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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/16/2026 has been entered.
Status of the Claims
Claims 1-10, 12-19 and 21-23 are pending and are subject to this Office Action.
Claims 7-10, 12-19, and 21 are withdrawn.
Claim 1 is amended.
Claim 23 is new.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 7/16/2026 containing
remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-13, filed 7/16/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended the claim to require the induction heater comprising a first inductor coil configured to generate a first varying magnetic field and a second inductor coil configured to generate a second varying magnetic field, the first and second inductor coils being adjacent to one another in a direction along a longitudinal axis of the device. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art Kaufman (US2019/0313695).
The following is a modified rejection based on amendments made to the claims.
Claim Objections
Claims 3-6 are objected to because of the following informalities:
Claims 3-6 each recite “an aerosol is generated by using the induction heater to heat the aerosol generating material to at least 150°C”. However, claims 3-6 each depend on claim 1 which already recites this limitation in lines 8-9.
Appropriate correction is required.
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.
Claim(s) 1-6 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (WO2020/115898, citations will refer to the English version US2021/0244084) in view of Ibrahim (US20180/360099), Kaufman (US2019/0313695), and Uthurry (WO2020/128048).
Regarding claim 1, Sakurai teaches:
An aerosol generating system (smoking system 11, fig. 1) comprising:(i) an aerosol generating article (rod 14, [0021], fig. 1) comprising an aerosol generating material (tobacco part 24, fig. 1) which comprises tobacco and an aerosol generating agent (aerosol-generating base material and cut rag leaf of tobacco, [0038]); and (ii) an aerosol generating device (main body 12, fig. 1) comprising an induction heater (heater 21 that may be an induction heating manner, [0026]),
wherein during operation, the article is inserted into the device ([0059]: inserting rod 14 into the main body 12) and an aerosol is generated by using the induction heater to heat the aerosol generating material to 100 to 400 °C ([0059]). The range taught by the prior art overlaps the claimed range of at least 150°C and is therefore prima facie obvious.
wherein the article further comprises a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article (air vent part 28, fig. 2, [0028]).
Sakurai does not appear to explicitly disclose (I) the aerosol generating material comprises nicotine, (II) the induction heater comprising a first inductor coil configured to generate a first varying magnetic field and a second inductor coil configured to generate a second varying magnetic field, the first and second inductor coils being adjacent to one another in a direction along a longitudinal axis of the device, (III) the ventilation region provides a ventilation ratio of at least 20%, and (IV) wherein at least (i) 10 pg of nicotine and (ii) 10 pg of the aerosol generating agent, is aerosolized from the aerosol generating material under an airflow of at least 1.50L/m during a two-second period; wherein a weight ratio of the aerosol generating agent to nicotine is at least about 5:1 in the aerosol generated.
In regard to (I) Sakurai is silent to the nicotine content of the tobacco of the aerosol generating material.
However, Ibrahim, directed to a tobacco composition for use in a tobacco heating product ([0002]), teaches:
A tobacco composition for use in a heat-not-burn apparatus ([0003-0004]) which may contain tobacco such as leaf tobacco ([0006]), a filler component, an aerosol generating agent, and nicotine ([0005]).
The tobacco composition comprises nicotine from 0.5 to 1.5% by weight of the tobacco composition, because if the nicotine content is too high a harsh sensation may be produced in use when the aerosol is inhaled ([0034]) and this refers to a dry weight bases ([0035]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the tobacco component of Sakurai have a nicotine content from 0.5 to 1.5% dry weight, because both Ibrahim and Sakurai are directed to tobacco compositions for use in a heat not burn apparatus, Ibrahim teaches a higher amount of nicotine may produce a harsh sensation when the aerosol is inhaled, and this merely involves incorporation of a known amount of nicotine to a similar tobacco substrate for a heat not burn apparatus to yield predictable results.
In regard to (II) Kaufman, directed to an inductive heating arrangement for use with a device for heating smokable material, teaches:
An induction heater (heating arrangement 103) comprising a first inductor coil configured to generate a first varying magnetic field (first inductor coil 204) and a second inductor coil configured to generate a second varying magnetic field (second inductor coil 206), the first and second inductor coils being adjacent to one another in a direction along a longitudinal axis of the device ([0023-0025], fig. 2).
