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 remarks filed September 30, 2025. Claims 6-16, 19, and 20 were previously withdrawn. Claims 1, 3, 5, and 17-18 are pending and stand rejected.
Election/Restrictions
Claims 6-16, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 28, 2023.
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 1, 5, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20150216231 A1 (hereinafter ROUDIER) as evidenced by “Thermophysical Properties of Tobacco and Cigarettes” (hereinafter WAYMACK) in view of US 20040011368 A1 (hereinafter TSUTSUMI), US 20180116275 A1 (hereinafter MALGAT), and US 20110290269 A1 (hereinafter SHIMIZU).
Regarding claim 1, ROUDIER discloses a smoking article the thermally insulating layers (abstract). ROUDIER discloses an aerosol generating material (Fig. 2, aerosol-forming substrate 24, ¶215); a mouthpiece (Fig. 2, mouthpiece 30, ¶215) downstream of the aerosol generating material; a connecting wrapper connecting the mouthpiece to the aerosol generating material (Fig. 2, outer wrapper 32, ¶221). ROUDIER further teaches a first wrapper (Fig. 2, heat-conducting, combustion-resistant wrapper 40, ¶218) comprising a first sheet material surrounding and directly contacting at least a portion of the aerosol generating material ROUDIER teaches that the “heat-conducting” wrapper has a thermal conductivity of about 10 W per metre Kelvin (W/(mK)) (¶27). ROUDIER further teaches that it is known to include a heat-conducting element around and in contact with at least a rear portion of the combustible heat source and at least a front portion of the aerosol forming substrate to ensure sufficient heat transfer to obtain an acceptable aerosol (¶3). ROUDIER further teaches that the heat generated is transferred by conduction to the aerosol generating substrate via the heat conducting wrapper (¶32). 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 position the first wrapper in direct contact with at least a portion of the aerosol generating material. Doing so would ensure sufficient heat transfer to obtain an acceptable aerosol. 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.
ROUDIER further discloses a second wrapper (Fig. 2, filter plug wrap 52, ¶223) comprising a second sheet material and surrounding at least a portion of the mouthpiece wherein a thermal conductivity of the first sheet material is higher than a thermal conductivity of the second sheet material (¶39). ROUDIER discloses that the wrapper of the mouthpiece is circumscribed by a filter plug wrap (¶223). A filter plug wrap does not have a high rate of thermal conductivity as evidenced by WAYMACK. WAYMACK teaches that the thermal conductivity of cigarette paper is 0.099 W/(mK). Therefore, since ROUDIER teaches that the thermal conductivity of the first wrapper is about 10 W per metre Kelvin (W/(mK)) (¶27) and WAYMACK teaches that plug wrap paper is 0.099 W/(mK), ROUDIER in view of WAYMACK teaches that the thermal conductivity of the first sheet material is higher than a thermal conductivity of the second sheet material (¶27). It would be immediately obvious to one of ordinary skill in the art that the thermal conductivity of the designed thermally conductive wrapper surrounding the aerosol generating substrate is higher than that of the mouthpiece that is not intended to be thermally conductive.
ROUDIER further teaches wherein the thermal conductivity of the first sheet material is greater than 0.06 Wm-1K-1. ROUDIER discloses that the heat-conducting wrapper is used to describe a wrapper formed from a material having a bulk thermal conductivity of at least about 10 W/mK (¶27). This value is an overlapping range with the recited claim limitation of greater than 0.06 Wm-1K-1. Since 10 is greater than 0.06, the range recited in the instant application overlaps with ROUDIER. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
ROUDIER does not disclose wherein the first sheet material is paper.
TSUTSUMI teaches a cigarette comprising tobacco and at least one cellulose-based wrapping paper with a thermal conductivity not lower than 0.5 Wm-1K-1 (abstract). TSUTSUMI teaches a cellulose based wrapping sheet with a thermal conductivity of Wm-1K-1 or more (¶10). TSUTSUMI teaches that the thermal conductivity of the wrapping paper can be controlled by controlling the amounts of loading or filter material added to the pulp base material (¶13) TSUTSUMI further teaches that it is possible to add a burn control agent such as sodium citrate or potassium citrate to the paper to provide a paper having a thermal conductivity of up to 0.6 Wm-1K-1.
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 ROUDIER to provide wherein the first sheet material is paper as taught in TSUTSUMI. A person of ordinary skill in the art would obviously choose the paper made by the process disclosed in TSUTSUMI to wrap the aerosol generating material. Doing so would provide a wrapper with a high thermal conductivity to control burn (TSUTSUMI ¶8) and heat transfer. Using this paper is a supported rationale for a conclusion of obviousness as outlined in the MPEP: (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (See MPEP 2143).
Neither ROUDIER nor TSUTSUMI disclose wherein a density of the first sheet material is higher than a density of the second sheet material.
