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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/26 has been entered.
Status of the Claims
Claims 1-9, 11-17, 20-23, and 25 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 12/4/25
Claim 1 is amended.
No claims are new.
Response to Arguments
Applicant's arguments (filed 12/4/25, pages 6-9) have been fully considered but are not persuasive. Applicant argues: (1) the conclusion that it would have been obvious to arrive at a substrate weight overlapping the claimed 200-400 mg range is based on a hindsight reconstruction rather than on any express or implicit description in the cited references, and (2) the cited reference provides no teaching that the pressure drop of an aerosol-generating article was a recognized design variable for inductively heated systems, nor does it provide any indication that a person of ordinary skill in the art would have been motivated to reduce mouthpiece resistance below 40 mmH2O.
Regarding (1), the conclusion that it would have been obvious to arrive at a substrate weight overlapping the claimed 200-400 mg range is based primarily on the broadest reasonable interpretation of the plain meaning of the claim language. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. Here, the limitation “the aerosol generating material comprises a weight of between 200 mg and 400 mg and comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter” is broad absent further limitations on the material composition. The quantity of aerosol generating material is only limited by the claimed weight and general density. The claim does not limit the composition or calculation of density by any of the parameters cited by the Applicant, such as: “compaction, moisture content, porosity, [or] strand composition.” (Applicant’s Arguments filed 12/4/25, page 7). Thus, where the claim is interpreted broadly, limitations on the density of the aerosol generating material are not read into the claim.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, Fursa teaches a length and diameter of an aerosol-generating substrate (page 12, lines 31-35) and that the aerosol-forming substrate may contain a plug of homogenized tobacco material and aerosol former (Page 19, lines 10-14), but is silent on the mass or density of the tobacco material. One of ordinary skill in the art would then be motivated to determine the mass of tobacco material. Renaud teaches a similar aerosol-generating article comprising reconstituted tobacco material and further teaches that the tobacco material has a density of between 500 and 1000 milligrams per cubic centimeter (Claim 9, [0096]). Thus, utilizing only the teachings of Fursa and Renaud, one of ordinary skill in the art would arrive at an aerosol generating material comprising a weight of between 200 mg and 400 mg of tobacco material wherein the tobacco material has a density of less than about 700 milligrams per cubic centimeter, similarly as claimed and absent further evidence to the contrary.
Regarding (2), while the Applicant argues that the cited reference provides no teaching that a person of ordinary skill in the art would have been motivated to optimize pressure drop, Applicant’s argument is moot due to the amendment which further limits the mouthpiece. As such a new ground of rejection is made in view of the amendment which does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
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 1-9, 11, 16, 17, 21-23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (WO 2018041450 A1) in view of Renaud (US 20120006343 A1) and Kaljura (US 20170360084 A1).
Regarding Claim 1, Fursa teaches a non-combustible aerosol provision system (Electrically-operated aerosol-generating device 100. Page 18, lines 18-19, Fig 1) comprising:
an article comprising an aerosol generating material (Aerosol-generating article 10 and aerosol-forming substrate 20. Page 18, lines 18-30; Page 19, lines 15-27; Fig 1) and
a mouthpiece ("The device housing may comprise a mouthpiece" Page 10, line 9),
wherein the aerosol generating material comprises tobacco material (The substrate may comprise a tobacco-containing material. Page 10, lines 27-35); and
a non-combustible aerosol provision device for heating the aerosol generating material of the article (The article may comprise a susceptor element to heat the substrate. Page 11, lines 4-6),
the non-combustible aerosol provision device comprising a heating zone that is configured to receive the aerosol generating material (Chamber 120 receives the article and in which the article is heated by the induction coil. Page 18, lines 18-30, Fig 1), and
the device comprising a coil, wherein the coil encircles at least a part of the heating zone (A helical inductor coil 200 is wrapped about the chamber 120 of device 100. Page 18, lines 18-30, Fig 1);
the system comprising at least one electrically-conductive heating element for heating the aerosol generating material (Induction coil 200 causes susceptor 30 to heat which further heats the aerosol generating substrate. Page 19, lines 15-27; Fig 1) and
wherein the coil is configured, in use, to cause heating of the at least one electrically-conductive heating element (Susceptor 30 is heated by magnetic hysteresis losses caused by the fluctuating electromagnetic field. Page 19, lines 19-23; Fig 1).
