DETAILED ACTION
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
Applicant argues “The Office Action appears to rely on Aeschlimann's cut filler tobacco layer 10 as the claimed first region and Aeschlimann's reconstituted tobacco sheet layers 12/14 as the claimed second region. The Office Action further appears to infer that these regions have different densities because layer 10 and layers 12/14 have different configurations. This inference is insufficient to establish anticipation. Aeschlimann does not expressly disclose that cut filler tobacco layer 10 has a first density and that reconstituted tobacco sheet layers 12/14 have a second density different from the first density. At most, Aeschlimann discloses different forms or configurations of tobacco material. Different configurations, however, do not necessarily establish different density. Density is mass per unit volume, and the mere fact that two regions have different configurations does not establish that they have different densities. Nor has the Office established inherency. "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). The Examiner has failed to meet this burden. MPEP § 2112, IV provides guidance regarding the rationale or evidence required to support inherency. Here, the Office Action does not provide facts or technical reasoning showing that the alleged density difference necessarily flows from Aeschlimann's disclosure of cut filler tobacco layer 10 and reconstituted tobacco sheet layers 12/14. The Office Action relies on the fact that the layers have different configurations, but different configuration does not necessarily require different density.” The Examiner disagrees. The tobacco slab 10 (first region) of Aeshlimann and the tobacco sheets 12/14 (second region) necessarily have different methods of manufacture, composition, etc. The only possible way that these significantly different configurations would somehow have densities are that exactly identical to one another would be due to a deliberate attempt during manufacture to provide densities that are exactly identical to another. There is no such indication in Aeshlimann. This is further supported by the disclosure of an average density of the article [0037], implying that the density of the first region is not exactly identical to the second region, and the fact that the density of the tobacco slab alone [0036] is different from the density of the article when the sheets are included [0037]. Absent any indication or suggestion that the densities are exactly identical to one another, they are thus inherently “different”. The Examiner again emphasizes the extremely broad nature of the “different” limitation. 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.
Applicant argues “the Office Action merely states that Gellatly's density is "a conventional density for sheets of reconstituted tobacco known in the art" and that applying that density to Aeschlimann would have achieved "predictable results." See Office Action, page 4. However, the Office Action does not identify any teaching in Aeschlimann suggesting that the density of reconstituted tobacco sheet layers 12/14 should be modified. Nor does the Office Action identify any recognized problem in Aeschlimann that would be solved by applying Gellatly's disclosed density, or explain why density would have been selected as a result-effective variable in Aeschlimann's multilayer tobacco structure.” The Examiner disagrees. This is not a case of “modifying” a density of the sheets that is already disclosed. Aeschlimann is silent to a density of the tobacco sheets themselves. Aeschlimann only teaches an overall average density of the article. Clearly the sheets of Aeschlimann must have some density. In order to select a density for the sheets, one of ordinary skill in the art would have looked to reconstituted tobacco sheets know in the art, such as that of Gellatly. A problem does not necessarily need to be solved in order to render the combination obvious. 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).
Applicant argues “Gellatly does not appear to identify the 0.58 gm/cc (580 mg/cm³) density of Example 1 as a conventional or default density for reconstituted tobacco sheets generally. In fact, neither the definition of sheet density nor the disclosure of a sheet density of about 0.58 gm/cc in a particular example establishes that 0.58 gm/cc (580 mg/cm³) is a conventional density for reconstituted tobacco sheets generally, as alleged by the Office Action. Gellatly does not characterize this density as conventional.” The density of Gellatly does not necessarily need to be considered conventional in order to render the combination obvious. As cited above and in the rejection, the material must simply be known in the art. Aeschlimann teaches a reconstituted tobacco sheet but is silent to its density. Gellatly teaches a known reconstituted tobacco sheet having a certain density. One of ordinary skill in the art would have found it obvious to select this material for the reconstituted tobacco sheet of Aeschlimann to achieve predictable results.
Applicant argues “Gellatly's specific sheet density is not shown to be suitable for Aeschlimann's multilayer structure under §103. Furthermore, Gellatly's disclosed density is tied to Gellatly's particular reconstituted tobacco sheet composition and processing objectives. The Office Action does not establish that Gellatly's sheets are interchangeable with Aeschlimann's top-loaded reconstituted tobacco sheet layers 12/14, or that a person of ordinary skill would have selected Gellatly's specific sheet density for use in Aeschlimann's multilayer structure. At most, the rejection identifies a density from Gellatly and applies it to Aeschlimann to supply the claimed density difference. Such reasoning is insufficient to support a prima facie case of obviousness and appears to rely on impermissible hindsight reconstruction.” The Examiner disagrees. Aeschlimann is silent to the specific density of the tobacco sheets. Aeschlimann is further silent to any specific requirements of the tobacco sheet, other than very broadly indicating that it is a reconstituted tobacco sheet. Due to this absence, one of ordinary skill in the art would have considered a known reconstituted tobacco sheet such as that of Gellatly to be suitable for the structure of Aeschlimann.
Applicant argues “The Office Action does not explain why a person of ordinary skill would have selected Aeschlimann's continuous sandwich structure for insertion into Blandino's heating chamber.” The Examiner disagrees. As explained in the Office action, a person of ordinary skill would have selected Aeschlimann's continuous sandwich structure for insertion into Blandino's heating chamber to volatilize the substrate without burning as suggested by Blandino [0070]. One of ordinary skill in the art would appreciate that this would avoid harmful byproducts typically associated with tobacco burning.
Applicant argues “Blandino's Fig. 6 and paragraph [0143] describe heaters 110a, 110b arranged to heat an article from its peripheral surface. The Office Action does not explain why that heating arrangement would have been selected for, or reasonably expected to suitably heat, Aeschlimann's multilayer structure.” The article used in Blandino comprises cut tobacco or reconstituted tobacco [0062] and has a rectangular cube shape [Fig. 1]. The article of Aeschlimann comprises cut tobacco and reconstituted tobacco and has a rectangular cube shape [Fig. 2]. For these reasons, the heating arrangement of Blandino would have been reasonably expected to suitably heat Aeschlimann's multilayer structure.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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. This is further supported by the disclosure of an average density of the article [0037], implying that the density of the first region is not exactly identical to the second region, and the fact that the density of the tobacco slab alone [0036] is different from the density of the article when the sheets are included [0037]. 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
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 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
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