the distal end (Fig. 2, ¶76). MALGAT teaches that the aluminum foil spanning the distal end will prevent a user inadvertently attempting to ignite the aerosol forming substrate (¶76).
CHALUPA teaches a machine for making individual cigarettes with sealed ends (Col. 1, lines 8-9). CHALUPA teaches that an object of the invention is to close flaps at opposite ends of the cigarette for the purpose of keeping the cigarettes in a fresh and flavorful condition and to prevent absorption of foreign volatile flavors (Col. 1, lines 10-16). CHALUPA teaches that the cigarette paper 12 has scalloped lateral edges that define flaps (Fig. 1, Col. 1, lines 49-53). The scalloped edges of the paper are folded to enclose the cigarette (Figs. 3I and 5, Col. 3, lines 13-31). This is considered to be a single continuous sheet closing the distal end.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified MALGAT to provide the wrapper that is wrapped around the rod of aerosolizable material is formed from a single continuous sheet that extends over and encloses the distal end of the aerosolizable material so that the distal end of the aerosolizable material is completely enclosed in the wrapper as taught in MALGAT and CHALUPA. A person of ordinary skill in the art would obviously enclose the distal end of the of the article. Doing so would keep the cigarette fresh and flavorful and prevent absorption of foreign volatile flavors (CHAULPA Col. 1, lines 10-16) while also prevent a user inadvertently attempting to ignite the aerosol forming substrate (MALGAT ¶76). A person of ordinary skill in the art would obviously make the wrapper of the substrate unitary with the wrapper at the distal end to prevent inadvertent combustion. The courts have held that making components integral to be a mere obvious engineering choice.
Regarding claim 8, modified MALGAT discloses the aerosol generating assembly of claim 7 as discussed above. MALGAT further discloses the aerosolizable material of the non- combustible aerosol generating article comprises tobacco (¶2).
Regarding claim 10, modified MALGAT discloses the aerosol generating assembly of claim 9 as discussed above. MALGAT further discloses wherein the wrapper circumscribes at least the rod over at least 25% of a length of the rod. As illustrated in Fig. 2, the wrapper circumscribes the rod over greater than 25% of the length of the rod and in fact the entire rod.
Regarding claim 11, modified MALGAT discloses the aerosol generating assembly of claim 7 as discussed above. MALGAT further discloses wherein the aerosol generating article further comprises at least one of a filter (Fig. 3, filter 3050, ¶78). In another embodiment MALGAT also discloses both a filter (Fig. 3, filter 3050, ¶79) a a cooling element (Fig. 3, aerosol cooling element 3040, ¶79). By their nature and placement the smoke that flows from the lit end to the mouth end cools over time. Further, due to the recitation of or, only one of the limitations the filter or the cooling element is required to read upon the claim of the instant application.
Regarding claim 12, modified MALGAT discloses the aerosol generating assembly of claim 11 as discussed above. MALGAT further discloses wherein the non-combustible aerosol generating article comprises the filter and the cooling element, and wherein the cooling element is arranged between the aerosolizable material and the filter (as shown in Fig. 3). The cooling element is arranged between the aerosolizable material (Fig. 3, aerosol-forming substrate 3020, ¶79) and the filter (Fig. 3, filter 3050, ¶79).
Regarding claim 14, modified MALGAT discloses the aerosol generating assembly of claim 7 as discussed above. MALGAT discloses a tobacco heating product (Fig. 4, aerosol generating device 2010, ¶80).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over BEESON in view of CHALUPA and MALGAT.
Regarding claim 17, BEESON discloses a smoking article with an aerosol-generating portion and a wrapping material (Abstract). BEESON discloses a process for making an aerosol generating article comprising wrapping a rod of aerosolizable material in a wrapper formed from a single continuous sheet, the wrapper comprising:at least three layers, an innermost peripheral layer disposed in contact with the aerosolizble material and an outermost peripheral layer, wherein the innermost and outermost peripheral layers comprise paper, and an intermediate layer comprises a non-combustible material, wherein at least the intermediate layer and one of the innermost or outermost peripheral layers are provided as a laminate structure. BEESON discloses the process of making the substrate (¶42, ¶46), forming the sheet (¶50), a process for making laminated paper (¶61), and the assembly of the system (¶64). BEESON discloses that the wrapper comprises at least three layers (¶34), BEESON discloses an embodiment where the wrapping paper 90 may comprise a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). BEESON discloses an innermost peripheral layer that is in contact with the aerosolizable material. BEESON discloses that the wrapping paper 90 maybe a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). Since the wrapping paper 90 is shown in contact with the substrate 85 and the layers are cigarette paper/foil/tobacco paper, the paper layer is in contact with the aerosolizable material (¶34). There is the foil layer (intermediate layer) which is comprised of foil, a non-combustible material. BEESON discloses that the outer most layer comprises paper (¶31, preventing scorching of outer wrapping paper 75). BEESON discloses that the tri-laminate sheet may further facilitate improvement in the taste or sensory experience by the user by reducing, minimizing or eliminating scorching or charring of particular components of the smoking article, and by directing more of the heat toward the aerosol-generating segment (¶34).
