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 .
Terminal Disclaimer
The Terminal Disclaimer submitted is not proper because both box 1 and box 2 were checked when only one of the boxes should be checked. A proper terminal disclaimer needs to be resubmitted to overcome the double patenting rejection.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 06/09/2026.
Claims 15-29, 31-32, and 34 are pending
Claims 15 and 32 are amended.
Claims 30 and 33 are cancelled.
The Objection to claim 32 is withdrawn due to amendments made to the claim.
Response to Arguments
Applicant’s arguments, see pages 5-9, filed 06/09/2026, with respect to the rejections of claims 15-34 under 35 U.S.C. 103 have been fully considered and are persuasive as detailed in the interview summary dated 06/11/2026. A new reference to address the distal end plug has been provided below.
Specification
The disclosure is objected to because of the following informalities: Element “17” in Figure 1 is not referenced in the Specification.
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.
Claims 15, 16, 22, 25, 26, 29, 31-32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) and further in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1).
Regarding claim 15, Sciboz teaches a heated aerosol generating article with homogenized tobacco material as the aerosol substrate material ([0001]), wherein the homogenized tobacco material contains nicotine ([0004]) and an aerosol former from about 5 to 30% by dry weight ([0045]). The range disclosed by the prior art overlaps the claimed range of the substrate comprises greater than about 20% aerosol former, and is therefore considered prima facie obvious.
Sciboz further teaches a wrapper disposed about and in contact with the aerosol generating article ([0019]), but fails to teach wherein the wrapper comprises a paper layer comprising a surface treatment such that the paper has a negative result for at least one kit oil sample of method Tappi 559cm-02, classical method 2002 (I), a smoking article comprising a hollow tubular element downstream of the substrate (II), and an end plug at a distal end of the aerosol generating article (III).
(I)
Zhai, directed to anti-seepage tobacco paper, teaches a cigarette paper coated with an oil resistant agent that is tested with the TAPPI 559 standard method. Zhai states the paper can be “level 8 or above” which appears to indicate 8 or more negative results out of 10 tests from the TAPPI 559 standard method ([0026]).
Zhai further discloses the coating applied to a wrapper provides anti-permeability and oil-proofing properties to the paper ([0115]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by applying an oil or grease resistant coating to the wrapping paper as taught by Zhai, because Sciboz are both directed to tobacco provision systems, Sciboz discloses the use of liquids and oils within the aerosol generating substrate ([0017] and [0022]-[0023]), Zhai teaches that coating wrapping paper with a penetration resistant material is known in the art to prevent leaking of substances like oil and ink ([0027]), and this merely involves applying a known technique of coating paper to improve oil resistant and prevent leakage of liquids within a similar aerosol generating substrate to yield predictable results.
(II)
Sciboz further discloses the smoking article may comprise one or more components such as an aerosol-cooling element ([0019]), but does not explicitly disclose the article comprising a hollow tubular element downstream of the substrate.
However, the Examiner notes that it is known in the art for aerosol cooling elements to be hollow tubular elements and therefore it would be obvious that Sciboz teaches a hollow tubular element within the article, but Sciboz does not explicitly disclose the hollow tubular element being located downstream of the aerosol generating substrate.
Lord, directed to a smoking substitute consumable, discloses a smoking substitute article, such as an HNB consumable (i.e., smoking article) ([0023]) comprising an aerosol forming substrate 3 (Figure 2 and [0023]-[0028]) and a hollow filter element 4 (i.e., hollow tubular element) disposed downstream of the aerosol generating substrate (Figures 2-3, [0567] and [0662]).
Lord further discloses the hollow tubular element acts as an aerosol cooling element which cools the vapor and condenses it to form an aerosol containing volatile compounds for inhalation by the user ([0379] and [0574]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Modified Sciboz by making the aerosol cooling element of Sciboz a hollow tubular element located downstream of the aerosol generating article, as taught by Lord, because all are directed to smoking articles comprising paper wrappers, Lord discloses the hollow tubular element cools the vapor and condenses it to form an aerosol for the user ([0379] and [0574]), and this merely involves applying a known technique of using an aerosol cooling element of a similar smoking article to yield predictable results.
