DETAILED ACTION
Response to Arguments
Applicant’s arguments in view of amendment filed 2/5/2026 with respect to the rejection of the claims under 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as detailed below.
Claim Rejections - 35 USC § 112
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 1-14 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.
Claim 1 recites the limitation "the second major surface”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this will be interpreted as “a second major surface”. Claim 2 should amended to recite “wherein the second major surface is substantially flat”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-8 and 13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Aeschlimann (US 2007/0163605), or, in the alternative, under 35 U.S.C. 103 as obvious over Aeschlimann (US 2007/0163605) in view of Gellatly (US 5,724,998).
Regarding claims 1 and 13, Aeschlimann teaches an article [Fig. 2], the article comprising a sandwich-structure 20 (substrate) and a first major surface (bottom surface of base layer 12) which is substantially flat, the substrate formed from tobacco [0022-0023] comprising a first region 10 and a second region 12/14, wherein the first region 10 is disposed between a first portion 12 and a second portion 14 of the second region such that the first portion 12 of the second region is adjacent the first major surface and the second portion 14 of the second region is adjacent a second major surface (upper surface of second portion 14), and the first region 10 is spaced from the first and second major surfaces [0035].
As evidenced by US 2007/0074734, a conventional tobacco product intended to be smoked can instead be used to form an aerosol simply by heating to a lower temperature [0020, 0039, 0042]. The limitations of “for forming an aerosol”, “aerosol-forming”, and “formed from an aerosol-forming material” do not further limit the or structure or composition of the article to distinguish from that of Aeschlimann. These limitations are thus met by the article of Aeschlimann as it is inherently capable of being used in the claimed manner. The article of Aeschlimann is also capable of being inserted into a hypothetical heating chamber of a device for generating an aerosol. The actual presence of a heater chamber of a device for generating an aerosol is not required by claim 1.
Regarding the first region having a first density and a second region having a second density, where the first density is different to the second density, Aeschlimann teaches the first region 10 comprises a slap of tobacco cut filler and the second region 12/14 comprises sheets of reconstituted tobacco [0022-0025, 0035]. The regions have completely different configurations from one another, and as a result, the density of the first region is interpreted as being different, to some degree, from the second density. The Examiner notes claim 1 very broadly recites that a first density is "different" than a second density. A first density that is, for example, 99.9% of the second density would read on this limitation. The claims do not require a specific density difference.
In the alternative, Aeschlimann teaches a tobacco slab (first region) density of 200-250 mg/cm3 [0017]. If is interpreted that Aeschlimann does not teach the density of the sheets of reconstituted tobacco (second region) is different, Gellatly teaches sheets of reconstituted tobacco having a density of 0.58 g (580 mg)/cm3 [Example 1]. As this is a conventional density for sheets of reconstituted tobacco known in the art, it would have been obvious to one of ordinary skill in the art to apply this density to the second region of Aeschlimann to achieve predictable results. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, the first density is different to the second density.
Regarding claim 2, Aeschlimann teaches the second major surface (upper surface of second portion 14) is substantially flat [Fig. 2].
Regarding claim 3, Aeschlimann teaches the first (bottom surface of base layer 12) and second (upper surface of second portion 14) major surfaces are substantially parallel to one another [Fig. 2].
Regarding claim 4, Aeschlimann teaches the first and second major surfaces are spaced from one another by about 6 mm to about 10 mm [0023]. The “about” is interpreted as allowing for +/- 10%, giving a lower limit of 5.4 mm. Regarding the limitation of less than 5 mm, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the instant case, 5.4 mm is close enough to less than 5 mm that one skilled in the art would have expected them to have the same properties.
Regarding claim 5, Aeschlimann teaches the article has a generally parallelepiped shape [0015].
Regarding claims 6-8, Aeschlimann teaches the first region 10 is at least partially surrounded by the second region 12/14, the first region 10 is at or adjacent one or more peripheral zones of the article, and the first region 10 is sandwiched by the second region 12/14 [Fig. 2].
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Aeschlimann, or Aeschlimann and Gellatly, as applied to claim 1 above, and further in view of Moshy (US 3,410,279).
