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
This office action is in response to the Applicants’ arguments/remarks filed 12/4/2025.
No claims are amended.
Claims 1-16 are presently examined.
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.
Claims 1, and 7-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mishra (US 20070267033 A1) in view of Sasaki (US 20050211260A1), and Hepworth (RU 191893 U1) English machine translation relied upon.
Regarding Claim 1, Mishra teaches an aerosol-generating article comprising: a first segment (portion wrapped by the first wrapper as illustrated in FIG 1, which is the inner most wrapper)
a second segment comprising a second aerosol-generating material including the nicotine (tobacco plug 80 is included in the second segment);
a first wrapper surrounding the first segment (see first inner most wrapper in the first segment annotated in FIG 1); and
a second wrapper surrounding the second segment (e.g., wrapper web 68 in the second segment, see FIG 1, an ordinary artisan would appreciate wrap 68 joins sections 80, 90, and 74 as illustrated), wherein
that the first segment and the second segment are heated to different temperatures when at least a portion of the first segment and at least a portion of the second segment are heated by a single heater (e.g., the tobacco in the second section is heated by the heater 25 in FIG 4 and 5 and the heat from the second section migrates through the first section and then finally to the user. There would be a temperature gradient between the second section in the heater and the first section which includes the mouth end filter, an ordinary artisan would appreciate the first section would be heated to a lower different temperature than the second section, see FIG 5).
Thus, Mishra fails to (a) explicitly disclose the first segment comprising a first aerosol generating material excluding nicotine and that that first aerosol generating material comprises a first moisturizing material in an amount of at least 30 mg by weight, and (b) disclose a thickness of the wrapper thickness ranges include a thickness of the first wrapper is in a range of 64 μm to 80 μm, a thickness of the second wrapper is in a range of 80 μm to 110 μm, and the thickness of the first wrapper is smaller than the thickness of the second wrapper.
Regarding (a), Sasaki teaches the first aerosol-generating material comprises a first moisturizing material in an amount of at least 30 mg by weight (e.g., glycerin is considered to be the first aerosol generating material, [0050], the glycerin content of the filter in the first segment is 50 mg, which falls within the claimed range of at least 30 mg by weight moisturizing material. Applicants specification discloses glycerin is a moisturizing material, (see instant specification on page 10), Sasaki teaches that moisturizers in the filter are important because they can help to lower the amount of aldehydes in the mainstream aerosol of an aerosol generating article [0020] while suppressing the detrimental effects such as degradation of tobacco taste [0008]. Therefore, it would be obvious to a person of ordinary skill in the art to modify the filter in the first segment of Mishra to include the first aerosol generating material of Sasaki (glycerin [0050]) which comprises the moisturizing material of Sasaki in order to lower the amount of aldehydes in the mainstream aerosol of the article while suppressing the detrimental effects such as degradation of tobacco taste.
Regarding (b) Mishra is silent to suitable thicknesses of wrappers for use in smoking devices.
However Hepworth teaches suitable thicknesses of wrappers and teaches a thickness of the wrappers preferably have a range in thickness from 20 μm to 100 μm (see page 2, 3rd paragraph from the bottom), which overlaps with the claimed wrapper thickness ranges a thickness of the first wrapper is in a range of 64 μm to 80 μm, a thickness of the second wrapper is in a range of 80 μm to 110 μm (the second being thicker than the first and both falling within the range taught by Hepworth), and the thickness of the first wrapper is smaller than the thickness of the second wrapper. It would be obvious to a person of ordinary skill in the art to modify the ranges to fall within the ranges disclosed on page 2 3rd paragraph from the bottom, because in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the wrappers of Mishra, to have a thickness of 20 μm to 100 μm as taught by Hepworth, because both Mishra and Hepworth are directed to smoking articles comprising wrappers, Mishra is silent in regards to suitable thicknesses for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Hepworth teaches known thicknesses for similar wrappers, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
PNG
media_image1.png
568
747
media_image1.png
Greyscale
Regarding Claim 7, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the second aerosol- generating material (plug 80) comprises at least one of nicotine, free-base nicotine, and nicotine salt, obtained from a tobacco cut filler [0071].