BEESON does not disclose wherein the rod of aerosolizable material forms a distal end of the non-combustible aerosol generating article, and wherein the wrapper prevents ignition of the rod of aerosolizable material, and wherein wrapping of the rod comprises extending the wrapper that is wrapped around the rod so that it extends over the distal end of the rod so that the distal end of the aerosolizable material is completely enclosed by the wrapper.
CHALUPA teaches a machine for making individual cigarettes with sealed ends (Col. 1, lines 8-9). CHALUPA teaches that an object of the invention is to close flaps at opposite ends (including the distal end) of the cigarette for the purpose of keeping the cigarettes in a fresh and flavorful condition and to prevent absorption of foreign volatile flavors (Col. 1, lines 10-16). CHALUPA teaches that the cigarette paper 12 has scalloped lateral edges that define flaps (Fig. 1, Col. 1, lines 49-53). The scalloped edges of the paper are folded to enclose the cigarette (Figs. 3I and 5, Col. 3, lines 13-31). This is considered to be a single continuous sheet closing the distal end.
MALGAT teaches an embodiment where the distal end of the aerosol-forming substrate comprises a distal end spanned by an aluminum foil 1222 which extends around the distal end (Fig. 2, ¶76). MALGAT teaches that the aluminum foil spanning the distal end will prevent a user inadvertently attempting to ignite the aerosol forming substrate (¶76). MALGAT also teaches that the thermally-conductive material to prevent ignition (¶7) may be a co-laminated sheet comprising aluminum foil and a second material such as paper (¶12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified BEESON to provide wherein the rod of aerosolizable material forms a distal end of the non-combustible aerosol generating article, and wherein the wrapper prevents ignition of the rod of aerosolizable material, and wherein wrapping of the rod comprises extending the wrapper that is wrapped around the rod so that it extends over the distal end of the rod so that the distal end of the aerosolizable material is completely enclosed by the wrapper as taught in CHALUPA and MALGAT. A person of ordinary skill in the art would obviously enclose the distal end of the of the article. Doing so would keep the cigarette fresh and flavorful and prevent absorption of foreign volatile flavors (CHAULPA Col. 1, lines 10-16) while also prevent a user inadvertently attempting to ignite the aerosol forming substrate (MALGAT ¶76). A person of ordinary skill in the art would obviously make the wrapper of the substrate unitary with the wrapper at the distal end to prevent inadvertent combustion. Since MALGAT teaches that the covering for the distal end 1222 can be a co-laminated sheet with paper it would have been prima facie obvious for one of ordinary skill in the art to make integral a laminated sheet of cigarette paper and aluminum foil. The courts have held that making components integral to be a mere obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.", see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
Regarding claim 18, modified BEESON discloses a smoking article with an aerosol-generating portion and a wrapping material (Abstract). BEESON discloses wrapping a rod of aerosolizable material in a wrapper formed from a single continuous sheet, the wrapper comprising:at least three layers, an innermost peripheral layer disposed in contact with the aerosolizble material and an outermost peripheral layer, wherein the innermost and outermost peripheral layers comprise paper, and an intermediate layer comprises a non-combustible material, wherein at least the intermediate layer and one of the innermost or outermost peripheral layers are provided as a laminate structure. BEESON discloses the process of making the substrate (¶42, ¶46), forming the sheet (¶50), a process for making laminated paper (¶61), and the assembly of the system (¶64). BEESON discloses that the wrapper comprises at least three layers (¶34), BEESON discloses an embodiment where the wrapping paper 90 may comprise a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). BEESON discloses an innermost peripheral layer that is in contact with the aerosolizable material. BEESON discloses that the wrapping paper 90 maybe a cigarette paper/foil/tobacco paper in a tri-laminate sheet (¶34). Since the wrapping paper 90 is shown in contact with the substrate 85 and the layers are cigarette paper/foil/tobacco paper, the paper layer is in contact with the aerosolizable material (¶34). There is the foil layer (intermediate layer) which is comprised of foil, a non-combustible material. BEESON discloses that the outer most layer comprises paper (¶31, preventing scorching of outer wrapping paper 75). BEESON discloses that the tri-laminate sheet may further facilitate improvement in the taste or sensory experience by the user by reducing, minimizing or eliminating scorching or charring of particular components of the smoking article, and by directing more of the heat toward the aerosol-generating segment (¶34).