(III)
Sciboz discloses an article may comprise a plurality of components including an aerosol-generating substrate assembled within an article ([0019]), but does not explicitly disclose an end plug at a distal end of the aerosol generating article.
Zuber, directed to a an article comprising an aerosol generating substrate (abstract), discloses the article can comprise a front-plug upstream of the aerosol generating substrate such that the front plug is penetrable by a heating element of an aerosol-generating device ([0022]).
Zuber further discloses that the front-plug prevents egress of the aerosol-forming substrate from the upstream end of the aerosol-forming substrate during shipping and handling, as well as assist in positioning the aerosol forming substrate at a predetermined distance for optimum engagement with a heating element of an aerosol-generating device ([0023]).
Zuber further discloses the front-plug may be formed of an air permeable filter material such as cellulose acetate tow so that the permeability may be varied to help control resistance-to-draw of the aerosol-generating article ([0031]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sciboz by making the article further comprise a plug element at the distal end of the article, as taught by Zuber, because both are directed to smoking articles for use with aerosol generating devices, Sciboz teaches the plug of material prevents egress of the substrate during shipping, assists in position of the aerosol forming substrate for optimum engagement with a heating element, and helps control RTD ([0023];[0031]), and this merely involves applying a known technique of using an end plug at a distal end of a similar aerosol generating article to yield predictable results.
Regarding claim 16, Zhai teaches a cigarette paper with at least 5 negative results from the TAPPI 559 standard method ([0026]).
Zhai does not explicitly teach a negative result for all 10 tests of the TAPPI 559 standard method. However, Zhai teaches a level 8 or above for the paper, which Examiner is interpreting as 8 or more negative results out of 10 from the TAPPI 559 standard method. The prior art’s range of negative test results overlaps with the number required in claim 16 of all 10 negative results and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Regarding claim 22, Sciboz teaches a homogenized tobacco material comprising binders that provide the ability to gel when in contact with water ([0047]). These binders may comprise gums or pectins ([0048]).
Regarding claim 25, Sciboz teaches the aerosol forming substrate may be homogenized tobacco material ([0045]).
Regarding claim 26, Sciboz teaches the homogenized tobacco material comprises tobacco powder, 20 wt% glycerine as an aerosol former, and 3 wt% guar as a binder ([0080]).
Regarding claim 29, Sciboz teaches a wrapper disposed about and in contact with the aerosol generating article ([0019]).
Regarding claim 30, Sciboz discloses the heated aerosol-generating article may comprise one or more other components such as a mouthpiece filter and an aerosol-cooling element ([0019]).
In accordance with the instant specification, the end plug is a mouthpiece segment, which Sciboz makes obvious by teaching a mouthpiece filter. It would be obvious to one of ordinary skill in the art that the mouthpiece filter would be an end plug at the distal end of the article and is therefore considered prima facie obvious.
The Examiner further notes that Lord discloses an end plug at a distal end of the aerosol generating article in the form of a terminal filter ([0564]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Modified Sciboz by applying an end plug at a distal end of the aerosol generating article, as taught by Lord, because all are directed to smoking articles comprising paper wrappers, Lord discloses the terminal filter provides additional filtering ([0564]), and this merely involves applying a known technique of using a terminal plug element of a similar smoking article to yield predictable results.
Regarding claim 31, Modified Sciboz discloses the hollow tubular segment is located immediately downstream of the aerosol generating substrate (Lord Figures 2-3).
Regarding claim 32, Sciboz discloses an electrically operated aerosol generating system comprising ([0045]):
An aerosol generating article that is heated (i.e., heated within a device) ([0019]-[0020]),
a heated aerosol generating article with homogenized tobacco material as the aerosol substrate material ([0001]). The homogenized tobacco material contains nicotine ([0004]) and a range of 5-30% by dry weight of aerosol former ([0045]). Sciboz further teaches a wrapper disposed about and in contact with the aerosol generating article ([0019]), and
a wrapper disposed about and in contact with the aerosol generating article ([0019]).
