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 15-31 are pending and are subject to this Office Action. Claim 31 has been added.
Response to Arguments
Applicant’s arguments, see pages 6-14, filed 9 December2025, with respect to the rejections of claims 15, 16, 18- 20, and 23-30 under U.S.C. §102 and the rejection of claims 17 and 21-22 under U.S.C. §103 have been fully considered but are but they are not persuasive.
Claim 15 has been amended to add the limitation specifying the device inner cavity surface at least partially delimits the airflow passage. The amendment to independent claim 15 necessitates a new grounds of rejection due to the newly added limitation.
Claim 31 has been added to further specify a width of the airflow passage is defined by the difference between the device cavity inner surface and the substrate outer surface.
On page 7, the Applicant notes that annotated figures were referenced but not included in the previous Non-Final Office Action and thus the next action cannot be made final. The Examiner does not agree with the Applicant’s argument because 1) while the annotated figure was mistakenly omitted, the art that was relied upon for the rejection was explained in the office action and the paragraphs cited in the office action were also directed to the corresponding figures, and thus a rejection over the prior art was provided and the Applicant had a fair opportunity to review the prior art reference in conjunction with the rejection, and 2) the Applicant has amended the claims to include additional limitations that were not previously presented which necessitates a new grounds of rejection.
As such, the paragraphs and the rejection described the overlapping portions of the claimed limitations and the prior art, and the annotated figures provide no new or additional information not already provided in the written rejection, and the Applicant’s amendment necessitated a new grounds of rejection. Therefore, this subsequent action may be made final.
Applicant argues, pages 7-8, that when the cartridge and device of Worm are combined the airflow pathway is through an annular gap in the cartridge and not between the aerosol generating substrate and the inner surface of the device cavity.
The Examiner acknowledges that this configuration is the design depicted in the prior art; however, Worm teaches other cartridge configurations that are not depicted. Worm teaches a cartridge configuration where the cartridge body is absent and the overwrap functions as the cartridge body. In this configuration the aerosol generating substance can be attached directly to the outer body. [0079] Worn does not explicitly state that the aerosol generating material would be attached to a particular side of the outer body and as such a person having ordinary skill would consider both sides a plausible locations for the aerosol generating material. A person having ordinary skill would recognize that if the aerosol generating material was on the outside of the body the airflow passage would be between the inner wall of the aerosol generating device and the aerosol generating material.
Additionally or alternatively, Worm goes on to teach an alternative cartridge configuration where there are perforations in the outer body (or cartridge and/or overwrap, depending upon the particular embodiment). [0079] This configuration where there are perforations in the outer body that would include the cartridge and the overwrap would allow the aerosol that has been generated to flow into the space between the cartridge and the device chamber wall. This airflow pathway is considered to read on the limitation of the instant claim.
The following is a modified rejection based on amendments made to the claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 15, 16, 18-20, and 23-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Worm, et al (US20130037041A1).
Regarding claim 15, Worm teaches a smoking article and the device that it is used for heating the smoking article. The article can comprise a substantially tubular shaped cartridge body having an engaging end, an opposing mouth end configured to allow passage of the inhalable substance to a consumer, and a wall with an outer surface and an inner surface. [0007] The article of Worm includes a cartridge body and a mouthpiece. The cartridge body has an end designed to engage a companion device. The article itself has an upstream segment that contains an aerosol generating substrate having an inner diameter and an outer diameter. The downstream segment has an outer diameter that is at the proximal end of the article and has an outer diameter greater than the substrate diameter.[0073-0074] These features are shown in annotated figure 1 below.
Worm also teaches a device for use with the smoking cartridge. The device, control housing, is comprised of a chamber for receiving the aerosol generating article [0007], a heating member that is located inside the inner tube of the substrate. [0012]
When the cartridge is inserted into the control housing, the outer wall of the cartridge is located inside the inner wall of the control body. The heater is used to heat the aerosol generating substrate which then releases the inhalable substance into an annular space that is between the surface of the substance and the outer wall of the cartridge down the longitudinal length of the cartridge/ control body to the user. ([0007]; [0079]; annotated figures 1 and 2 below)
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Annotated Figure 1
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Worm teaches a cartridge configuration where the cartridge body is absent and the overwrap functions as the cartridge body. In this configuration the aerosol generating substance can be attached directly to the outer body. [0079] Worn does not explicitly state that the aerosol generating material would be attached to a particular side of the outer body and as such a person having ordinary skill would consider both sides a plausible locations for the aerosol generating material. A person having ordinary skill would recognize that if the aerosol generating material was on the outside the airflow passage would be between the inner wall of the aerosol generating device and the aerosol generating material.
