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 Arguments
Applicant's arguments filed 5/13/2026 have been fully considered but they are not persuasive.
The applicant’s amendment and discussion to address the 112(a) rejection is acknowledged. However, the present arguments and further consideration necessitate continued rejection under 112(a). Please see the rejection below.
The applicant argues that the, “…the cited references do not disclose or suggest that the perforation processes described therein necessarily or inevitably produce partially detached portions that are folded and remain extending between adjacent sheet portions.”, and that inherency, “…is not supportable because inherence requires that the feature necessarily be present in the prior art process.” The processes disclosed in the prior art are the same as those disclosed in the specification (i.e. perforation) and therefore must result in the same effect. If this is not the case, and perforation does not inherently make partially detached portions that are folded and remain extending between adjacent sheet portions when the sheet is gathered, then the invention as disclosed is not enabled because the processes disclosed cannot make the product and some unknown process is necessary.
In addition, the applicant illustrates only a fully perforated sheet without partially detached folded portions and does not illustrate adjacent sheets with folded portions extending between them.
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 perforation remnants extending between adjacent portions of the one or more sheets, the perforation remnants being formed when portions of the sheet are not entirely detached” 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 § 103
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.
Claims 16, 17, 20, 22-30 are 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 using known techniques of electro-perforating [0090], pins [0092], [laser [0094], it does not reasonably provide enablement for making a product of perforated sheets of 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 perforation remnants extending between adjacent portions of the one or more sheets, the perforation remnants being formed when portions of the sheet are not entirely detached”. The claims have been amended to remove the term “material bridges” and instead include the limitation, “perforation remnants”. However, there is no disclosure enabling the formation of “perforation remnants”.
One of ordinary skill would face undue experimentation in order to make the instant invention based on the instant disclosure. Although the claims are not overly broad, the nature of the invention is well known (i.e. perforation of cigarette materials) and state of the prior art is well settled. However, the applicant does not provide direction as to how “portions being folded to form perforation remnants extending between adjacent portions of the one or more sheets,” occurs. The applicant discloses three perforation processes, but does not disclose that any of these form, “perforation remnants.”
The lack of direction is further complicated because two of the processes would not be expected to form “perforation remnants” that extend anywhere. Laser perforation (instant specification [0094]) would not form physical perforation remnants because it burns holes in sheet material (see Belcastro et al., (US 20050049129), claim 19). Electrostatic perforation (instant specification “electro-perforating process” [009]), also burns holes in the sheet material and one of ordinary skill would not expect it to form perforation remnants that extend anywhere (see Eitzinger (US 20130104915), [0013]).
In particular, both the instant specification and the prior art disclose the same perforation processes, which are well known. This is the crux of the issue. The applicant has specifically stated that the prior art process cannot inherently produce the product even though it is the same process. The applicant does not present any more direction as to using conventional perforation techniques and apparatuses to form the “perforation remnants”. However, theses same techniques cannot inherently produce the same perforation remnants in the prior art.
In addition, one of ordinary skill in the art at the time of invention would expect some of the techniques disclosed in the specification to not form any “perforation remnants” capable of separating one sheet from another. For example, laser perforation (instant specification [0094]) would not form folded perforation remnants because it burns holes in sheet material (see Belcastro et al., (US 20050049129), claim 19). Electrostatic perforation (instant specification “electro-perforating process” [009]), also burns holes in the sheet material and one of ordinary skill would not expect it to form folded perforation remnants (see Eitzinger (US 20130104915), [0013]).
The applicant disclose pin perforation [0092], but does not disclose that this process forms perforation remanants that are folded.
The applicant also does not illustrate the key structural elements being claimed. Therefore, one of ordinary skill is faced with undue experimentation to form a product with the features claimed.
lead one of ordinary skill away from being able to make the instantly claimed product. Specifically, elsectrostatic perforation and laser perforation are destructive, producing holes by destroying the material. One of ordinary skill in the art would not understand how these processes would form “folded material” that is “not entirely detached.” These processes are disclosed by the applicant as being able to produce the claimed invention.
The applicant argues that the perforation remnants formed when portions of the sheet are not entirely detached is not merely the presence of contact, but the specific formation mechanism in which portions remain partially attached and are displaced during perforation. This is not supported by the specification because not formation mechanism is disclosed. The specification does not support any specific formation mechanism other than standard perforation by pin, electrostatic, or laser. In particular, the specification states that the perforation may be formed, “…by means of perforation equipment such as apparatus for the perforation of paper commonly used in the packaging field.” [0090]. Another process can be electro perforating process, with no specific details other than indicating that it is for perforating [0090]. Laser perforation is also disclosed [0094]. Again, no specific method for forming portions of a sheet that are not entirely detached is disclosed. Therefore, applicant’s argument that the prior art method does not produce the same result is not persuasive.
Because the instant specification and the prior art use the same process to form perforation, the results must inherently be the same. The specification does not indicate that any specific process or conditions leads to the desired detached portions.
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 perforation remnants. 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. The disclosure also does not indicate that the perforation with pins form any “perforation remnants”. Therefore, either process disclosed in the specification (i.e. 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.
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 connections 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. Although Garcia does not use the term “pin”, the perforating rollers as illustrated (figure 10, element 124) are illustrated to have multiple pins that mechanically form perforations as shown.
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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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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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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