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 .
Status of the Claims
Claims 1-8 and 11-28 are pending. Claims 16-27 are withdrawn. Claims 9-10 are cancelled.
Response to Amendment
The Response of 12/15/2025 is entered. The claims were not amended in the Response.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive. Applicant first argues that the claim limitation requiring a wound structure and a helically wound layer are not met:
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Response pg 7 1st full paragraph reproduced above.
This is not persuasive. The broadest reasonable interpretation of a wound structure and a helically wound structure includes a hollow tube. Support for this interpretation may be found in the Non-Final Rejection of 09/18/2025. Applicant has chosen to pursue claims to an article, not a method of making the article. Product by process claim limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps, MPEP 2114 Product by Process Claims I. “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.” Id. Because a hollow tube is a structure that may be a wound structure and comprise a helically wound layer, a hollow tube satisfies these limitations.
Applicant next argues that Lim does not disclose a hollow aerosol generating rod, and although Greim discloses an aerosol generating rod that meets the structural limitations of the claim, one of ordinary skill in the art would not have a reasonable expectation of success combining the references, Response pg 7 2nd full paragraph.
It is noted that both references are within the inventor’s field of endeavor, the smoking arts, and thus are valid for all that they disclose and teach.
Lim discloses that the “tobacco rod 21000 may be manufactured in various forms.” (see page 5, lines 1-2). Lim discloses an aerosol generating material contained in a tube, where an external source of aerosol is generated by the device and is expected to pass longitudinally through the aerosol generating rod, where additional heat is provided from a susceptor wound around the aerosol generating rod, ([0068]), and aerosol generated from the aerosol generating material mixes with the aerosol from the device and is inhaled by a user, ([0050]).
Lim discloses that heat may be applied through conduction or induction, ([0068] reasonably suggesting that multiple ways of heating the aerosol generating material are compatible).
Griem teaches a known form of an aerosol generating rod, where the aerosol generating rod is hollow. The particular teachings of Griem regarding resistive heating are not limiting regarding the use of the structure of the aerosol generating rod taught by Griem to modify Lim.
The prior rejection made clear that one of ordinary skill in the art would have been motivated to combine the hollow tubular form of Griem with the disclosure of Lim to facilitate the delivery of the externally generated aerosol through the aerosol generating article. The structure of Griem, a hollow tube, suggests it would facilitate the passage of an aerosol through it. One of ordinary skill in the art would expect that inductive heating from Lim would work, because both conductive heating and inductive heating are suggested as alternatives or even combinable. Applicant’s arguments regarding the lack of an expectation of success, such that one of ordinary skill in the art would not have found the combination obvious, have been fully considered but are not persuasive.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1-4, 6, 12-15, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Lim (US 2020/0221782 A1)(Foreign Applications relied upon to establish priority date), and in further view of Greim et al. (WO 2009/118085 A1).
Regarding claim 1, Lim discloses:
A consumable for use with apparatus for heating aerosolizable material to volatilize at least one component of the aerosolizable material, ([0006]), the consumable comprising:
a hollow tube, ([0066] the tobacco rod may be packaged by a first wrapper, which adopts the shape of a hollow tube when circumscribing the tobacco rod), comprising a tubular structure (the structural interpretation of a wound structure) comprising aerosolizable material, ([0067] the tobacco rod may include aerosol generating material) and the tobacco rod may be manufactured as a sheet, ([0068]); and a heating material that is heatable by penetration with a varying magnetic field, ([0068] a heat conductive material may surround the tobacco rod and function as a susceptor), wherein the hollow tube comprises a layer comprising the heating material, wherein the layer comprising the heating material has a hollow tube shape (the structural interpretation of a helically wound layer)). Lim does not explicitly disclose a carrier with the aerosolizable material impregnated in the carrier.
Greim teaches electrically heated aerosol generating systems, ([pg 1 lines 4-6]), and is thus within the inventor’s field of endeavor. Greim teaches providing a hollow aerosol forming substrate that releases volatile compounds upon heating, ([pg 2 lines 34-35] the carrier is tubular, and the solid substrate is present in a thin layer, reasonably disclosing a hollow tube structure with a tubular layer of heating material and at least one tubular layer of aerosolizable material meeting the limitation of a wound structure). Greim teaches an embodiment where the solid substrate may be embedded in a thermally stable carrier, in the form of a tube, where the tubular carrier may be made of paper or a paper-like material, ([pg 3 lines 11-20] where the solid substrate may be on the inner surface, outer surface, or both surfaces of the tube, embedding the solid substrate in a thermally stable carrier meeting the limitation requiring the aerosolizable material be impregnated in the carrier).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Lim according to the teachings of Greim. While Lim does not disclose that the aerosol generating rod is hollow, the device of Lim is designed to generate a vapor that is delivered through the rod to the user, ([0050]), and one of ordinary skill in the art would be motivated to modify the tobacco rod of Lim by applying the hollow tubular form of the aerosolizable material with a carrier to the inductively heatable tube of Lim, to improve the vaporizer flow through the cigarette.