Additionally or alternatively, Worm goes on to teach an alternative cartridge configuration where there are perforations in the outer body (or cartridge and/or overwrap, depending upon the particular embodiment). [0079] This configuration where there are perforations in the outer body that would include the cartridge and the overwrap would allow the aerosol that has been generated to flow into the space between the cartridge and the device chamber wall. This airflow pathway is considered to read on the limitation of the instant claim.
Regarding claim 16, Worm discloses the inner surface of the cartridge body wall can define an interior cartridge space that includes a substantially tubular shaped inhalable substance medium having a wall with an inner surface. ([0007], Fig 4 and 4A, annotated figure 1 and 2)
Regarding claim 18, Worm teaches that the inner surface if the substrate is in contact with a vapor barrier and that the vapor barrier can be a metal foil [0066] that may function as a heat spreading member. [00125]
Regarding claim 19, Worm discloses an aerosol generating article that is comprised of an upstream segment containing an aerosol generating material and a downstream segment that is a mouthpiece section that can comprise a filter material. The upstream and downstream segments disclosed are in coaxial alignment along the longitudinal axis of the aerosol generating article. (see Fig 3 and 6; annotated figure 1 above)
Regarding claim 20, Worm teaches that the aerosol generating article has a mouth end [0055] and that this section can include a filter component. [0075]
Regarding claim 23, Worm teaches that the substrate is generally tubular [0066] and can take a number of shapes including round and oval. [0008]
Regarding claim 24, Worm teaches the aerosol generating material can be any material that, when heated, releases an inhalable substance, such as a flavor-containing substance and provides the examples that the material may be may be a tobacco component or a tobacco-derived material [0057] and specifically notes the possible use of reconstituted tobaccos (e.g., reconstituted tobaccos manufactured using paper-making type or cast sheet type processes). [0058]
Regarding claim 25, Worm teaches that the aerosol generating substrate can contain is a solid substrate that can be made up of various tobacco materials. [0057] The prior art also teaches that the inhalable substance and/or the separate vapor forming material may be provided on the substrate in a variety of configurations. For example, both materials may be associated with the substrate such that the concentration of each material along the length of the substrate is substantially constant [0062]
Regarding claim 26, Worm teaches that the various configurations of the substrates associated with the aerosol generating substrate including dividing the substrate into lengthwise segments. The prior art further teaches that the substrate can have a bolus of inhalable material along the length of the substrate. [0062] The bolus of material located along the length of the substrate is considered to read on the second aerosol forming substrate that is adjacent to the first aerosol generating substrate
Regarding claim 27, the prior art teaches the cartridge has opening that is defined by the longitudinal inner surface wall of the inhalable substance medium and that the space that is designed for the heating projection to slide into for use. [0085] Worm discloses that a plurality of heating members may be used in conjunction with the article. [0063] Worm teaches that the device can be comprised of a segmented heating elements that extend the length of the article [0120] and that the sections of the heater can be separated by non-heating or insulative sections. [0088]
Regarding claim 28, Worm teaches that the mouth-end of the aerosol generating article is formed to have an area of increased diameter and that is may function as a stop of the aerosol generating article. ([0074-0075]; Fig 3)
Regarding claim 29 and 30, Worm teaches a section of the article that is at the mouth-end of the of the cartridge may be spaced a distance from the terminal mouth-end of the cartridge and has an area of greater diameter. This section can include a filter component. ([0080]; Fig 4)
Regarding claim 31, as discussed in claim 15, Worm envisages two possible configurations where a width of an airflow path is defined by the device cavity inner surface and the substrate outer surface.
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 17 is rejected under 35 U.S.C. 103 as being obvious over Worm, et al (US20130037041A1), as applied to claim 16, and further in view of Reevell (US20200008470A1).
