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 .
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.
Claims 1, 5-6, 8, 11-13, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ibrahim (2018/0360099) in view of Cantrell et al. (2007/0023056) and Mironov et al. (2016/0150825).
With regard to claim 1, Ibrahim teaches, as shown in figures 5 and taught in paragraphs 4, 32, 111, and 118-120: “A non-combustible aerosol provision system (shown in figure 5, non-combustible smoking taught in paragraph 4) comprising: an article 201 and 200 comprising an aerosol generating material 202 wrapped in a wrapper 207, wherein the aerosol generating material comprises… at least 10% by weight of an aerosol forming material (taught in paragraph 32)… and wherein the article comprises a mouthpiece 201 comprising an upstream end 206 adjacent to the aerosol generating material 202 and a downstream end 205 distal from the aerosol generating material 202 and the mouthpiece 201 further comprising a cavity with an internal volume greater than 450 mm3 (paragraph 120 teaches the dimensions producing a volume inside the cavity of the mouthpiece of greater than 450 mm¬3); and a non-combustible aerosol provision device (taught in paragraph 118) for heating the aerosol generating material 202 of the article, the non-combustible aerosol provision device comprising a heating zone (taught in paragraph 118) that is configured to receive the aerosol generating material 202… the system comprising at least one electrically-conductive heating element (taught in paragraph 118) for heating the aerosol generating material 202 and… is configured, in use, to cause heating of the at least one electrically-conductive heating element; and wherein the non-combustible aerosol provision device is arranged to heat the aerosol generating material to a maximum temperature of at least 270°C (taught in paragraph 111)”.
Ibrahim does not specifically teach the wrapper having “a thickness of between 20 µm and 60 µm”. However, cigarette wrappers in the range of 20 µm - 60 µm are well known in the art (see, for example, Artho (3,987,800 column 2 lines 45-51). Further, changing the thickness of the wrapper is a change in the size of the wrapper and would be obvious for reducing the amount of material needed to form the wrapper. Also, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Ibrahim also does not teach: “wherein the wrapper has a permeability of below 100 Coresta Units. However, it would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to select a range of permeability of the wrapper to be below 100 Coresta Units, as this range of permeability is common in the art (see Worm (2013/0037041), paragraph 81). Also, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Ibrahim does not teach the aerosol generating material comprises “a weight from about 250 mg to 360 mg, a density of less than about 700 milligrams per cubic centimeter”.
In the same field of endeavor before the effective filing date of the claimed invention, Cantrell teaches, as taught in paragraphs 41, 86, and 108: “wherein the aerosol generating material comprises a weight from about 250 mg to 360 mg, a density of less than about 700 milligrams per cubic centimeter (paragraph 41 teaches a density less than 400 milligrams per cubic centimeter, which is less than 700 milligrams per cubic centimeter)”. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Cantrell with the invention of Ibrahim in order to produce aerosol that resembles tobacco smoke wherein the aerosol generating material comprises a weight from about 250 mg to 360 mg and a density of less than about 700 milligrams per cubic centimeter (Cantrell, paragraph 43) and improve casing and/or top-dressing components (Cantrell, paragraph 86).
Neither Ibrahim nor Cantrell teach: “and the device comprising a coil, wherein the coil encircles at least a part of the heating zone; wherein the coil” is configured to cause heating of the at least one electrically-conductive heating element”.
In the same field of endeavor before the effective filing date of the claimed invention, Mironov teaches, as shown in figures 3-5 and taught in paragraph 136: “and the device comprising a coil 210, wherein the coil 210 encircles at least a part of the heating zone (interior of 210 in figure 5); wherein the coil 210” is configured to cause heating of the at least one electrically-conductive heating element 4. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Mironov with the invention of Ibrahim as modified by Cantrell in order to heat the aerosol generating material to a sufficient temperature (Mironov, paragraph 136).
With regard to claim 5, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Neither Ibrahim nor Cantrell nor Miranov teach: “wherein the wrapper comprises a permeability of below 20 Coresta Units”. However, it would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to select a range of permeability of the wrapper to be below 20 Coresta Units, as this range of permeability is common in the art (see Worm (2013/0037041), paragraph 81 teaches the permeability of wrappers is frequently as low as 8). Also, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With regard to claim 6, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Ibrahim also teaches, as shown in figure 5 and taught in paragraph 41: “wherein the aerosol generating material 202 comprises paper cast reconstituted tobacco material”.
With regard to claim 8, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Cantrell also teaches, as shown in figures 1-3 and taught in paragraph 41: “wherein the aerosol generating material has a density of at least about 350 milligrams per cubic centimeter (paragraph 41 teaches a density less than 400 milligrams per cubic centimeter, which includes being at least 350 milligrams per cubic centimeter)”. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Cantrell with the invention of Ibrahim as modified by Cantrell and Mironov in order to produce aerosol that resembles tobacco smoke (Cantrell, paragraph 43).