Regarding claim 2-4, modified Lim discloses the wound structure is a helically wound structure because, as above, Greim teaches providing a hollow aerosol forming substrate that releases volatile compounds upon heating, ([pg 2 lines 34-35] the carrier is tubular and the solid substrate is present in a thin layer, reasonably disclosing a hollow tube structure with a tubular layer of heating material and at least one tubular layer of aerosolizable material meeting the limitation of a helically wound structure and necessarily defining at least part of a surface of the consumable, and in the absence of any additional layers defining the innermost surface of the consumable).
Regarding claim 6, modified Lim teaches the consumable of claim 1. Modified Lim teaches that the wound structure forms a layer of the hollow tube, ([pg 3 lines 11-20] a carrier layer and at least an aerosolizable material layer), and the hollow tube has a wrapper layer, ([0066]).
Regarding claim 12, modified Lim discloses the consumable of claim 1, wherein the hollow tubular carrier may comprise two layers of aerosolizable material, Greim teaching an embodiment where the inner and outer layer of the carrier comprise aerosolizable material, ([pg 3 lines 11-20]).
Regarding claim 13, modified Lim discloses the consumable of claim 12. Lim discloses that the inductive heater may be tubular and located inside the cigarette, ([0068]).
Greim teaches that the aersolizable material may be provided on both the inner and outer sides of the carrier, and teaches that the carrier may comprise a metal foil, ([pg 3 lines 11-20]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Lim to apply a layer of the carrier with the aerosolizable material to both the inside and the outside of the tubular inductive heating layer of Lim. One of ordinary skill in the art would have been motivated to do so for the obvious reason of increasing the amount of aerosol generating material in the cigarette, and to take advantage of both heating sides of the inductive heated susceptor tube.
Regarding claim 14, modified Lim discloses the consumable of claim 6. Lim discloses that the tobacco rod may include additional flavorings such as menthol, ([0067]).
Regarding claim 15, modified Lim teaches the consumable of claim 1.
Greim teaches that the aerosolizable material of the helically wound structure comprises an amorphous solid, ([pg 3 lines 11-20] the aerosolizable material may be a gel).
Regarding claim 28, modified Lim teaches the consumable of claim 1. Lim discloses that the inductive heater may be tubular and located inside the cigarette, ([0068]).
Greim teaches that the aersolizable material may be provided on the inner side of the carrier, ([pg 3 lines 11-20]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Lim to provide the inductive heating tube layer outside of the carrier, and the aerosolizable material on the inside of the carrier, to avoid any potential unwanted reactions between the aerosolizable material and the heating layer.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lim (US 2020/0221782 A1)(Foreign Applications relied upon to establish priority date) and Greim et al. (WO 2009/118085 A1), as applied to claim 1 above, and further in view of Counts et al. (US 5,369,723) Counts 1.
Regarding claim 5 and 7, modified Lim teaches the consumable of claim 1. Lim does not teach corrugations, embossing or debossing the structure comprising aersolizable material and at least one of the one or more further layers.
Counts 1 teaches a smoking article that employs disposable electrical heaters, ([Col 2 lines 40-42]), and thus is within the inventor’s field of endeavor. Counts 1 teaches that aerosol and flavor generation may be controlled by increasing the effective surface area if the aerosol generating material surface, by patterning the material explicitly including embossing and perforating the sheet, ([Col 7-8 lines 67-12]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have further modified Lim to emboss the aerosol generating material and carrier layers to improve and better control the aerosol generation as taught by Counts 1. One of ordinary skill in the art would have recognized the benefit of improving aerosol generation because this would allow for more efficient aerosol generation. The ridges and patterning of the aerosol generating material layer would necessarily provide gaps between the other layers that would provide aerosol flow paths between the layers.
Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lim (US 2020/0221782 A1)(Foreign Applications relied upon to establish priority date) and Greim et al. (WO 2009/118085 A1), as applied to claim 1 above, and further in view of Counts et al. (US 5,388,594) Counts 2.
Regarding claim 8 and, modified Lim teaches the consumable of claim 1. Lim discloses an aerosol generating device that is meant to be reused, ([0057]), and a wrapper layer circumscribing a cigarette consumable, ([0066]). Lim does not disclose that the cigarette further comprises a barrier layer.
Counts 2 teaches an electrical smoking system for delivering flavors, ([Title]), and thus is within the inventor’s field of endeavor. Counts 2 teaches that the prior art included cigarettes with tube in tube construction, with tobacco flavor material positioned on a carrier inside a heating layer, and a barrier tube outside of the heating layer, to prevent aerosols from condensing on permanent structures of aerosol generating devices, ([Col 2 lines 1-12]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Lim according to the teachings of Counts 2. Lim has a reusable aerosol generating device that generates an aerosol from a consumable with a wrapper around a carrier comprising an aerosol generating layer. Counts 2 teaches that a barrier may be used to reduce aerosol condensing on the permanent parts of the device, which one of ordinary skill in the art would expect to improve user satisfaction by limiting stale flavor and reduce device cleaning.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (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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/D.E.V./Examiner, Art Unit 1747
/Michael J Felton/Primary Examiner, Art Unit 1747
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