MALGAT teaches a smoking article with a wrapper (abstract). MALGAT teaches many wrappers around the smoking article (Fig. 1, co-laminated wrapper 120, ¶237, plug wrap 126, ¶239, heat conductive material 140 and heat insulative material 142 ¶247). MALGAT teaches that the different wraps have different densities which is advantageous to retain the combustible heat source and maintain sufficient conductive heat transfer (¶39-¶40). MALGAT teaches that the smoking articles are wrapped with paper wrappers that are at times also col-laminated with aluminum¶254) that work to make the wrapper heat conductive (¶71).
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 ROUDIER to provide wherein the first sheet material is paper and wherein a density of the first sheet material is higher than a density of the second sheet material as taught in MALGAT. A person of ordinary skill would obviously vary the densities. Doing so would retain the heat source and maintain sufficient conductive heat transfer (MALGAT ¶39-¶40). Further a person of ordinary skill in the art would obviously use different papers to wrap a smokable item because paper is a notoriously well-known material in the art. MALGAT teaches that the different paper types (¶43, ¶254). Further The fact that the paper is co-laminated with aluminum does not negate the fact that it is in fact a paper.
Neither ROUDIER, TSUTSUMI, nor MALGAT disclose wherein an aerosol is produced by heating the aerosol generating material using a tobacco heating device. While this is a recitation of intended use, and the aerosol generating material of ROUDIER is clearly capable of generating aerosol when heated by a “tobacco heating device”, the smoking article of ROUDIER in view of MALGAT is designed to use a combustible heat source and not be heated by a separate “tobacco heating device”.
SHIMIZU teaches vaporizing a commercially available cigarette in a non-combustion smoking tool (abstract). SHIMIZU teaches, “a tool which, while using a general commercial cigarette or cigar as it is, can vaporize nicotine from tobacco leaves at a suitable temperature to enable smoker to inhale the nicotine without combusting the tobacco leaves, making it possible to inhale it.” (¶17). SHIMIZU teaches that another advantage is that vaporizing the nicotine at low temperatures with an electric heater does not produce the harmful tar, carbon monoxide, benzopyrene and so on that are produced at the time of lighting tobacco for smoking (¶20). SHIMIZU further teaches that the smoking tool can be used by others while also preventing the advance of germs (¶25). SHIMIZU further teaches that the device has the advantage of fire prevention due to no open flame (¶27).
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 ROUDIER to provide wherein an aerosol is produced by heating the aerosol generating material using a tobacco heating device as taught in SHIMIZU. A person of ordinary skill in the art would obviously use any available cigarette or cigar in the device of SHIMIZU to generate an aerosol. Doing so would realize the advantages of using a heat no burn device taught in SHIMIZU namely the reduction of harmful tar (SHIMIZU ¶20), preventing germs (SHIMIZU ¶25), and fire prevention due to no open flame (SHIMIZU ¶27).
Regarding claim 5, modified ROUDIER discloses the aerosol generating component of claim 1 as discussed above. ROUDIER does not disclose wherein the second wrapper has a greater thickness than the first wrapper.
MALGAT teaches a smoking article with a wrapper (abstract). MALGAT teaches many wrappers around the smoking article (Fig. 1, co-laminated wrapper 120, ¶237, plug wrap 126, ¶239, heat conductive material 140 and heat insulative material 142 ¶247). MALGAT teaches that the different wrappers have different thicknesses. The overall thickness of the wrapper is between 5 and 100 microns (¶76). The heat-conductive material is between 2 and 50 microns (¶77). The outer layer is between 5 and 7 microns and the thickness of the paper is not disclosed (¶78). In other embodiments the wrapper has a single layer of aluminum having a thickness between 15 and 15 microns (¶79). MALGAT teaches that the thickness of the barrier may be adjusted to achieve good smoking performance (¶122). Se also Table 1.
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 ROUDIER to provide wherein the second wrapper has a greater thickness than the first wrapper as taught in MALGAT. A person of ordinary skill would obviously recognize that the thickness of the wrappers will vary based on material selection and the second wrapper may be thicker than then first wrapper. A person of ordinary skill in the art would vary the thickness because doing so would alter and achieve good smoking performance (MALGAT ¶122).
Regarding claim 17, modified ROUDIER discloses the aerosol generating component of claim 1 as discussed above. ROUDIER further discloses wherein the aerosol generating material comprises tobacco material (¶227).
Regarding claim 18, modified ROUDIER discloses the aerosol generating component of claim 1 as discussed above. ROUDIER further discloses wherein the component is substantially cylindrical in shape (¶84) and has a circumference in the range of 16 mm to 19 mm (¶41). ROUDIER discloses that the diameter is in the range of 5 mm to 10 mm.
C
=
π
d
C = π (5mm) up to C = π (10mm)
C = 15.71 mm up to C = 31.4 mm
Therefore since ROUDIER discloses a diameter is in the range of 5 mm to 10 mm, ROUDIER inherently discloses that the range of the circumference overlaps the entire range of claimed in the instant application.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over ROUDIER as evidenced by WAYMACK, TSUTSUMI, MALGAT, and SHIMIZU, as applied to claims 1, 5, and 17-18 above, and further in view of US 20140283860 A1 (hereinafter STOLZ).
