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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/19/2027 has been entered.
Status of the Claims
Claims 16-20 and 23-32 are pending and are subject to this Office Action.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 02/19/2026.
Claim 16 is amended.
Claims 21-22 are cancelled.
The doble patenting rejection has been withdrawn due to amendments made to the claims.
Response to Arguments
Applicant' s arguments, see pages 5-11, filed 02/19/2026, with respect to the rejection(s) of claims 16-20 and 23-32 under 35 U.S.C. 103, have been fully considered and are persuasive. The Applicant has amended the claim to include the wrapper has a permeability of less than 5 CORESTA units and is free of calcium carbonate, which is not taught by the primary prior art Guyard. However, in light of newly found prior art, the arguments are moot.
The following is a modified rejection based on amendments made to the claims.
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 16-17, 18, 26 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210120867-A1) and further in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021).
In regards to claim 16, Sakurai directed to non-combustible heated smoking article comprising a wrapping paper, discloses the aerosol generating article comprising:
A tobacco rod part (i.e., aerosol generating substrate) ([0060]), which one of ordinary skill in the art would reasonably conclude contains nicotine,
An aerosol generating base material (i.e., aerosol former) in the weight of preferably 10 weight% or more ([0074]-[0075]); and
A wrapper 12 disposed about the aerosol generating substrate (Figure 1 and [0084]), the wrapper comprises a paper layer with a water contact angle less than 90 degrees and more preferably less than 50 degrees (claim 2, [0018], [0051]). The range disclosed by the prior art overlaps the claimed range of a water contact angle of at least 30 degrees, and is therefore considered prima facie obvious.
The wrapper can further comprise a polyvinyl alcohol as an auxiliary agent and a paper strength enhancing agent ([0035]).
Wherein the wrapper has an air permeability of 1 to 20 Coresta units ([0044]). The range discloses by the prior art overlaps the claimed range of the wrapper comprising an air permeability of 5 Coresta units or less, and is therefore considered prima facie obvious.
Sakurai further discloses calcium carbonate can be used in the wrapping paper as a filler and while calcium carbonate is preferable to maintain whiteness of the wrapper, the use of calcium carbonate is not necessary and magnesium carbonate can be used instead ([0031]). Therefore, it would be obvious to one of ordinary skill in the art that Sakurai discloses embodiments of the invention that are free of calcium carbonate.
Sakurai discloses the wrapper comprising a polyvinyl alcohol ([0035]), but does not explicitly disclose the polyvinyl alcohol is a surface treatment on the paper.
However, it would be obvious to one of ordinary skill in the art that adding a paper strength enhancing agent such as polyvinyl alcohol could be added as a surface treatment to the paper.
In addition, Dashley, directed to smoking articles and paper for smoking articles, discloses the paper coated with polyvinyl alcohol (page 1, lines 83-87).
Dashley further discloses polyvinyl alcohol can either be coated (i.e. treated) onto the paper or added to the paper mixture during the paper making stage (page 1, lines 97-99).
Dashley further discloses polyvinyl alcohol is used for its stain resistant properties (page 1, lines 79-87).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sakurai by making the paper further comprise polyvinyl alcohol as a surface treatment, as taught by Dashley, because both are directed to smoking articles, Dashley teaches polyvinyl alcohol has stain resistance properties (page 1, lines 79-87), and this involves applying polyvinyl alcohol of a similar paper of a smoking article as a surface treatment to the wrapper, to yield predictable result of a stain resistant paper layer.
In regards to claim 17, Sakurai discloses the wrapper comprises a paper layer with a water contact angle less than 90 degrees and more preferably less than 50 degrees (claim 2, [0018], [0051]). The range disclosed by the prior art overlaps the claimed range of a water contact angle of at least 40 degrees, and is therefore considered prima facie obvious.
In regards to claim 18, Sakurai discloses the wrapping paper has a basis weight of at least 35 g/m^2 (abstract and [0018]) and a thickness of the wrapping paper is preferably 30 micrometers or more ([0050]). The range disclosed by the prior art overlaps the claimed range of a grammage of 25 gsm to 45 gsm and a thickness in a range from about 35 microns to about 50 microns, respectively, and is therefore considered prima facie obvious.
In regards to claim 26, Sakurai discloses the tobacco rod includes tobacco plant and the tobacco plant is dried and crushed to perform homogenizing before being filled into the tobacco rod (i.e., homogenized tobacco material) ([0071]).
In regards to claim 30, Sakurai discloses the wrapping paper is in direct contact with the aerosol generating substrate (Figure 1).
In regards to claim 31, Sakurai discloses the wrapper comprises a paper layer with a water contact angle less than 90 degrees and more preferably less than 50 degrees (claim 2, [0018], [0051]). The range disclosed by the prior art overlaps the claimed range of a water contact angle of at least 45 degrees, and is therefore considered prima facie obvious.
In regards to claim 32, Sakurai discloses the aerosol former in the weight is 10 to 60 weight percent ([0074]-[0075]). The range disclosed by the prior art overlaps the claimed range of the aerosol formed being greater than 20% of the aerosol generating substrate, and is therefore considered prima facie obvious.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210120867-A1) in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021), as applied to claim 16 above, and further in view of Jain (WO-2010118122-A1) or alternatively Xu (CN-106480778-A, hereinafter referring to the English translation provided).
In regards to claims 19-20, Modified Sakurai discloses an aerosol generating article comprising a paper wrapper but does not explicitly disclose a wrapper comprising siloxane or a surface treatment comprising siloxane.