Fursa does not explicitly disclose wherein the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter. However, Renaud teaches an aerosol-generating substrate wherein the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter ("An aerosol-generating substrate... having a density of between about 0.5 g/cm.sup.3 and about 1.0 g/cm.sup.3." Claim 9. [0096]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP § 2144.05(I)).
Fursa teaches that the length of an aerosol-generating substrate may be between 7mm and 15mm (page 12, lines 34-35) and the diameter of the substrate may be between 5mm and 12mm (page 12, lines 31-32); thus disclosing that a substrate usable with the disclosed device has a volume range between 137mm3 and 1696mm3 (0.14cm3 and 1.70cm3). Renaud teaches that the substrate may have a density between 0.5 g/cm3 and about 1.0 g/cm3 ([0096]; Claim 9). Thus, it would be obvious to one having ordinary skill in the art that an aerosol generating substrate having a volume between 0.14cm3 and 1.70cm3 and having a density between 500 mg/cm3 and about 700 mg/cm3 (similarly as claimed) may have a weight ranging between 70 mg and 1190mg and it would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the aerosol-generating substrate of Fursa with a reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter and a weight between 200 and 400 mg as taught by Renaud because Fursa and Renaud are both directed to aerosol generating devices configured to heat tobacco material, Fursa is silent on the tobacco content of the substrate material, a person having ordinary skill in the art would be motivated to look to similar known systems to determine the tobacco content used in an aerosol generating device, Renaud teaches the use of a reconstituted tobacco material for use in an aerosol generating substrate and which has a density of less than about 700 milligrams per cubic centimeter, and this merely involves applying a known tobacco composition component to a similar aerosol generating device and substrate to yield predictable results.
Fursa discloses a mouthpiece (Page 10, lines 9-15) but is silent on the details of the structure of the mouthpiece and does not explicitly disclose a cavity therein or a pressure drop of the mouthpiece.
However, Kaljura teaches a mouthpiece (second filter section 24. [0063]-[0064], Fig 1) for a smoking article:
wherein the mouthpiece comprises a cavity having an internal volume greater than 450 mm3 (The filter arrangement comprises a first filter section 12 and a second filter section 24. [0063]-[0064], Fig 3. Second filter section 24 comprises a hollow air passageway 28 with an internal diameter between 1 and 7 mm. [0065], Fig 3. Wherein the length of the second filter section 24 may range from 5 to 25 mm, the internal volume of the passageway 28 may range from 4 to 962 mm3 [0010]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)),
wherein there is a pressure drop across the mouthpiece of less than 40mmH20 (The second filter section may have a pressure drop per unit length between 5 mmH20/mm and less than 1 mmH20/mm. [0049]. Wherein the length of the second filter section 24 may range from 5 to 25 mm, total pressure drop over the second filter section may range from 5 mmH20 and 125 mmH20. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)), and
ventilation is provided into the cavity (ventilation arrangement 17, [0054], Fig 3).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the mouthpiece of Fursa with a mouthpiece comprising a ventilated cavity having an internal volume greater than 450 mm3 and a pressure drop less than 40mmH20 as taught by Kaljura because Fursa and Kaljura are both directed to aerosol generating articles, Kaljura teaches the use of mouthpiece comprising a ventilated cavity having an internal volume greater than 450 mm3 and a pressure drop less than 40mmH20 in order to reduce the resistance to draw experienced by the consumer ([0035]), and this merely involves applying a known mouthpiece component to a similar smoking article to yield predictable results.
Regarding Claim 2, Renaud further teaches a reconstituted tobacco material for an aerosol generating substrate which comprises paper cast reconstituted tobacco material ("strands of homogenized tobacco material according to the invention of substantially square cross-section or substantially rectangular cross-section may be formed by casting, rolling, calendering or extruding a mixture comprising particulate tobacco" [0061]).