Aeschlimann does not teach at least part of the article is formed of foam. Moshy teaches foamed reconstituted tobacco sheets which increase increasing uniformity in blend, bulk density, and draw, and produce a smoking article of improved mildness [col. 1, l. 40-69; col. 5, l. 18-22]. It would have been obvious to one of ordinary skill in the art to use foamed reconstituted tobacco sheets for the second region of Aeschlimann for the reasons above suggested by Monte. Thus, the aerosol-forming substrate comprises the foam. The continuous, open cellular structure is interpreted to read on a reticulated open-celled foam.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Aeschlimann, or Aeschlimann and Gellatly, as applied to claim 1 above, and further in view of Blandino (US 2017/0119050).
Aeschlimann does not teach the article comprises one or more metal elements. Blandino teaches an article comprising metal element 20 in a tobacco material 10 [Fig. 2; 0062, 0073, 0086]. This enables the article to be used in an induction heating device for volatilization of the smokeable material [0101-0102]. It would have been obvious to one of ordinary skill in the art to include a metal element in the article of Aeschlimann for these reasons.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Aeschlimann, or Aeschlimann and Gellatly, and in view of Blandino.
Aeschlimann teaches an article [Fig. 2], the article comprising a sandwich-structure 20 (substrate) and a first major surface (bottom surface of base layer 12) which is substantially flat, the substrate formed from tobacco [0022-0023] comprising a first region 10 and a second region 12/14, wherein the first region 10 is disposed between a first portion 12 and a second portion 14 of the second region such that the first portion 12 of the second region is adjacent the first major surface and the second portion 14 of the second region is adjacent a second major surface (upper surface of second portion 14), and the first region 10 is spaced from the first and second major surfaces [0035].
As evidenced by US 2007/0074734, a conventional tobacco product intended to be smoked can instead be used to form an aerosol simply by heating to a lower temperature [0020, 0039, 0042]. The limitations of “for forming an aerosol”, “aerosol-forming”, and “formed from an aerosol-forming material” do not further limit the or structure or composition of the article to distinguish from that of Aeschlimann. These limitations are thus met by the article of Aeschlimann as it is inherently capable of being used in the claimed manner. The article of Aeschlimann is also capable of being inserted into a hypothetical heating chamber of a device for generating an aerosol. The actual presence of a heater chamber of a device for generating an aerosol is not required by claim 1.
Regarding the first region having a first density and a second region having a second density, where the first density is different to the second density, Aeschlimann teaches the first region 10 comprises a slap of tobacco cut filler and the second region 12/14 comprises sheets of reconstituted tobacco [0022-0025, 0035]. The regions have completely different configurations from one another, and as a result, the density of the first region is interpreted as being different, to some degree, from the second density. The Examiner notes claim 1 very broadly recites that a first density is "different" than a second density. A first density that is, for example, 99.9% of the second density would read on this limitation. The claims do not require a specific density difference.
In the alternative, Aeschlimann teaches a tobacco slab (first region) density of 200-250 mg/cm3 [0017]. If is interpreted that Aeschlimann does not teach the density of the sheets of reconstituted tobacco (second region) is different, Gellatly teaches sheets of reconstituted tobacco having a density of 0.58 g (580 mg)/cm3 [Example 1]. As this is a conventional density for sheets of reconstituted tobacco known in the art, it would have been obvious to one of ordinary skill in the art to apply this density to the second region of Aeschlimann to achieve predictable results. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Thus, the first density is different to the second density.
Aeschlimann does not teach the claimed method. Blandino teaches a method of using an article for forming an aerosol, the method comprising: b) inserting the article into a heating chamber of a device for generating an aerosol [0122-0125]; c) irradiating the article in the heating chamber with electromagnetic radiation to generate aerosol from the aerosol-forming substrate [0065, 0142-0143]; and d) flowing air through the aerosol-forming substrate [0143]. It would have been obvious to one of ordinary skill in the art to apply this method for using the article of Aeschlimann to volatilize the substrate without burning as suggested by Blandino [0070].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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/ERIC YAARY/Examiner, Art Unit 1755