Regarding claim 17, Worm teaches that it is preferable for substance medium to comprise a solid substrate and have a high surface area to volume ratio. The inhalable the substrate is relatively thin to facilitate rapid heat transfer, giving examples of substrate thicknesses between 0.5mm and 5 mm. [0064-0065]
Reevell, electrically operated aerosol generating systems, describes an aerosol generating article that is tubular in shape and the specifics of the tubular cross-section. Revell describes a similar interaction between the substrate material and the heating element in that the “inner surface of the inner passage may contact or abut the outer surface of the heating portion of the main unit when the tubular aerosol-generating article is received on the heating portion. The width of the inner passage of the tubular aerosol-generating article may be smaller than the width of the heating portion of the main unit, such that the tubular aerosol-generating article is received on the heating portion with a friction or an interference fit.” [0041] Reevell teaches that the substrate inner width, diameter, between about 2 mm and 18 mm and an outer width, diameter, of between 5 mm and 20 mm. The possible ratio of thicknesses of the material taught by Revell teach a possible inner diameter to outer diameter ratio of between 10% to 90%. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by using an inner to outer diameter ratio as taught by Reevell because both Worm and Reevell are directed to electrically operated aerosol generating systems, Reevell teaches this configuration facilitates the propagation of heat through the substrate [0031] , and this involves use of known technique of reducing the thickness of the aerosol generating substrate to facilitate heat transfer and thus improving similar products in the same way.
Claim 21 is rejected under 35 U.S.C. 103 as being obvious over Worm, et al (US20130037041A1), as applied to claim 20, and further in view of Mitrev, et al (US20150136154A1).
Regarding claim 21, Worm teaches that the mouthpiece portion can contain a filter material and a filter component. However, Worm is silent as to the specifics of design of the filter portion explicitly having a spacing or cooling element.
Mitrev, directed to the design of smoking articles for use in aerosol generating devices, teaches an aerosol generating article that has a support element that spaces the aerosol generating portion of the article from the filter portion of the article. This support element is a hollow tube that allows the aerosol generated to pass from the substrate section to the filter section. [0049] The support element of Mitrev is considered to read on the spacing element.
Mitrev further teaches that the filter section of the article may be comprised of a cooling element located between the support element and a mouthpiece located at the extreme downstream end of the smoking article. ([0051]; [0089])
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by using a filter configuration as taught by Mitrev because both Worm and Mitrev are directed to aerosol generating articles for aerosol generating devices, Mitrev teaches the spacer element aids in preventing the aerosol generating portion from moving when the article is inserted into the device [0049] and the cooling element allows the volatile substances to cool and form an aerosol that the user can inhale [0111], and this involves use of a known technique of adding a support element to prevent substrate movement and a cooling section to promote the formation of an aerosol to improve similar products in the same way.
Claim 22 is rejected under 35 U.S.C. 103 as being obvious over Worm, et al (US20130037041A1), as applied to claim 15, and further in view of Silvestrini (WO2017108721A1).
Regarding claim 22, Worm teaches cartridge may be configured such that the cartridge overwrap/ mouth piece section has an inner diameter that is greater than the outer diameter of the control housing at the end of the receiving chamber. [0073] The prior art also teaches that the diameters for the cartridge portion being comparative to the size of a cigarette, 5mm to 25 mm. [0074]
Silvestrini, directed to the design of aerosol generating systems, teaches a device where the cartridge has a diameter of 4mm to 10 mm (p 6-7 In 36-1) and that the mouth piece should “simulate the shape and dimensions of a cigarette.” (p 7 In 5-6) The typical diameter of a cigarette is typically about 8mm as is commonly known in the art. This would mean the at ratio of cartridge diameter to the mouthpiece diameter of Silvestrini design would range from 50% to 125%. This range, as taught by Silvetrini, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Worm by having the downstream element/ mouthpiece outer diameter greater than that of the upstream element/ substrate diameter as taught by Silvestrini because both Worm and Silvestrini are directed to design of aerosol-generating systems, Silvestrini teaches the shape and size “simulates the shape and dimensions of a cigarette” (p 7 In 5-6), and this involves a simple substitution of the mouthpiece element to obtain a predictable result of a more standard smoking experience.
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 VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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