Sciboz does not explicitly disclose wherein the substrate comprises greater than about 20% aerosol former. The prior art’s range of wt% overlaps with the range found in claim 15 of greater than about 20% and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Sciboz does not explicitly disclose the aerosol generating article is received in an aerosol generating device (I) and the wrapper comprises a paper layer comprising a surface treatment such that the paper has a negative result for at least one kit oil sample of method Tappi 559cm-02, classical method 2002 (II), and an end plug at a distal end of the aerosol generating article (III).
(I)
Sciboz teaches an article for use with a device, but does not explicitly disclose the article configured to be received in the aerosol generating article.
Lord, directed to a smoking substitute consumable, discloses a smoking substitute article, such as an HNB consumable (i.e., smoking article) ([0023]) comprising an aerosol forming substrate 3 (Figure 2 and [0023]-[0028]).
Lord further discloses the consumable (i.e., article) is inserted into an HNB device such that the heating rod of the article is received in the recess of the body of the device and then heating of the substrate can commence to release the aerosol for inhalation by the user ([0572]-[0573]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sciboz by making the heating means of Sciboz a heat not burn device for the article to be received in, as taught by Lord, because both are directed to smoking articles, Lord teaches a heat not burn device receives the article to heat and generate an aerosol for the user ([0572]-[0573]), and this merely involves specifying a heating device as the heating means when the prior art is silent to one and applying a known technique of using an HNB device to receive a similar smoking article to yield predictable results.
(II)
Sciboz fails to teach wherein the wrapper comprises a paper layer comprising a surface treatment such that the paper has a negative result for at least one kit oil sample of method Tappi 559cm-02, classical method 2002.
Zhai, directed to anti-seepage tobacco paper, teaches a cigarette paper coated with an oil resistant agent that is tested with the TAPPI 559 standard method. Zhai states the paper can be “level 8 or above” which appears to indicate 8 or more negative results out of 10 tests from the TAPPI 559 standard method ([0026]).
Zhai further discloses the coating applied to a wrapper provides anti-permeability and oil-proofing properties to the paper ([0115]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by applying an oil or grease resistant coating to the wrapping paper as taught by Zhai, because Sciboz are both directed to tobacco provision systems, Sciboz discloses the use of liquids and oils within the aerosol generating substrate ([0017] and [0022]-[0023]), Zhai teaches that coating wrapping paper with a penetration resistant material is known in the art to prevent leaking of substances like oil and ink ([0027]), and this merely involves applying a known technique of coating paper to improve oil resistant and prevent leakage of liquids within a similar aerosol generating substrate to yield predictable results.
(III)
Sciboz discloses an article may comprise a plurality of components including an aerosol-generating substrate assembled within an article ([0019]), but does not explicitly disclose an end plug at a distal end of the aerosol generating article.
Zuber, directed to a an article comprising an aerosol generating substrate (abstract), discloses the article can comprise a front-plug upstream of the aerosol generating substrate (i.e., end plug at a distal end of the article) such that the front plug is penetrable by a heating element of an aerosol-generating device ([0022]).
Zuber further discloses that the front-plug prevents egress of the aerosol-forming substrate from the upstream end of the aerosol-forming substrate during shipping and handling, as well as assist in positioning the aerosol forming substrate at a predetermined distance for optimum engagement with a heating element of an aerosol-generating device ([0023]).
Zuber further discloses the front-plug may be formed of an air permeable filter material such as cellulose acetate tow so that the permeability may be varied to help control resistance-to-draw of the aerosol-generating article ([0031]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sciboz by making the article further comprise a plug element at the distal end of the article, as taught by Zuber, because both are directed to smoking articles for use with aerosol generating devices, Sciboz teaches the plug of material prevents egress of the substrate during shipping, assists in position of the aerosol forming substrate for optimum engagement with a heating element, and helps control RTD ([0023];[0031]), and this merely involves applying a known technique of using an end plug at a distal end of a similar aerosol generating article to yield predictable results.