The inductor coils 204,206 may be operated alternatively, each inductor coil being operated for a respective given interval of time while the other inductor coil is not operated ([0027]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the induction heater of Sakurai to have first and second induction coils adjacent to one another along a longitudinal axis of the device as taught by Kaufman, because both Sakurai and Kaufman are directed to heating apparatus for heating smokable material with an inductive heater, Kaufman teaches this allows the coils to be operated alternatively, and this merely involves incorporation of a known inductive heating technique (i.e. having first and second induction coils adjacent to one another along a longitudinal axis of the device) to improve a similar inductive heating device in the same way to yield predictable results.
In regard to (III), Sakurai is silent to the ventilation ratio.
However Uthurry, directed to an aerosol generating article, teaches:
An aerosol-generating article that comprises a ventilation zone (page 14, third paragraph). This rapidly reduces the temperature of the aerosol mixture (page 14, last paragraph). As such the ventilation zone defines a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article.
The ventilation zone has an advantageous effect on the nucleation and growth of aerosol particles (page 16, fourth paragraph).
The ventilation level is preferably at least 20 percent (page 16, second paragraph). As the ventilation level denotes a volume ratio between of the airflow admitted into the aerosol-generating article via the ventilation zone (page 5, second paragraph), the ventilation level defines a ventilation ratio.
Therefore, as Sakurai is silent to the ventilation ratio of the ventilation region, one of ordinary skill in the art would be motivated to look to other known teachings of ventilation ratios of aerosol generating articles with ventilation regions that one of ordinary skill in the art could apply to Sakurai with a reasonable expectation of success in the ventilation ratio being suitable for the smoking article.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the ventilation region of Sakurai have a ventilation ratio of at least 20% as taught by Uthurry, because both Sakurai and Uthurry are directed to aerosol generating articles with ventilation regions, Uthurry teaches the ventilation ratio reduces the temperature of the mixture and has an advantageous effect on the nucleation and growth of the aerosol particles, and this merely involves incorporating a known ventilation ratio to a similar aerosol generating article with a ventilation region to yield predictable results.
In regard to (IV), Sakurai is silent to the amount of nicotine and aerosol generating agent aerosolized in the aerosol generated and the airflow and time period conditions of the aerosolization.
However, the claim is to an aerosol generating system and the limitation “wherein at least (i) 10 ug of nicotine and (ii) 10 ug of the aerosol generating agent, is aerosolized from the aerosol generating material under an airflow of at least 1.50L/m during a two-second period; wherein a weight ratio of the aerosol generating agent to nicotine is at least about 5:1 in the aerosol generated” is a result from an intended use of the claimed invention. "Apparatus claims cover what a device is, not what a device does." A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.II.
On page 9 of the Arguments dated 7/16/2026, the Applicant recites “The presently claimed arrangement is specifically linked to improved spatial and temperature control of the heating profile, which in turn affects the constitution and composition of the generated aerosol” and “The two-coil arrangement therefore enables the heat supplied to different longitudinal sections of the aerosol-generating material to be controlled spatially over time. This is consistent with the specification’s explanation that induction heating provides more rapid heating and greater control over the heat profile, and that the heat profile affects the constitution and composition of the aerosol”. As such it is evident that if a prior art apparatus is able to operate the claimed heating profile under the operating conditions as claimed, the aerosol generated would produce the amount of nicotine and aerosol generating agent within or overlapping with the claimed range.
The claimed limitation requires 1) an induction heater for externally heating an article 2) two induction coils that are longitudinal spaced and 3) capability to supply heat to different longitudinal sections of the aerosol-generating material. Sakurai in view of Kaufman teaches these limitations: 1) an induction heater for externally heating an article (Sakurai, [0026], the heater 21 that may be an induction heating manner and heat the rod from the outside), 2) two induction coils adjacent to one another in a direction along the longitudinal axis of the device (Kaufman, fig. 2, inductor coils 204,206) and 3) capability to supply heat to different longitudinal sections of the aerosol-generating material (Kaufman, [0027], each inductor coil being operated for a respective given interval of time while the other inductor coil is not operated).