Regarding claim 3, modified ROUDIER discloses the aerosol generating component of claim 1 as discussed above. ROUDIER does not disclose wherein the thermal conductivity of the second sheet material is less than 0.06 Wm-1K-1.
ROUDIER discloses that the second sheet of material is made of tipping paper (¶223).
STOLZ teaches a smoking article with barrier coatings applied to the faces of the article (abstract). STOLZ teaches that the first barrier coating may be formed from material having a bulk thermal conductivity of between about 0.05 W per metre Kelvin (W/(mK)) and about 50 W per metre Kelvin (W/(mK)) (¶35).
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 ROUDIER to provide wherein the thermal conductivity of the second sheet material is less than 0.06 Wm-1K-1 as taught in STOLZ. A person of ordinary skill in the art would obviously use the material taught in STOLZ to wrap the mouthpiece of ROUDIER. Doing so would customize the thermal conductivity to limit the temperature (STOLZ ¶34-¶35). Further, given that the second sheet of paper taught by ROUDIER is the same as those disclosed in the instant specification to result in a sheet material having the claimed a thermal conductivity of less than 0.06 Wm-1K-1 of the second sheet material taught by ROUDIER is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Response to Arguments
Applicant’s arguments, filed September 30, 2025, with respect to the rejections of claims 1, 3, 5, and 17-18 under 35 USC 103 have been fully considered and are not persuasive.
Applicant rgues, “The prima facie case of obviousness fails, because a skilled artisan would not have been motivated to combine Tsutsumi with Roudier, and/or the other cited documents, to produce the component of claim 1.
Tsutsumi appears to disclose a cigarette with a cellulose-based wrapping paper having a thermal conductivity of at least 0.5 Wm-1 K-1, higher than standard cigarette paper, with adjustability through additives such as calcium carbonate. Roudier appears to disclose a smoking article comprising an aerosol-generating substrate circumscribed by a filter plug wrap and a mouthpiece. A heat-conducting, combustion-resistant wrapper of aluminium foil surrounds theheat source and a front portion of the substrate. The assembly is further enclosed in an outer wrapper, with an additional aluminium foil wrapper on the outside. Tsutsumi and Roudier are fundamentally different in material, function, and conductivity range. There is no motivation to replace a highly conductive, non-combustible foil with a lower- conductivity, combustible paper. Specifically, Tsutsumi teaches a paper wrapper with a thermal conductivity up to 0.6 W mK-1 for the purpose of controlling the burn rate and inducing self- extinction in combustible cigarettes.” ROUDIER discloses that it is known to induce a heat-conducting element around and in contact with the aerosol forming substrate (¶3). ROUDIER discloses that it is known to include a heat conducting element to ensure sufficient conductive heat transfer from the heat source to the substrate (¶3). ROUDIER discloses that in use the heat generated by conduction flows via the heat-conducting wrapper and that this advantageously helps achieve sufficiently high conductive heat transfer from the heat source to the substrate to provide an acceptable aerosol (¶32). This is a disclosure of using wrappers to control heat transfer. Therefore, a person of ordinary skill in the art would obviously rearrange parts as detailed above.
TSUTSUMI discloses a thermally conductive paper in direct contact with a substrate. TSUTSUMI teaches that the thermal conductivity of the wrapping paper can be controlled by controlling the amounts of loading or filter material added to the pulp base material (¶13). A person of ordinary skill instructed by ROUDIER to control heat transfer in an aerosol generating article would obviously look to teachings for modifying wraps for controlling heat transfer such as that taught in TSUTSUMI. Doing so would provide a wrapper with a high thermal conductivity to heat transfer (TSUTSUMI ¶8). Using this paper is a supported rationale for a conclusion of obviousness as outlined in the MPEP: (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (See MPEP 2143).
Regarding applicant’s arguments against the combustion resistance, controlling combustion and providing resistance is a motivation for a person of skill in the art of heat-not-burn aerosol articles. Prevention of combustion due to heat would be of particular concern to a person who wants to produce a heated aerosol, but not combust the article. Therefore the teachings of TSUTSUMI would applied with a reasonable expectation of success.
Applicant argues, “Moreover, the Office Action concedes that neither Roudier nor Tsutsumi discloses the feature ‘wherein a density of the first sheet material is higher than a density of the second sheet material’, but asserts that this is taught in Malgat. Malgat, however, is directed to preventing movement of the heat source by using wrappers with inwardly extending projections. Although Malgat refers to "density", this is only in the context of the pattern density of such projections, not the bulk material density of different wrappers. Malgat provides no disclosure or comparison of material densities between wrappers such as the co-laminated wrapper, plug wrap, or heat- conductive/insulative layers. Thus, there is no motivation for combining these unrelated teachings with Roudier. “ As explained above, MALGAT teaches that providing wraps with different densities is advantageous to not only retain the heat source, but also to maintain sufficient conductive heat transfer (MALGAT ¶39-¶40). Further the recited claim of the instant application does not provide a bulk density, only that the first sheet material is higher than a density of the second sheet material. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “bulk density”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747