In regards to claim 33, Sciboz discloses the heated aerosol-generating article may comprise one or more other components such as a mouthpiece filter and an aerosol-cooling element ([0019]).
In accordance with the instant specification, the end plug is a mouthpiece segment, which Sciboz makes obvious by teaching a mouthpiece filter. It would be obvious to one of ordinary skill in the art that the mouthpiece filter would be an end plug at the distal end of the article and is therefore considered prima facie obvious.
The Examiner further notes that Lord discloses an end plug at a distal end of the aerosol generating article in the form of a terminal filter ([0564]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Modified Sciboz by applying an end plug at a distal end of the aerosol generating article, as taught by Lord, because all are directed to smoking articles comprising paper wrappers, Lord discloses the terminal filter provides additional filtering ([0564]), and this merely involves applying a known technique of using a terminal plug element of a similar smoking article to yield predictable results.
In regards to claim 34, Sciboz further discloses the smoking article may comprise one or more components such as an aerosol-cooling element ([0019]), but does not explicitly disclose the article comprising a hollow tubular element downstream of the substrate.
However, the Examiner notes that it is known in the art for aerosol cooling elements to be hollow tubular elements and therefore it would be obvious that Sciboz teaches a hollow tubular element within the article, but Sciboz does not explicitly disclose the hollow tubular element being located downstream of the aerosol generating substrate.
Lord, directed to a smoking substitute consumable, discloses a smoking substitute article, such as an HNB consumable (i.e., smoking article) ([0023]) comprising an aerosol forming substrate 3 (Figure 2 and [0023]-[0028]) and a hollow filter element 4 (i.e., hollow tubular element) disposed downstream of the aerosol generating substrate (Figures 2-3, [0567] and [0662]).
Lord further discloses the hollow tubular element acts as an aerosol cooling element which cools the vapor and condenses it to form an aerosol containing volatile compounds for inhalation by the user ([0379] and [0574]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Modified Sciboz by making the aerosol cooling element of Sciboz a hollow tubular element located downstream of the aerosol generating article, as taught by Lord because all are directed to smoking articles comprising paper wrappers, Lord discloses the hollow tubular element cools the vapor and condenses it to form an aerosol for the user ([0379] and [0574]), and this merely involves applying a known technique of using an aerosol cooling element of a similar smoking article to yield predictable results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1), as applied to claim 15 above, and further in view of Li et al. (US 2007/0169786 A1, hereinafter “Li”).
Regarding claim 17, Modified Sciboz does not teach wherein the paper layer has a grammage in a range from 25 g/m.sup.2 to 45 g/m.sup.2, and a thickness in a range from 35 micrometers to 50 micrometers. Sciboz, in view of Zhai, is silent in regards to grammage.
Li, directed to cigarette paper, teaches a cigarette paper wrapper preferably with a grammage weight of from 30 g/m.sup.2 to 45 g/m.sup.2 and a preferable thickness from 20 to 50 micrometers. The prior art’s ranges of basis weight and thickness both overlap with the ranges found in claim 17 of between 25-45 g/m.sup.2 for grammage and 35-50 micrometers for thickness and therefore establishes a prima facie case of obviousness. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” see MPEP 2144.05 I. An applicant’s showing of unexpected results from values outside of the range of the prior art may overcome this prima facie case.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by using the wrapping paper parameters as taught by Li, because all are directed to tobacco provision systems, Sciboz is silent in regards to the grammage and thickness and it would be obvious for one having ordinary skill in the art to look to a similar reference for features of a known wrapper paper, Li teaches a wrapper paper within a range of parameters is known in the art to optimize the performance of the paper and this merely involves applying a known feature to a similar device to yield predictable results.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1), as applied to claim 15 above, and further in view of Dashley et al. (GB 2143150, cited in the IDS dated 11/19/2021, hereinafter “Dashley”) or alternatively in further view of Xu (CN-106480778-A, hereinafter referring to the English translation provided).