Regarding Claims 3 and 4, Renaud further teaches a reconstituted tobacco material for an aerosol generating substrate wherein the reconstituted tobacco material has a density of less than about 600 milligrams per cubic centimeter and/or a density of at least about 350 milligrams per cubic centimeter (Aerosol-generating substrates are produced having a density of 0.5g/cm3. Claim 9; [0096]).
Regarding Claims 5 and 6, Renaud further teaches a reconstituted tobacco material for an aerosol generating substrate wherein the reconstituted tobacco material comprises an aerosol forming material and/or wherein the aerosol forming material comprises at least 10% by weight of the aerosol generating material ("strands of homogenized tobacco material according to the invention have an aerosol former content of between about 15% and about 25% by weight." [0056]).
Regarding Claim 7, Renaud further teaches an aerosol generating substrate 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 ("Suitable aerosol formers are well known in the art and include, but are not limited to: polyhydric alcohols such as, for example, triethylene glycol, 1,3-butanediol, propylene glycol and glycerin" [0057]).
Regarding Claim 8, Renaud further teaches a reconstituted tobacco material for an aerosol generating substrate wherein the reconstituted tobacco material is cut to a width of between about 0.5 mm and about 2.0 mm (The strands of tobacco material indicated in the table depicting several substrate examples, have a width between 0.7mm and 0.9mm. Table 1, [0093]).
Regarding Claim 9, Renaud further teaches an aerosol generating substrate wherein the aerosol generating material comprises said reconstituted tobacco material and at least one of band cast reconstituted tobacco material, granular tobacco material and lamina tobacco material ("Strands of homogenized tobacco material according to the invention may comprise particulate tobacco obtained by grinding or otherwise comminuting one or both of tobacco leaf lamina and tobacco leaf stems." [0065]).
Regarding Claim 11, Renaud further teaches an aerosol generating substrate wherein the aerosol generating material comprises the reconstituted tobacco material having a density of less than 700 milligrams per cubic centimeter in an amount between 50% and 100% by weight of the aerosol generating material ("strands of homogenized tobacco material according to the invention have a tobacco content of between about 40% and about 85% by weight" [0064]).
Regarding Claims 16 and 17, Fursa teaches a system that heats a substrate as discussed above in Claim 1 and that the heating element may be heated in excess of 250oC (Page 12, lines 4-5), but Fursa does not explicitly teach a system wherein the non-combustible aerosol provision device is configured to heat the aerosol generating material to a maximum temperature of at least about 160oC and/or 270°C.
However, given that the temperature of the substrate directly effects the aerosol production as taught by Fursa ("The heated susceptor 30 heats the aerosol-forming substrate 20 of the aerosol-generating article 10 to a sufficient temperature to form an aerosol." Page 19, lines 22-24) and therefore the subjective user experience, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred range of heating the aerosol generating substrate in the smoking system. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the smoking system heating capabilities as disclosed in Fursa, would arrive at the heating ranges as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 21, Renaud does not explicitly teach a reconstituted tobacco material for an aerosol generating substrate wherein the article comprises at least 320mg of said reconstituted tobacco material. However, Renaud discloses an example in which substrates having a length of 7.1mm, a diameter of 8 mm, a mass of 180 mg and a density of 0.5g/cm3 are produced ([0096]). Given that the density may be in a range of 0.5 g/cm3 to 1.0g/cm3 (Claim 9), a similar sized aerosol generating substrate could be formed and would have a mass of about 360mg.
Regarding Claim 22, Fursa further teaches a system wherein the aerosol generating material is in the form of a substantially cylindrical rod of between about 10 mm and 100 mm in 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 ("The aerosol-generating article may have a total length between approximately 30 mm and approximately 100 mm." Page 12, lines 29-30.).
Regarding Claim 23, Fursa further teaches a system wherein the coil comprises an induction coil (A helical inductor coil 200 is wrapped about the chamber 120 of device 100. Page 18, lines 18-30, Fig 1).
