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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/24/2025 has been entered.
Claim Interpretation
Claim 16 claims “material bridges established between adjacent layers of the aerosol-generating substrate”, Claim 28 claims “material bridges established between adjacent layers of the homogenized plant material” and claim 29 claims “material bridges established between adjacent layers of the aerosol-generating substrate.” The specification describes “material bridges may be established between adjacent layers of aerosol- generating substrate (for example, portions of aerosol-generating material not entirely detached, but folded away from their original flat state and extending between adjacent sheet portions).” Because “material bridges” has not been defined and folding and extending between adjacent sheet portions is only an example of how material bridges are establishes, the claim limitation is interpreted as material bridges established in any way in which there is contact between different parts of the sheet of homogenized plant material.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “portions of the homogenized plant material are not entirely detached from the one or more sheets” and “portions being folded to form material bridges extending between adjacent portions of the one or more sheets” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 28 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a process that forms perforations electro-perforating [0090], pins [0092], [laser [0094], it does not reasonably provide enablement for a process that perforates a homogenized plant material, “wherein portions of the homogenized plant material are not entirely detached from the one or more sheets during the perforation of the one or more sheets, the portions being folded to form material bridges extending between adjacent portions of the one or more sheets”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to perform the method of the invention commensurate in scope with these claims. There is no indication of a perforation process that would produce portions that are folded to form material bridges. In particular, while one of ordinary skill would expect some material to be left when a sheet of material is perforated by a pin, one of ordinary skill would not expect that material to be folded. Therefore, either a process that is not disclosed is used or the production of folded material as claimed is inherent, but not well known, in one of the disclosed perforation processes.
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.
Claim 28 is 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 28 claims “material bridges established between adjacent layers of the homogenized plant material.” It is not clear if this is intended as bridges between plant material within a sheet of the material or bridges between layers of the sheet that is made of plant material. According to the specification, “material bridges may be established between adjacent layers of aerosol- generating substrate (for example, portions of aerosol-generating material not entirely detached, but folded away from their original flat state and extending between adjacent sheet portions)”, thus suggesting bridges between adjacent layers of the sheet.
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.
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 16-17, 20, and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 2016/0295926) in view of Garcia et al. (US 2020/0359676).
Regarding claims 16 and 28-29, Zuber discloses an aerosol-generating article comprising a rod of aerosol-generating substrate ([0001]), the rod comprising a sheet of homogenized plant material, the homogenized plant material being arranged longitudinal between an upstream end of the rod and a downstream end of the rod ([0032]); and a wrapper circumscribing the homogenized plant material ([0038]), wherein the sheet of homogenized plant material comprises a plurality of formed fluid passageways (i.e., perforations) extending through a thickness of the sheet and configured to establish a fluid communication between opposite sides of the sheet ([0026]). Zuber further discloses a method of making a rod for an aerosol-generating substrate by providing a sheet of homogenized plant material ([0032]); forming fluid passageways (i.e., perforations) in the sheet of homogenized plant material, extending through a thickness of the sheet of homogenized plant material ([0026, 0028]); circumscribing the homogenized plant material with a wrapper to form a continuous rod, the homogenized plant material being arranged within the wrapper longitudinally between an upstream end of the rod and a downstream end of the rod, the plurality of formed fluid passageways establishing a fluid communication between opposite sides of the sheet of homogenized plant material ([0038]); and severing the continuous rod into a plurality of discrete rods ([0032]).
Regarding material bridges between adjacent layers, Zuber discloses a gathered sheet of non-tobacco material ([0038]), gathering the sheet of material to be wrapped in the wrapper material ([0057-0058]) and discloses that “As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.” ([0023]). Such gathering by convoluting, folding, or otherwise compressing or constricting the sheet would inherently establish material bridges between layers of the gathered sheet due to contact between layers as a result of convoluting, folding, or otherwise compressing or constricting the sheet.
However, Zuber does not explicitly teach a cumulative surface area of the formed fluid passageways in the sheet of homogenized plant material represents between about 0.1 percent and 25 percent of a surface area of the sheet of homogenized plant material. Zuber further fails to teach the sheet has about 20 to about 60 formed fluid passageways per square centimeter, wherein an average equivalent diameter of the formed fluid passageways is from about 100 micrometres to about 750 micrometres.
Garcia discloses an apparatus for manufacturing the aerosol-generating sheet comprises the perforating rollers which are used to produce the perforations (i.e., formed fluid passageways) on the aerosol-generating sheet ([0107], Fig. 10 components 122, 124). Garcia further teaches that the size (i.e., diameter) and distribution (i.e., population) of the perforations can be optimized and controlled to enhance the air permeability of the sheet ([0107]). Garcia is considered to be analogous art because it is reasonably pertinent to the aerosol-generating articles.
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 the aerosol-generating sheet of Zuber to incorporate the teachings of Garcia by optimizing a pair of perforating rollers to produce an aerosol-generating sheet with perforations ranging in diameter from 100 micrometer to 750 micrometers, distributed at a rate of about 20 to 60 perforations (i.e., formed fluid passageways) per square centimeter. Doing so would help improve aerosol generation, enhance the smoking experience, and thereby arrive at the presently claimed invention.