BEESON does not disclose a method of preventing a user lighting or igniting a rod of aerosolizable material in a non-combustible aerosol generating article nor wherein the rod of aerosolizable material forms a distal end of the non-combustible aerosol generating article, and wherein wrapping the rod comprises extending the wrapper around the rod and over a distal end of the rod such that the distal end of the aerosolizable material is completely enclosed by the wrapper.
CHALUPA teaches a machine for making individual cigarettes with sealed ends (Col. 1, lines 8-9). CHALUPA teaches that an object of the invention is to close flaps at opposite ends (including the distal end) of the cigarette for the purpose of keeping the cigarettes in a fresh and flavorful condition and to prevent absorption of foreign volatile flavors (Col. 1, lines 10-16). CHALUPA teaches that the cigarette paper 12 has scalloped lateral edges that define flaps (Fig. 1, Col. 1, lines 49-53). The scalloped edges of the paper are folded to enclose the cigarette (Figs. 3I and 5, Col. 3, lines 13-31). This is considered to be a single continuous sheet closing the distal end.
MALGAT teaches an embodiment where the distal end of the aerosol-forming substrate comprises a distal end spanned by an aluminum foil 1222 which extends around the distal end (Fig. 2, ¶76). MALGAT teaches that the aluminum foil spanning the distal end will prevent a user inadvertently attempting to ignite the aerosol forming substrate (¶76). MALGAT also teaches that the thermally-conductive material to prevent ignition (¶7) may be a co-laminated sheet comprising aluminum foil and a second material such as paper (¶12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified BEESON to provide a method of preventing a user lighting or igniting a rod of aerosolizable material in a non-combustible aerosol generating article and wherein the rod of aerosolizable material forms a distal end of the non-combustible aerosol generating article, and wherein wrapping the rod comprises extending the wrapper around the rod and over a distal end of the rod such that the distal end of the aerosolizable material is completely enclosed by the wrapper as taught in CHALUPA and MALGAT. Doing so would keep the cigarette fresh and flavorful and prevent absorption of foreign volatile flavors (CHAULPA Col. 1, lines 10-16) while also prevent a user inadvertently attempting to ignite the aerosol forming substrate (MALGAT ¶76). A person of ordinary skill in the art would obviously make the wrapper of the substrate unitary with the wrapper at the distal end to prevent inadvertent combustion. Since MALGAT teaches that the covering for the distal end 1222 can be a co-laminated sheet with paper it would have been prima facie obvious for one of ordinary skill in the art to make integral a laminated sheet of cigarette paper and aluminum foil. The courts have held that making components integral to be a mere obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.", see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.).
Response to Arguments
Applicant’s arguments, filed May 26, 2026, with respect to the rejections of claims 7-18 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of MALGAT, BEESON, and CHALUPA.
The amendment to recite, the distal end of aerosolizable material is closed by extending the wrapper as a single continuous sheet is rendered obvious by the teachings of MALGAT alone in view of the long held obvious combination to make integral. However, the obviousness is bolstered by the combination with BEESON because a person of ordinary skill in the art would obviously apply the co-laminated sheet in BEESON to prevent scorching to the teaching of the use of a laminated wrapper for the distal end of MALGAT. In the alternative, reference is made to CHALUPA that seals the distal end of a smoking article to seal in flavor. For all of these reasons and teachings it would have been obvious to use the laminated sheet to cover the distal end with predictable results as supported by Combining Prior Art Elements According to Known Methods To Yield Predictable Results (See MPEP 2143, I, A) and Use of known technique to improve similar devices (methods, or products) in the same way (See MPEP 2143, I, C) because covering any (or all) of the rod would prevent accidental ignition and scorching.
The other amendment, heating the rod externally of the wrapper is also rendered obvious by MALGAT (see above). MALGAT discloses alternate embodiments including heating through contact adjacent instead of a heater internal to the wrapper.
Applicant’s remaining arguments rely upon the allowability of the amended claim recitation. This limitation has been rejected as detailed above and that rejection is in repeated here.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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