Regarding Claim 25, Renaud does not explicitly teach wherein the aerosol generating material has a zero heat flow temperature of less than 164°C. However, Renaud teaches that the disclosed aerosol generating material is resistive to combustion and pyrolytic degradation ([0027]) and is utilized in a heat-not-burn device ([0028]). Moreover, given that the zero heat flow temperature of the aerosol generating material is dependent on the composition and density of the composition as admitted by the Applicant, it follows that Renaud, having an overlapping composition and density as the claimed material in Claim 1, would reasonably have a zero heat flow temperature of less than 164°C similarly as claimed at overlapping densities, absent evidence to the contrary. (See MPEP 2112(III)).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa in view of Renaud and Kaljura as applied to Claim 1 above, and further in view of Fournier (US 20030154991 A1).
Regarding Claim 12, Renaud discloses a paper wrapper ("the strands of homogenized tobacco material are circumscribed by a wrapper of, for example, paper, such as filter plug wrap." [0080]), but does not explicitly disclose a wrapper comprising a permeability of less than 100 Coresta Units.
Fournier teaches a system wherein the aerosol generating material is wrapped in a wrapper comprising a permeability of less than 100 Coresta Units (Smoking wrappers may have preferred porosity between about 10 to about 110 CORESTA units. [0100]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to utilize a wrapping paper of Renaud wherein the wrapping paper has a permeability of less than 100 Coresta units as taught by Fournier because Fursa, Renaud, Kaljura, and Fournier are all directed to aerosol generating consumables, Renaud is silent in regards to the suitable permeability for a wrapping paper and one of ordinary skill would look to a similar reference for known suitable ranges of permeability, Fournier teaches the use of a wrapping paper with a permeability of less than 100 Coresta units, and this merely involves applying a known characteristic to a similar wrapping paper with a reasonable expectation of success and predictable results.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa in view of Renaud, Kaljura, and Fournier as applied to Claim 12 above, and further in view of Crooks.
Regarding Claims 13 and 14, Renaud discloses a wrapper ("inclusion of a suitable wrapper advantageously facilitates assembly of aerosol-generating substrates and smoking articles according to the invention." [0080]), but does not explicitly disclose a metallic layer.
Crooks teaches a system wherein the wrapper comprises a metallic layer covering at least part of a surface of the wrapper and/or wherein the metallic layer comprises aluminum ("A representative wrapping material 58 for the substrate material 55 can possess heat conductive properties, and can have the form of a metal or metal foil (e.g., aluminum) tube, or a laminated material having an outer surface comprised of paper and an inner surface comprised of metal foil." [0025]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the aerosol generating consumable of Renaud with a layer of metallic material and/or aluminum as taught by Crooks because Fursa, Renaud, Fournier, Kaljura, and Crooks are all directed to aerosol generating consumables, Crooks teaches the use of a metallic and/or aluminum layer in an aerosol generating consumable to conduct heat from a heating device and provide for the volatilization of aerosol forming compounds ([0025]), and this merely involves applying a known metallic layer component to a similar aerosol generating consumable to yield predictable results.
Regarding Claim 15, Crooks discloses a metallic layer as disclosed in Claim 13 above but does not explicitly disclose a metallic layer wherein the thickness of the metallic layer is between 2 µm and 16 µm. However, given that the thickness of a metallic layer directly effects the heating capability of the aerosol generating consumable, namely the consumable’s ability to conduct and retain heat, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred thickness of a metallic layer in a smoking consumable to yield preferred heating capabilities. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the metallic layer in an aerosol generating consumable as disclosed in Crooks, would arrive at the thickness of a metallic layer as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa in view of Renaud and Kaljura as applied to Claim 1 above, and in view of Crooks.
Regarding Claim 20, Fursa discloses a system according to Claim 1 above, but does not explicitly disclose a system wherein the article has a closed pressure drop of between 150 mmH20 and 300 mmH2O.
Crooks teaches a system wherein the article has a closed pressure drop of between 150 mmH20 and 300 mmH2O ("an exemplary cigarette exhibits a pressure drop of between about 50 and about 200 mm water pressure drop at 17.5 cc/sec. air flow" [0156]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the smoking system of Renaud to incorporate a system pressure drop as taught by Crooks because Fursa, Renaud, Kaljura, and Crooks are all directed to smoking systems, Crooks teaches the use of components which facilitate a system pressure drop between 50 and 200 mmH20, it would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference (See MPEP § 2144.05 (I)), and this merely involves applying a known component configuration to create a similar smoking system pressure drop, to a similar smoking system to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755