Regarding claims 18, 19, and 20, Modified Sciboz does not explicitly teach wherein the paper layer comprises PVOH or siloxane or a surface treatment comprising PVOH or siloxane.
Dashley, directed to smoking articles, teaches a wrapping paper with a stain resist substance added at the paper making stage (Pg. 1, lns 97-99). Dashley teaches that the stain resist substance, like PVOH, may be coated on either the outside or the inside portions of the paper (Pg. 1, lns 88-96). Dashley teaches that PVOH is a suitable stain resist material (Pg. 1, lns 79-87).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Modified Sciboz, by using PVOH as a stain resistant coating as taught by Dashley, because all are directed to tobacco provision systems, Dashley teaches PVOH is known in the art to provide stain resistant properties when coated on wrapping paper and this merely involves applying a known stain resistant coating to a similar device to yield predictable results.
Alternatively, Xu directed to a cigarette tipping paper, discloses the tipping paper
including an oil-resistant layer and an oleophobic hydrophilic layer sequentially stacked on at
least one side of the tipping base paper ([0008]).
Xu further discloses the first oleophobic and hydrophilic layer 30 may further include at least one of the following additives: slip agent, anti-settling agent, defoamer, leveling agent, etc., to make the first oleophobic and hydrophilic layer 30 smoother and more even ([0035]).
Xu further discloses the leveling agent may be one or more of polydimethylsiloxane (PDMS), alkyl-modified organosiloxane, and polyether polyester-modified organosiloxane (i.e.,
paper layer comprises a surface treatment comprising siloxane) ([0035]).
Therefore, before the effective filling date of the claimed invention, it would be obvious
for one having ordinary skill in the art to further modify Modified Sciboz, by making the paper further comprise siloxane as taught by Xu, because all are directed to aerosol generating articles, Xu teaches siloxane makes the surface treatment smoother and more even ([0035]), and this involves modifying a similar paper of an aerosol generating article with a known surface treatment in the art to yield predictable results.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1), as applied to claim 15 above, and further in view of Kido et al. (TW 201538090 A, hereinafter “Kido”, citations based on English translation provided) or alternatively in further view of Xu (CN-106480778-A, hereinafter referring to the English translation provided).
Regarding claim 21, Modified Sciboz fails to disclose wherein the paper layer comprises siloxane.
Kido, directed to cigarettes, teaches a non-penetrating layer of a coating solution comprises polydimethyl siloxane ([0076]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz, in view of Zhai, by using siloxane to comprise a stain resistant coating as taught by Kido, because Sciboz, Zhai, and Kido are all directed to tobacco provision systems, Kido teaches siloxane is known in the art to provide stain resistant properties when coated on wrapping paper and this merely involves applying a known stain resistant coating to a similar device to yield predictable results.
Alternatively, Xu directed to a cigarette tipping paper, discloses the tipping paper
including an oil-resistant layer and an oleophobic hydrophilic layer sequentially stacked on at
least one side of the tipping base paper ([0008]).
Xu further discloses the first oleophobic and hydrophilic layer 30 may further include at least one of the following additives: slip agent, anti-settling agent, defoamer, leveling agent, etc., to make the first oleophobic and hydrophilic layer 30 smoother and more even ([0035]).
Xu further discloses the leveling agent may be one or more of polydimethylsiloxane (PDMS), alkyl-modified organosiloxane, and polyether polyester-modified organosiloxane (i.e.,
paper layer comprises a surface treatment comprising siloxane) ([0035]).
Therefore, before the effective filling date of the claimed invention, it would be obvious
for one having ordinary skill in the art to further modify Modified Sciboz, by making the paper further comprise siloxane as taught by Xu, because all are directed to aerosol generating articles, Xu teaches siloxane makes the surface treatment smoother and more even ([0035]), and this involves modifying a similar paper of an aerosol generating article with a known surface treatment in the art to yield predictable results.
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1), as applied to claim 22 above, and further in view of Aoun et al. (US 2021/0177041 A1, hereinafter “Aoun”).
Regarding claim 23, Modified Sciboz fails to disclose wherein the gel composition comprises a majority of glycerine.
