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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions filed on 9-23-2025 and 10-23-2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s arguments/remarks filed 9-23-2025.
Claim 1 is currently amended.
Claims 1-6 and 8-11, 13, 129, and 131-133 are presently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claim 6 does not include all of the limitations of claim 1. Claim 6 requires the recess to have a uniform cross-sectional area. Newly amended claim 1, to which claim 6 depends, requires the recess to taper to a point, and the recess tapering to a point would require the recess to have a non-uniform cross-sectional area; which contradicts claim 6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Examiner notes that a rejection under 102 or 103 is precluded for claim 6 as claim 6 does not further limit the limitations of claim 1 and contradicts the amendments to claim 1.
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.
Claims 1-5, 8-11, 13, and 127-132 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (WO 2008015441A1) in view of Thorens (US20170340015A1)
Regarding Claim 1, Potter teaches a smoking substitute system (see the disassembled system in FIG 3) and an aerosol-forming article comprising an aerosol-forming substrate
the aerosol-forming substrate (see e.g., page 10 line 16-18 and annotated FIG 3 below) comprises a pre-formed axially-extending recess adapted to receive an external heating element.
Potter teaches the pre-formed axially-extending heating element tapers to a reduced cross- sectional area/diameter at a downstream axial end by tapering to a point. Specifically, Potter teaches the heating element tapers to a point and further teaches an axially extending recess which an inside diameter approximately the same as the outside diameter of the heating element and teaches the recess has the same shape at the end as the shape of the heating element, which implies the recess would have the same shape as the heating tips illustrated in FIG 4A and FIG 4B (see e.g., FIG 4A, 4B, and 4C, see e.g., page 11, line 10-25, and annotated FIG 3 below,
However Potter does not to explicitly disclose the pre-formed axially-extending recess tapers to a reduced cross- sectional area/diameter at a downstream axial end or that it tapers to a point.
However, Potter teaches the tobacco section 22 is provided with a recess having an inside diameter complimentary in shape to the end of the heat pipe and teaches the heat pipe end is pointy (see page 11 lines 13-16, and also annotated FIG 3 below, the pointy tip is the end of the heat pipe). In view of this teaching, see the shape of the end of the heat pipe of FIG 4A.
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Potter teaches this complimentary fit is important because it increases the effectiveness of the heat transfer of heat from the heat pipe to the complementarily shaped tobacco section recess 22 (see page 11 lines 19-22, see also FIG 3, which suggests that the tobacco section recess should be modified with the complimentary shape of the tip from FIG 4A so that the tapered point could have close contact with the heating element which is known in art to be suitable for good heat transfer).
Additionally, Thorens teaches a tapered slot 140 which is arranged for receiving a tapered blade heating element [0148] and teaches this heating blade extends into the recess slot with a complementary shape to the heating blade to align and guide the heating blade into position as illustrated (see FIG 3 of Thorens below, see also [0159]). A person of ordinary skill in the art would appreciate this tapered recess shape is useful for guiding the part being inserted into the recess so that the inserted part is centered in the recess as illustrated by Thorens.
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Therefore, it would be obvious to a person of ordinary skill in the art to modify the tobacco recess section 22 with a recess complimentary to the tapered pointy shape of the heat pipe of FIG 4A in order to accommodate the pointy shape and increase the effectiveness of the heat transfer of heat from the heat pipe to the tobacco section 22, and additionally it would be obvious for a person of ordinary skill in the art to modify the recess to be complimentarily shaped as taught and illustrated by Thorens so that the recess cavity can be arranged/guided to receive the shaped heating element as taught by Thorens in [0148] and FIG 3.
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Potter teaches the preformed axially extending recess has an axial length that is less than an axial length of the external heating element receivable within the aerosol forming substrate. For example, Potter teaches the external end of the heat pipe of FIG 3 can be geometrically shaped (as shown in FIG 4A -FIG 4C) so as to actually penetrate the tobacco section 22 to improve contact and heat conduction thereto which is consistent with the penetration of the substrate by the heating element in the instant specification [0130] (see Potter page 11 lines 25-28).
the pre-formed axially extending recess having an axial downstream end that terminates within the aerosol-forming substrate (see Potter annotated FIG 3 above, the recess has an axial downstream end that terminates within the aerosol forming substrate as claimed, see also Potter FIG 4A, pointy tips are intended to penetrate into the aerosol forming substrate to terminate within the aerosol forming substrate (terminating within the aerosol forming substrate is interpreted as penetration, see Potter page 12 line 2) which is consistent with the penetration teachings in the instant specification [0024] and [0130])
the smoking substrate system further comprises a device comprising the external heating element, the external heating element being elongated (See Potter Annotated FIG 3).
Regarding Claim 2, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the article is a heat not burn consumable (see e.g., page 11, line 10-25, and annotated FIG 3 above).
Regarding Claim 3, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the axially-extending recess has an upstream axial end and a downstream axial end the downstream axial end of spaced from the downstream axial end of the aerosol forming substrate (See annotated FIG 3 above).
Regarding Claim 4, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches that the axial spacing between the upstream and downstream axial ends of the axially-extending recess is between 1 and 7mm (see e.g., page 11 line 7-9, “5mm – 10mm”). The ranges overlap and have “sufficient specificity” to make it clear that values within the application are anticipated by the prior art. Therefore, the end point of the range disclosed by the prior art is within the range claimed and is not overly broad. It is clear that the value of 5 mm was clearly envisaged by the prior art. See MPEP 2131.03.