Regarding claim 30, modified Zuber discloses an aerosol-generating system, comprising an aerosol-generating article ([0068], Fig. 5); and an aerosol-generating device comprising a cavity configured to receive the aerosol-generating article ([0070], Fig. 6) and an induction source heater configured to produce an alternating electromagnetic field configured to induce a heat generating eddy current in a susceptor material of the susceptor (i.e., heating blade) ([0017, 0071]).
Please refer to the modified Figures below:
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953
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Regarding claims 17 and 25-27, modified Zuber discloses the aerosol-generating article comprising a heating element provided as a susceptor embedded within the rod of aerosol-generating substrate ([0017]). Furthermore, Zuber teaches that the thickness of the sheet is between 25 micrometers and 500 micrometers ([0037]), and the sheet is crimped ([0007]). As is known in the art, the crimped portion of the sheet should not be textured (i.e., perforated) to preserve its strength during subsequent manufacturing processes. Thus, it is clear the sheet of Zuber would not inherently be perforated (i.e., pierced) in the crimped portion.
Regarding claim 20, modified Zuber discloses an aerosol-generating article as set forth above. However, modified Zuber does not explicitly teach the average equivalent diameter of the formed fluid passageways is at least about 200 micrometres.
Garcia discloses an apparatus for manufacturing the aerosol-generating sheet comprises the perforating rollers which are used to produce the perforations (i.e., formed fluid passageways) on the aerosol-generating sheet ([0107], Fig. 10 components 122, 124). Garcia further teaches that the size (i.e., diameter) and distribution (i.e., population) of the perforations can be optimized and controlled to enhance the air permeability of the sheet ([0107]). Garcia is considered to be analogous art because it is reasonably pertinent to the aerosol-generating articles.
Zuber and Garcia do not expressly disclose that portions of homogenized plant material are not entirely detached from the one or more sheets during perforation and these portions being folded to form material bridges. However, Zuber and Garcia disclose the same process (i.e. perforation), and therefore the result of the process is inherent (i.e. the formation of portions not entirely detached and those portions being folded and forming material bridges). The effect is highlighted by disclosure by Zuber that the sheet is “textured” by processes such as perforation or “otherwise deformed” [0025-0026]. Although the texture is disclosed by Zuber to facilitate gathering, this also indicates that perforation is a deformation process and produces a “textured sheet” that will inherently form material bridges due to the texture.
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 the aerosol-generating sheet of modified Zuber to incorporate the teachings of Garcia by optimizing a pair of perforating rollers to produce an aerosol-generating sheet with perforations of at least about 200 micrometers in diameter. Doing so would help improve aerosol generation, enhance the smoking experience, and thereby arrive at the presently claimed invention.
Claims 22-23 are rejected under 35 U.S.C 103 as being unpatentable over Zuber (US 2016/0295926) in view of Garcia (US 2020/0359676), as applied to claims 16 and 28-29 above, and further in view of Duc et al. (US 2020/0375243).
Regarding claims 22-23, modified Zuber discloses an aerosol-generating article as set forth above. However, modified Zuber does not explicitly teach the formed fluid passageways are provided in a repeating pattern, wherein the repeating pattern comprises a plurality of spaced apart rows of formed fluid passageways.
Duc discloses a rod of aerosol-generating substrate comprises the sheets of tobacco that are punctured with a pattern (i.e., repeated arrangement) of uniformly spaced air flow holes across the sheet ([0031]). Thus, it is clear that the tobacco sheet of Duc inherently includes a plurality of spaced-apart rows of air flow holes. Duc is considered to be analogous to the claimed invention.
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 the aerosol-generating sheets of modified Zuber to incorporate the teachings of Duc to produce aerosol-generating sheet with a pattern of air flow holes, ensure the air flow holes are consistently and evenly punctured across the entire sheet, resulting in a plurality of spaced-apart rows of perforations (i.e., formed fluid passageways) Doing so would help improve aerosol generation within the rod of the aerosol-generating substrate, thereby arriving at the presently claimed invention.
Claim 24 is rejected under 35 U.S.C 103 as being unpatentable over Zuber (US 2016/0295926) in view of Garcia (US 2020/0359676) and Duc (US 2020/0375243), as applied to claims 16 and 28-29 above, and further in view of Counts et al. (US 5,369,723).
Regarding claim 24, modified Zuber discloses an aerosol-generating article as set forth above. However, modified Zuber does not explicitly teach a linear distance between adjacent formed fluid passageways in a row of formed fluid passageways is at least about 1 millimeter.
Counts discloses a smoking article comprises the dried cast sheet (i.e., aerosol-generating sheet) perforated with pins, and the spacing between the perforations is approximately 1 millimeter ([Col. 15 ln 61-68]). Counts is considered to be analogous art because it is reasonably pertinent to the aerosol-generating articles.
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 the aerosol-generating sheet of modified Zuber to incorporate the teachings of Counts by providing the aerosol-generating sheet with perforations that are at least about 1 millimeter apart from each other in order to enhance aerosol generation, as recognized by Counts.
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
Amended claim language regarding material bridges is addressed in the rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Tryder can be reached on 571-270-7365. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/ Primary Examiner, Art Unit 1747