Aoun, directed to an aerosol generating article, teaches an amorphous solid may comprise a dried gel ([0024]), and the amorphous solid may have a dry weight basis of aerosol generating agent comprising glycerol in an amount from 15 wt% to 75 wt% ([0176]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to substitute the aerosol substrate of Sciboz with the aerosol forming substrate of Aoun, because Sciboz and Aoun are both directed to aerosol provision systems, Aoun teaches that an aerosol generating substrate composition needs to be fine-tuned to prevent negative results like the substrate absorbing water and reducing appropriate consumption experience or being too brittle ([0135]) and this merely involves applying a known substrate composition to a similar device to yield predictable results.
Regarding claim 24, Modified Sciboz fails to disclose wherein the gel composition comprises xanthan gum.
Aoun, directed to an aerosol generating article, teaches an amorphous solid may comprise xanthan gum as a gelling agent ([0132]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by using the xanthan gum as a gelling agent as taught by Aoun, because Sciboz and Aoun are both directed to aerosol provision systems, Aoun teaches that xanthan gum is known in the art as a suitable gelling agent in an aerosol substrate ([0132]) and this merely involves applying a known gelling agent to a similar device to yield predictable results.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Sciboz et al. (US 2018/0310608 A1, cited in the IDS dated 11/19/2021) in view of Zhai et al. (CN 109183494 A, cited in the IDS dated 11/19/2021, citations based on English translation provided by applicant), Lord et al. (US-20210315264-A1), and Zuber et al. (US-20140305448-A1), as applied to claim 15 above, and further in view of Mironov (WO 2015177252, cited in the IDS dated 11/20/2023, hereinafter “Mironov”).
Regarding claims 27 and 28, Sciboz discloses a heating element for a heat-not-burn
device ([0045]), but does not explicitly disclose a metallic induction heating element or plurality
of metallic induction heating elements.
Mironov, directed to aerosol forming substrates, teaches an aerosol forming substrate containing a susceptor that can convert energy transferred as magnetic waves into heat (Pg. 7, lns 17-29).
Mironov further teaches the susceptor may comprise ferrite, a metallic material (Pg. 11, lns 9-21).
Mironov further teaches that the susceptor may comprise a plurality of particles acting as individual induction heating elements (Pg. 1, lns 30 – Pg. 2, lns 8).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sciboz by including one or more metallic induction susceptor(s) in the aerosol generation substrate as taught by Mironov, because all are directed to tobacco provision systems, Mironov teaches that using susceptors to heat aerosol substrates is known in the art to provide uniform distributed heat throughout a substrate and this merely involves applying a known technique to a similar device to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-28 of copending Application No. 17/612,742 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol generating article comprising an aerosol generating substrate comprising nicotine and an aerosol former, and a wrapper comprising a paper layer with a surface treatment.
The rejected claims differ from the conflicting claims in that the rejected claims recite greater than about 20% of aerosol former and a negative result from the TAPPI 559 method.
However, claim 16 of Application No. 17/612,742 recites at least about 10% of aerosol former which overlaps the claimed range of greater than about 20%, and the claim discloses a surface treatment comprising PVOH or silicon similarly as recited in the rejected claims. One of ordinary skill in the art would reasonably expect that a similar surface treatment on a similar paper layer would result in a wrapper having the same negative result for the TAPPI 559 method similarly as claimed, absent evidence to the contrary.
Furthermore, claim 17 of the instant application requires a paper layer with a grammage in a range from 25-45 g/m.sup.2 and a thickness in a range from 35-50 micrometers. However, claim 19 of Application No. 17/612,742 teaches a grammage range from 25-45 g/m.sup.2. Claim 19 of Application No. 17/612,742 includes a limitation of a ratio of thickness/grammage of about 1.2, which when using the grammage range taught by claim 19 would solve to provide a range of thickness from 30-54 micrometers.
Regarding claims 18-29 of the instant application, the limitations are recited in claims 16 and 20-28 of Application No. 17/612,742.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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