Regarding Claim 5, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the axially-extending recess has a substantially circular radial cross-section at its upstream axial end with a diameter of between 1 and 3 mm, see e.g., page 10 line 27, “2mm-6mm”, which overlaps with the claimed range of 1-3mm. Again, the ranges overlap and have “sufficient specificity” to make it clear that values within the application are anticipated by Potter. Therefore, the end point of the range disclosed by the prior art is within the range claimed and is not overly broad. It is clear that the value of 2 mm was clearly envisaged by the prior art. See MPEP 2131.03.
Regarding Claim 8, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches a filter element downstream and axially adjacent the aerosol-forming substrate (see annotated FIG 3 above).
Regarding Claim 9, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches a terminal mouth filter element at the axial downstream end of the article (see annotated FIG 3 above).
Regarding Claim 10, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the filter element and terminal filter element are axially spaced by a cooling element or spacer (see e.g., FIG 9 and page 14 lines 21-23).
Regarding Claim 11, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the filter element and/or the terminal filter element is/are a hollow bore element (see e.g., FIG 9 and page 14 lines 19-28 and page 15 lines 1-2).
Regarding Claim 13, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches a method of using the system according to claim 12, the method comprising: inserting the article into the device such that the external heating element is received in the axially extending recess; and heating the article using the external heating element (see annotated FIG 3 above, heating element is external when device is disassembled, see also claim 1).
Regarding Claims 129 and 130, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the aerosol-forming substrate has a first end and an opposed second end, and wherein the pre-formed axially extending recess extends through the first end of the aerosol-forming substrate towards the second end such that the downstream axial end is spaced a distance away from the second end of the aerosol-forming substrate (see annotated FIG 3 below, note space between downstream axial end and second end).
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Regarding Claim 131, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the pre-formed axially-extending recess is shaped differently than the external heating element.
Specifically, Potter teaches the pre-formed axially-extending recess can be as shown in FIG 3 part 28. It would be obvious for a person of ordinary skill in the art to select from the variety of external heating element shapes as illustrated in FIG 4A, 4B, or 4C which each have a different external shape than the shape of the pre-formed axially-extending recess shape taught in FIG 3 part 28. It would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the external heating element in FIG 3 with the external heating element shapes in FIG 4A, 4B, or 4C. (see rejection above for claims 129 and 130, see annotated FIG 3 annotated in the rejection of claims 129 and 130 above, in view of FIG 4A, 4B, and 4C, see also rejection of claim 128)
Regarding Claim 132, modified potter teaches the claim limitations as set forth above. Additionally, Potter teaches the step of inserting the aerosol-forming article into the device is defined further as inserting the aerosol-forming article into the device such that the external heating element is received in the pre-formed axially extending recess and extends beyond the downstream axial end of the pre-formed axially extending recess during assembly.
Specifically see the preformed axially extending recess of FIG 3 in view of the external heating element of FIG 4C. It would be obvious to a person of ordinary skill in the art to modify the external heating element tip as illustrated in FIG 3 with the external heating element tip as illustrated in FIG 4C. It would be obvious that the cylinder portion 16 would seat into the preformed axially extending recess and that the 4 tines or spikes illustrated in FIG 4C would extend beyond the downstream axial end of the preformed axially extending recess when fully seated.
Claim 133 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (WO 2008015441A1) and Thorens (US20170340015A1) as applied to claim 1 above and further in view of Maiwald (WO2016155958A1), English machine translation relied upon.
Regarding Claim 133, modified Potter teaches the claim limitations as set forth above. Potter is silent to the aerosol-forming article comprises a cooling element or spacer configured to be located downstream of the external heating element when the external heating element is received in the aerosol-forming substrate.
However, Maiwald teaches a similar heat not burn smoking article with a consumable tobacco rod and teaches the aerosol-forming article comprises a cooling element or spacer configured to be located downstream of the external heating element when the external heating element is received in the aerosol-forming substrate. Maiwald teaches that the cooling section should be provided downstream of the tobacco in which the gasses escaping from the tobacco are subsequently cooled so that the consumer does not burn his mouth when smoking [0004], with a reasonable expectation of success.
Thus, it would be obvious to a person of ordinary skill before the filing date of the claimed invention to modify the smoking device of modified Potter with the smoking device of Maiwald to include the cooling section of Maiwald which teaches that the cooling section should be provided downstream of the tobacco in which the gasses escaping from the tobacco are subsequently cooled so that the consumer does not burn his mouth when smoking [0004], with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments, see Applicant Arguments, filed 7-24-2025 with respect to the rejections of claims 1-6 and 8-13, 127-132 under 35 USC 103 in view of Potter (WO2008015441A1) in view of Bless (US20160360785) have been fully considered and are found persuasive and the rejection is withdrawn. However, after careful analysis and consideration of Potter a new rejection is set forth in view of Potter and Thorens as set forth above.
Specifically Applicant submits on page 6 of remarks:
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This is found partially persuasive for the reasons explained above and the rejection of record has been withdrawn accordingly. However, after careful analysis and consideration of Potter a new rejection is set forth in view of Potter and Thorens as set forth above.
Applicant further argues the remaining claims are allowable for their dependence on claim 1, this is not found persuasive for the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.T.F./Examiner, Art Unit 1747
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755