Jain, directed to a smoke filtration device, discloses a filter wrapped with paper (page 4, lines 1-4).
Jain further discloses polymethyl siloxane (PDMS) or a derivative thereof (in accordance with the instant specification at page 3, lines 18-19) is a component of the filter (page 2, lines 19-22) and suitable filters include paper materials, where PDMS may be incorporated in or coated on the paper (page 3, lines 17-29).
Jain further discloses PDMS or a derivative thereof can efficiently remove toxic gas components from a gas stream (page 2, lines 13-14).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sakurai, by making the paper layer comprise PDMS, as taught by Jain, because all are directed to smoking articles, Jain teaches PDMS can remove toxic gas components (page 2, lines 13-14), and this involves modifying a similar paper with a known material in the art 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 either modify Sakurai or further modify Modified Sakurai, 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 23-25 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210120867-A1) in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021), as applied to claim 16 above, and further in view of Aoun et al. (US-20210177041-A1).
In regards to claims 23-24, Modified Sakurai discloses an aerosol generating substrate comprising a filler that can comprise but is not limited to propylene glycol and glycerine ([0074]), but does not explicitly disclose the aerosol generating substrate comprising a gel composition and the gel composition comprising a majority of glycerine.
Aoun, directed to an aerosol generating articles, discloses an aerosol generating article comprising a tubular substrate where the substrate comprises a slurry set to a gel ([0007], [0011] and further dried to an amorphous solid, which is a dried gel ([0024]).
Aoun further discloses the amorphous solid (i.e., gel) comprises an aerosol generating agent consisting essentially of glycerol (i.e., glycerine), in a range from about 20 to about 80 weight percent of the gel ([0135]).
Aoun further discloses that if the aerosol generating agent (i.e., glycerine) is too low, than the gel may be brittle and easily broken. The glycerine content provides a gel flexibility which allows the solid sheet to be wound ([0135]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sakurai, by modifying the aerosol generating substrate to comprise a gel composition comprising a majority of glycerine, as taught by Aoun, because all are directed to aerosol generating articles, Aoun teaches the glycerine content provides the gel flexibility and it is known in the art to use gel in aerosol generating substrates ([0135]), and this involves applying a known technique of using glycerine in a gel composition to the aerosol generating substrate of a similar smoking article to yield predictable results.
In regards to claim 25, Sakurai does not explicitly disclose the use of xanthan gum in the gel composition, however Modified Aoun discloses the gel composition comprising xanthan gum (Aoun [0132]).
In regards to claims 28 and 29, Sakurai discloses a heater inside the electrical heating device generates heat under the control unit, which transfers heat to the aerosol generating substrate to generate an aerosol ([0085]), but does not explicitly disclose a plurality of heating elements.
Aoun discloses the aerosol forming compositions may comprise embedded heating means, such as inductive heating elements (i.e., plurality of induction heating elements) ([0046]).
Aoun further discloses at least a first and second heating element, which allows the heat to be applied to different sections of the aerosol generating article, at different times and rates ([0060]-[0061]).
Aoun further discloses that staggering the times and rates of heating may allow for both fast aerosol production and longevity of use ([0060]).
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sakurai, by making the aerosol generating article further comprise a plurality of metallic heating elements, as taught by Aoun, because all are directed to smoking articles, Aoun teaches the plurality of heating elements may allow for both fast aerosol production and longevity of use ([0060]), and this involves applying a known technique of using a plurality of induction heating elements for a similar aerosol generating article to yield predictable results.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US-20210120867-A1) in view of Dashley et al. (GB-2143150-A as cited in the IDS dated 11/19/2021), as applied to claim 26 above, and further in view of Sciboz et al. (US-20180310608-A1, as cited in the IDS dated 11/19/2021).
In regards to claim 27, Sakurai discloses the homogenized material is tobacco plant material ([0071]) and the aerosol generating base material (i.e., aerosol former) in the weight of preferably 10 weight% or more ([0074]-[0075]). The range disclosed by the prior art overlaps the claimed range of the tobacco material comprises about 5 to 30% an aerosol former and is therefore considered prima facie obvious.
Sakurai is silent to the use of a binder and does not explicitly disclose a binder from about 1 to about 5% in dry weight basis.
Sciboz, directed to an aerosol generating article, discloses the article comprising homogenized tobacco material comprising from about 1 to 5 % of a binder ([0047]) and from about 5 to 30% an aerosol former in dry weight basis ([0045]).
Sciboz further discloses there is a practical limit to the amount of binder that may be present in a tobacco slurry and hence in a homogenized tobacco material formed by casting the slurry. This is due to the tendency of the binders to gel when coming in contact with water. Gelling strongly influences the viscosity of the tobacco slurry, which in turn is an important parameter of the slurry for subsequent web manufacturing processes, like for example casting. It is therefore preferred to have a relatively low amount of binder in the homogenized tobacco material. In some embodiments, binder may comprise between about 1 percent and about 5 percent in dry weight of the homogenized tobacco material ([0047]).
The range disclosed by the prior art overlaps the claimed range of the tobacco material comprises about 1 to 5% of a binder in dry weight basis and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Sakurai by making the homogenized tobacco material further comprise a binder in an amount of 1 to 5 dry weight percent, as taught by Sciboz, because all are directed to aerosol generating articles, Sciboz teaches it is preferred to have a relatively low amount of binder in the homogenized tobacco material and that it is known in the art to use binders in an amount from 1 to 5 weight percent based on dry weight in the composition ([0047]), and this merely involved applying a known amount of binder to a similar homogenized tobacco product to yield predictable results.
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755