With regard to claim 11, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Ibrahim also teaches, as shown in figure 5 and taught in paragraph 31: “wherein the aerosol forming material comprises at least one selected from glycerine, glycerol, propylene glycol, a combination of glycerol and propylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, 1,3-butylene glycol, erythritol, meso-Erythritol, ethyl vanillate, ethyl laurate, a diethyl suberate, triethyl citrate, triacetin, a diacetin mixture, benzyl benzoate, benzyl phenyl acetate, tributyrin, lauryl acetate, lauric acid, myristic acid, propylene carbonate and combinations thereof”.
With regard to claim 12, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Cantrell also teaches, as taught in paragraph 75: “wherein the aerosol generating material comprises tobacco material cut to a width of between about 0.6 mm and 1.7 mm (the range of values taught in paragraph 75 fall within the claimed range)”. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Cantrell with the invention of Ibrahim as modified by Cantrell and Mironov in order to produce aerosol that resembles tobacco smoke (Cantrell, paragraph 43).
With regard to claim 13, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Ibrahim also teaches, as shown in figure 5 and taught in paragraph 31 and 84-90: “wherein the aerosol generating material 202 comprises paper reconstituted tobacco material and at least one of band cast reconstituted tobacco material, granular tobacco material and lamina tobacco material”.
With regard to claim 18, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Cantrell also teaches, as taught in paragraph 98: “wherein the article has a closed pressure drop of between 150 mmH2O and 300 mmH2O or between 150 mmH2O and 220 mmH2O or between 150 mmH2O and 200 mmH2O”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine these features of Cantrell with the invention of Ibrahim as modified by Cantrell and Miranov in order to produce a desirable resistance to draw to the user (Cantrell, paragraph 98).
With regard to claim 19, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Ibrahim also teaches, as shown in figure 5 and taught in paragraph 120: “wherein the aerosol generating material 202 is in the form of a substantially cylindrical rod 200 of between about 10 mm and 100 mm in length (paragraph 120 teaches the length of the mouthpiece portion 201 being 41 mm and the aerosol generating material 202 is shown in figure 5 being of similar length) or in the form of a substantially cylindrical rod of between about 10 mm and 15 mm in length or between about 15 mm and about 100 mm in length”.
With regard to claim 20, Ibrahim as modified by Cantrell and Miranov teaches: “The non-combustible aerosol provision system of claim 1”, as shown above.
Mironov also teaches, as shown in figures 3-5 and taught in paragraph 136: “wherein the coil 210 comprises an induction coil”. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the features of Mironov with the invention of Ibrahim as modified by Cantrell and Miranov in order to heat the aerosol generating material to a sufficient temperature (Mironov, paragraph 136).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ibrahim (2018/0360099) in view of Cantrell et al. (2007/0023056), Mironov et al. (2016/0150825), and Worm et al. (2013/0037041).
With regard to claim 2, Ibrahim as modified by Cantrell and Miranov teaches: “wherein the wrapper comprises a metallic layer covering at least part of a surface of the wrapper”.
In the same field of endeavor before the effective filing date of the claimed invention, Worm teaches, as shown in figures 1-5 and taught in paragraphs 6, 81, and 83: “wherein the wrapper 380 comprises a metallic layer (described in paragraph 83) covering at least part of a surface of the wrapper 380”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Work with the invention of Ibrahim as modified by Cantrell and Miranov in order to prevent the dilution by radial air infiltration (Work, paragraph 83).
With regard to claim 3, Ibrahim as modified by Cantrell, Miranov, and Worm teaches: “The non-combustible aerosol provision system of claim 2”, as shown above.
Worm also teaches, as shown in figure 1-5 and taught in paragraphs 56 and 83: “wherein the metallic layer comprises aluminum (paragraph 56 teaches the metallic layer can comprise aluminum)”. It would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to combine the features of Work with the invention of Ibrahim as modified by Cantrell, Miranov, and Worm in order to prevent the dilution by radial air infiltration (Work, paragraph 83).
With regard to claim 4, Ibrahim as modified by Cantrell, Miranov, and Worm teaches: “The non-combustible aerosol provision system of claim 2”, as shown above.
Neither Ibrahim nor Cantrell nor Miranov nor Worm teach: “wherein the thickness of the metallic layer is between 2 µm and 16 µm”. However, it would have been obvious to a person having ordinary skill in the art at the time of the claimed invention to adjust the range of the thickness of the metallic layer to be between 2 µm and 16 µm in order to minimize the amount of aluminum used and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive. With regard to claim 1, the Applicant argues that Ibrahim does not teach the internal volume of the cited mouthpiece is greater that 450 mm3 because only the outer diameter and length of the mouthpiece, but not the internal diameter. The Examiner respectfully disagrees, since the figures disclose that the outer tube consisting of less than one fifth of the total diameter of the tube, which would still exceed 450mm3 for even the lowest value of the disclosed range of diameters in paragraph 120. The Applicant further argues that hindsight would be required to combine Miranov and Cantrell. The Examiner respectfully disagrees, since the advantages of the features of Miranov and Cantrell are taught in Miranov and Cantrell, which are disclosed before the effective filing date of the claimed invention.
Also, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the cavity empty) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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 JUSTIN M KRATT whose telephone number is (571)270-0277. The examiner can normally be reached M-F 9am-6pm.
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, Abdullah A Riyami can be reached at (571)270-3119. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN M KRATT/Primary Examiner, Art Unit 2831