Regarding Claim 8, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the aerosol-generating article is heated by the single heater, the single heater heats a first portion of the first segment and a second portion of the second segment (See FIG 4-5, the heater heats the second segment and heat from the aerosol produced by the heating of the aerosol in the second segment heats the menthol in the first segment as set forth above).
Regarding Claim 9, modified Mishra teaches the claim limitations as set forth above. Although Mishra does not explicitly disclose that a first area of the first portion and a second area of the second portion are equal to each other an ordinary artisan would appreciate that they are illustrated as being similar in area in FIG 1. Although the drawing is not necessarily drawn to scale, it would be obvious to a person of ordinary skill in the art to modify the area of the first portion and the second portion to be equal to each other as an obvious matter of a change in size design choice. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding Claim 10, modified Mishra teaches the claim limitations as set forth above. Mishra teaches an aerosol generated by the single heater is filtered by remaining portions of the second segment excluding the second portion. (e.g., aerosol passes through part 90 and part 74 of the second segment, see FIG 1)
Regarding Claim 11, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the single heater heats the first portion and the second portion to at least 120 °C (see [0061], the flavor compound releases its flavor at a min temp of 200 °C, therefore the first and second portions much be at least 200 °C in order to aerosolize the flavor compound into the aerosol generated by the heating of the second segment by the heater.
Regarding Claim 12, modified Mishra teaches the claim limitations as set forth above. Additionally Mishra teaches a downstream end of the first segment faces an upstream end of the second segment in a longitudinal direction of the aerosol-generating article (See annotated FIG 1 above), and
the aerosol-generating article further includes at least one segment placed adjacent to a downstream end of the second segment in the longitudinal direction from the downstream end of the second segment (the first segment is placed adjacent to the downstream end of the second segment, see FIG 1).
Regarding Claim 13, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the aerosol-generating article is heated by the single heater, and the single heater heats a first portion of the first segment and a second portion of the second segment (see heater 25 in FIG 4 and 5).
Regarding Claim 14, Mishra teaches the claim limitations as set forth above. Additionally, although Mishra does not explicitly disclose that a first area of the first portion and a second area of the second portion are equal to each other an ordinary artisan would appreciate that they are illustrated as being similar in area in FIG 1. Although the drawing is not necessarily drawn to scale, it would be obvious to a person of ordinary skill in the art to modify the area of the first portion and the second portion to be equal to each other as an obvious matter of a change in size design choice. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding Claim 15, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the first segment, which comprises the first aerosol-generating material, is adjacent to the second segment, which comprises the second aerosol-generating material, and wherein the first wrapper, which surrounds the first segment, is adjacent to the second wrapper, which surrounds the second segment (see annotated FIG 1).
Regarding Claim 16, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the first wrapper and the second wrapper are non-overlapping with respect to each other. (see FIG 1)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mishra (US 20070267033 A1) in view of Sasaki (US 20050211260A1), and Hepworth (RU191893) English machine translation relied upon, as applied to claim 1 above and further in view of Kuersteiner (EP3039972A1).
Regarding Claim 2, Mishra teaches the claim limitations as set forth above. However, Mishra fails to explicitly disclose at least one wrapper surrounds the first segment so that the first moisturizing material does not leak out of the first segment.
However, Kuersteiner teaches a similar smoking article that similarly includes a plurality of segments that include a liquid material and menthol similar to Mishra [0044] and teaches at least one wrapper surrounds the first segment so that the first moisturizing material does not leak out of the first segment (the sheet forming the wrapper may be impermeable to the liquid active material so that the liquid does not leak through he wrapper [0046]). Kuersteiner teaches that this is beneficial because not only does it prevent the loss of material but also prevents the wrapper from being stained [0046].
It would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention, to modify the first wrapper that surrounds the first segment of Mishra with the wrapper of Kuersteiner that is impermeable to the liquid material so that the liquid does not leak through he wrapper, lose material, and prevent the wrapper from being stained as taught by Kuersteiner [0046].
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Mishra (US 20070267033 A1) in view of Sasaki (US 20050211260A1), and Hepworth (RU191893) English machine translation relied upon, as applied to claim 1 above and further in view of Parry (WO2019129845A1), cited in IDS dated 1/26/2023.
Regarding Claim 3, modified Mishra teaches the claim limitations as set forth above.