Further, the specification describes that the articles used in the examples to produce the aerosol as claimed had approximately 260 mg of a reconstituted tobacco material, a nicotine content of 0.8 wt%, and a glycerol content of 15 wt% calculated on a dry weight basis (page 6 of the instant specification). Therefore as Sakurai teaches the article has 225 to 380 mg of tobacco material ([0043]) and an aerosol-generating base material of 10 to 30% by weight ([0040]), and Sakurai in view of Ibrahim teaches the tobacco having a nicotine content of 0.5 to 1.5% (Ibrahim, [0035]), it would follow that modified Sakurai is structurally capable of heating its similar aerosol generating article to produce the amount of nicotine and aerosol generating agent within or overlapping with the claimed range. The burden of proof then shifts to the Applicant to provide objective evidence to the contrary.
Regarding claim 2, Sakurai teaches wherein the aerosol generating material is solid and comprises tobacco (tobacco filler 23, [0039]).
Regarding claims 3-6 and 23, Sakurai teaches wherein during operation, an aerosol is generated by using the induction heater to heat the aerosol generating material to 100 to 400 °C ([0059]). The range taught by the prior art overlaps the claimed range of at least 150°C and is therefore prima facie obvious.
Sakurai does not explicitly disclose wherein the total amount of nicotine aerosolized from the aerosol generating material during at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 0.20 mg, and at least about 0.43 mg; wherein the total amount of aerosol generating agent aerosolized from the aerosol generating material during at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 2 mg; wherein the total amount of aerosol generating agent aerosolized from the aerosol generating material during at least 9 two-second periods, under an airflow of at least 1.50L/m, is at least about 5 mg; and wherein a weight ratio of the total amount of aerosol generating agent to the total amount of nicotine aerosolized from the aerosol generating material over at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 8.5:1.
However, the claimed limitations are a result from an intended use of the claimed invention. "Apparatus claims cover what a device is, not what a device does." A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.II.
The claimed limitation requires 1) an induction heater for externally heating an article 2) two induction coils that are longitudinal spaced and 3) capability to supply heat to different longitudinal sections of the aerosol-generating material. Sakurai in view of Kaufman teaches these limitations: 1) an induction heater for externally heating an article (Sakurai, [0026], the heater 21 that may be an induction heating manner and heat the rod from the outside), 2) two induction coils adjacent to one another in a direction along the longitudinal axis of the device (Kaufman, fig. 2, inductor coils 204,206) and 3) capability to supply heat to different longitudinal sections of the aerosol-generating material (Kaufman, [0027], each inductor coil being operated for a respective given interval of time while the other inductor coil is not operated).
Further, the specification describes that the articles used in the examples to produce the aerosol as claimed had approximately 260 mg of a reconstituted tobacco material, a nicotine content of 0.8 wt%, and a glycerol content of 15 wt% calculated on a dry weight basis (page 6 of the instant specification). Therefore as Sakurai teaches the article has 225 to 380 mg of tobacco material ([0043]) and an aerosol-generating base material of 10 to 30% by weight ([0040]), and Sakurai in view of Ibrahim teaches the tobacco having a nicotine content of 0.5 to 1.5% (Ibrahim, [0035]), it would follow that modified Sakurai is structurally capable of heating its similar aerosol generating article to produce the amount of nicotine and aerosol generating agent within or overlapping with the claimed range. The burden of proof then shifts to the Applicant to provide objective evidence to the contrary.
Regarding claim 22, Sakurai teaches wherein the aerosol generating material comprises about 225 to 380 mg of a tobacco material ([0043]) and various kinds of tobacco can be used ([0039]). The range taught by the prior art falls within the claimed range of about 220 mg to about 400 mg.
Sakurai does not appear to explicitly disclose wherein the tobacco material is reconstituted.
However Ibrahim further teaches a smokable material that provides volatilized component upon heating in the form of an aerosol includes any tobacco-containing material including reconstituted tobacco ([0013]).
Therefore before the effective filing date of the claimed invention it would be obvious for one having ordinary skill in the art to make the tobacco material of Sakurai be reconstituted tobacco as taught by Ibrahim because both Sakurai and Ibrahim are directed to articles with a tobacco material to be heated to form an aerosol, and the selection of a known material based on its suitability for its intended use supports prima facie obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
