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 .
Response to Amendment
Applicant’s amendment submitted September 26, 2025 has been entered.
Claims 1, 3-5, 7-16, and 18 remain pending in the application. Claims 7-16 and 18 were withdrawn (see “Election/Restriction” section of Non-Final Rejection mailed May 15, 2024).
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lavanchy et al. (US 2018/0007959) in view of Katigbak (US 2009/0223528).
Regarding claim 1, Lavanchy teaches a wrapper for wrapping an aerosol generating material (Figure 1, combination of outer wrapper 12 and second heat conducting element 30 covers tobacco material 18, [0153] and [0158]),
wherein the wrapper is a laminate structure comprising at least three layers (Figure 1, outer wrapper 12, second heat conducting element 30 and outer surface of heat conducting element coated with surface coating form 3 layers, [0153], also [0170] specifically mentions this structure being co-laminate),
and wherein; (a) one of the peripheral layers comprises a lacquer (outer surface of heat conducting element has lacquer coating, [0158]);
(b) an intermediate layer comprises a non-combustible material, wherein the non-combustible material comprises a metal foil and wherein the metal foil is more than about 1 micron thick (second heat conducting element being aluminum (i.e. metal) foil (non-combustible material) which is between outer wrapper and lacquer coating with a thickness of 6.3 microns, [0170]);
and (c) the other peripheral layer comprises paper (Figure 1, outer wrapper 12 is cigarette paper, [0150]);
Lavanchy fails to explicitly disclose the specific lacquer used and that the lacquer has a dynamic coefficient of friction of from 0.4 to 1.0.
Katigbak teaches a cigar with a support that includes a lacquer layer that is an acrylic lacquer (high heat acrylonitrile/butadiene/styrene copolymer (ABS) (instant application specification on page 5, lines 20-21 states that the lacquer may be a styrene acrylic copolymer, which ABS is) combined with a metal, [0020]). Katigbak also teaches that the high heat acrylonitrile/butadiene/styrene copolymer (ABS) layer will not be sufficiently heat conducting to burn the user or to adversely affect the wrapping material [0020].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use high heat acrylonitrile/butadiene/styrene copolymer (ABS) from Katigbak as the polymer for the lacquer layer of Lavanchy because doing so would have the layer not be sufficiently heat conducting to burn the user or to adversely affect the wrapping material, as recognized by Katigbak [0020].
Since in the instant application specification (page 5, lines 20-21) specifies that the lacquer may be a styrene acrylic copolymer dispersion (which the lacquer from Lavanchy combined with the ABS polymer from Katigbak is as laid out above), and that the instant application provides no further explanation of the specific dynamic coefficient of friction desired, the material of Lavanchy combined with Katigbak must have the desired dynamic coefficient of friction (0.4 to 1.0) because it meets the requirements laid out in the instant application specification thereby reading over claim 1. There is no evidence to suggest otherwise at the time of this action.
Regarding claim 3, modified Lavanchy teaches a wrapper according to claim 1, wherein the metal foil comprises aluminum (Lavanchy, second heat conducting element being aluminum foil, [0170])).
Regarding claim 4, modified Lavanchy teaches a wrapper according to claim 1, wherein the wrapper consists of three layers (Lavanchy, Figure 1, outer wrapper 12, second heat conducting element 30 and outer surface of heat conducting element coated with surface coating form 3 layers, [0153]).
Regarding claim 5, modified Lavanchy discloses a wrapper according to claim 1, wherein the lacquer is an acrylic lacquer (Katigbak, high heat acrylonitrile/butadiene/styrene copolymer (ABS), [0020]).
Response to Arguments
Applicant's arguments filed September 26, 2025 have been fully considered but they are not persuasive.
Applicant argues (see pages 1-4 of Remarks) that Lavanchy does not teach a laminate, that the wrapper does not wrap an aerosol generating material, and that the paper layer is not “peripheral”. Even if the word “laminate” was used in Lavanchy to disclose a testing apparatus, Examiner contends that the wrapper as presented in the rejection of claim 1 above does constitute a laminate structure by the plain definition of the word and be Applicant’s own definition (see page 5 of as-filed specification “As used herein, the term "laminate" refers to a multi-layer structure in which the layers are fastened together to form a single body. The layers may be fastened with an adhesive, for example. In other examples, the layers may be fastened by static interaction. In other examples, the laminate structure might be formed by (partially) melting a first layer, contacting the first layer with a second layer and allowing the first layer to solidify. Any suitable mechanism for fastening the layers together including, but not limited to, the above examples, tying, sewing, screwing, nailing, bolting, hooking etc. may be employed to form the laminate structure.”). Lavanchy’s laminate has layers which must be attached together in some way to stay in place on the device, which may not be specifically disclosed, but would fall under this given definition. Also, claim 1 does not require the wrapper to completely cover the aerosol generating material, so the wrapper of Lavanchy does meet this claim since it at least partially covers the aerosol-generating material as presented in the rejection of claim 1 above. Additionally, the paper is “peripheral” to the three layers of the wrapper presented in the rejection of claim 1 above (the lacquer, the second heat conducting element, and the outer wrapper), with the outer wrapper (the paper) being on the outside of the presented layers. Therefore, these arguments are not persuasive.
In response to applicant's argument that Katigbak is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Katigbak is still considered to be in the field of the inventor's endeavor (which is aerosol-generating articles), and cigars are aerosol-generating articles, and it is well known to one of ordinary skill in the art that cigarettes/cigars can be placed into a heat-not-burn type aerosol-generating device, so therefore the art would be relevant.
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 Adam Z. Baratz whose telephone number is (703)756-1613. The examiner can normally be reached Monday-Thursday 6:30 - 4:30 CT.
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/A.Z.B./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747