Mishra teaches a plurality of sheets (See FIG 1) However, Mishra is silent to the first segment comprises a sheet impregnated with the first moisturizing material, and a weight of the first moisturizing material is less than or equal to 95 wt% of a weight of the sheet impregnated with the first moisturizing material.
However, Parry teaches that the first segment comprises a sheet impregnated with the first moisturizing material, and a weight of the first moisturizing material is less than or equal to 95 wt% of a weight of the sheet impregnated with the first moisturizing (humectant) material (see page 21 lines 23-30, 0-40%, which falls in the claimed range of 0-95%).
Parry teaches that using paper impregnated with humectant is advantageous because it is environmentally friendly in terms of minimizing excess packaging matter. Additionally, such bodies having a high weight of humectant are well suited to having their state of use identified by measuring the rate of increase of their temperature under heating as this can vary considerably as the humectant is used up, especially for bodies such as mousse where the humectant is almost completely used up during vaping. (see page 22, lines 3-7).
Therefore, it would be obvious to a person of ordinary skill in the art to modify the first segment of the smoking article of Mishra with the sheet impregnated with the first moisturizing material of Parry because it is environmentally friendly in terms of minimizing excess packaging matter. Additionally, sheets having a high weight of humectant are well suited to having their state of use identified by measuring the rate of increase of their temperature under heating as this can vary considerably as the humectant is used up, especially for bodies such as mousse where the humectant is almost completely used up during vaping. (see page 22, lines 3-7).
Regarding Claim 4, modified Mishra teaches the claim limitations as set forth above.
Mishra teaches the second aerosol generating material comprises tobacco e.g., 100 mg [0059], but fails to explicitly disclose the second aerosol- generating material comprises a second moisturizing material and a weight of the second moisturizing material included in the second aerosol-generating material is less than or equal to 30 wt% of a total weight of the second aerosol-generating material.
Parry teaches a tobacco body and teaches the tobacco body should include a humectant because the humectant provides an aerosol former for the tobacco (page 28 line 10) and that the humectant should be propylene glycol or glycerin at a percentage of greater than 10wt% of the weight of the tobacco which overlaps with the claimed range of less than or equal to 30 wt% (page 23 line 2). Therefore it would be obvious for a person of ordinary skill in the art to modify the second aerosol generating material of Mishra to include a second moisturizing material included in the second aerosol-generating material is less than or equal to 30 wt% of a total weight of the second aerosol-generating material as taught by Parry, so that the tobacco body includes a humectant because the humectant provides an aerosol former for the tobacco (page 28 line 10).
Claims 5-6 is rejected under 35 U.S.C. 103 as being unpatentable over Mishra (US 20070267033 A1), Sasaki (US 20050211260A1), and Hepworth (RU 191893 U1) English machine translation relied upon as applied to claim 1 above, and further in view of White (US 20030178039A).
Regarding Claim 5, modified Mishra teaches the claim limitations as set forth above.
Mishra teaches the polymer material comprises at least one of paper. [0067], Mishra teaches the wraps can be paper.
Mishra fails to explicitly disclose the sheet in the first segment is impregnated with the first aerosol-generating material.
More specifically, Modified Mishra, as set forth above, teaches the first segment includes glycerin in the filter but fails to explicitly disclose the wrapper around the filter in the first segment is impregnated with glycerin (the first aerosol generating material).
However, White teaches wrappers for smoking devices for first segments (plug wraps) and teaches the wrapper is made from a polymer material (wood pulp e.g., paper) and impregnated with the first aerosol generating material (glycerin, [0026]) and that this wrapper material combination is beneficial because it has a smooth texture and good strength [0027].
A person or ordinary skill in the art before the filing date of the claimed invention would have been motivated to further modify the first wrapper of Mishra with glycerin as taught by White in order to have a wrapper material that has a smooth texture and good strength [0027].
Regarding Claim 6, modified Mishra teaches the claim limitations as set forth above. Additionally, Mishra teaches the polymer material comprises at least one of paper. [0067], Mishra teaches the wraps can be paper.
Response to Arguments
Applicant's arguments, see Applicants Arguments/Remarks filed 12-4-2025 with respect to the 35 USC 103 rejections have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mishra (US 20070267033 A1), Sasaki (US 20050211260A1), and Hepworth (RU191893) as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
Prosecution Insights