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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 13, 2026 has been entered.
Status of the Claims
Claims 1, 6, 10, 12, 14-17, 21-23, 25, 28-32, and 43 are pending and are subject to this Office action. Claims 2-5, 7-9, 11, 13, 18-20, 24, 26-27, 33-42, and 44 are cancelled.
Response to Arguments
Applicant's arguments, see pgs 5-10, filed July 13, 2026, have been fully considered but they are moot because a new grounds of rejection is provided on the present Action, which relies upon a new combination of references.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6, 10, 12, 14-17, 21, 28, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (US 2021/0244076 A1) in view of Campitelli (US 2022/0046979 A1) and Rojo-Calderon (US 2020/0260777 A1).
Regarding Claim 1, Ferrie, directed to aerosol generating articles ([0002], [0011]), teaches an article for use in a non-combustible aerosol provision system ([0144], [0150], [0192]-[0193], [0972]-[0973], Fig. 8; HNB (heat-not-burn) consumable 10b is an aerosol-forming article comprising aerosol-forming substrate 14b. HNB consumable 10b is for use in a substitute smoking system comprising a HNB device adapted to heat but not combust aerosol-forming substrate 14b to provide an aerosol), the article comprising:
a first aerosol generating material ([0972]-[0973], Fig. 8; HNB consumable 10b comprises aerosol-forming substrate 14b), and
a component downstream of the first aerosol generating material ([0972]-[0973], [0977]-[0979], Fig. 8; HNB consumable 10b comprises upstream filter element 22b, spacer 30b, and downstream filter element 26b downstream of aerosol-forming substrate 14b. Upstream filter element 22b, spacer 30b, and downstream filter element 26b form the component),
wherein the component comprises a tubular portion ([0977], [0979], Fig. 8; Spacer 30b is a cardboard tube) and
wherein the tubular portion comprises a wall comprising a second aerosol generating material ([0027], [0190]-[0191], [0979], [0988], Fig. 8; Spacer 30b is a cardboard tube having an inner wall. Spacer 30b comprises a menthol coating 100 on its inner wall to provide flavor to the aerosol generated from aerosol-forming substrate 14b. The menthol flavorant may be a solid or liquid composition which is entrained in the flow of aerosol. The menthol coating 100 is therefore a second aerosol-generating material),
but does not teach the article i) wherein the second aerosol generating material comprises a gel, ii) wherein the gel has a thickness of about 0.05 mm to about 1 mm.
With respect to i), Campitelli, directed to aerosol generating articles ([0001]), teaches an article ([435], Fig. 13; Aerosol generating article 100), the article comprising:
a tubular portion ([435], Fig. 13; Aerosol generating article 100 comprises a tubular element 500),
wherein the tubular portion comprises a wall comprising an aerosol generating material ([435], Fig. 13-16; Tubular element 500 comprises a gel 124 in the configurations shown in Figs. 14-16. [0477], Fig. 23 shows an alternate embodiment of tubular element 500, wherein the gel 724 may be provided as a coating on the internal face of the longitudinal sides of the tubular element 500. [0096], the gel is a mixture of materials capable of releasing volatile compounds into an aerosol passing through the tubular element. [0098], The gel may comprise an aerosol-former. Therefore, the gel is an aerosol generating material forming a coating in an inner wall of the tubular element 500 (tubular portion)),
wherein the aerosol generating material comprises a gel ([0477], Fig. 23; Gel 724 (aerosol generating material) is a gel).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the gel taught by Campitelli as the second aerosol generating material in the composition taught by Ferrie because Ferrie and Campitelli are directed to aerosol generating articles, Ferrie states that the second aerosol generating material may be a menthol coating in the solid or liquid phase (Ferrie, [0190]-[0191], [0988]), Campitelli teaches a menthol gel composition having a thickness suitable to release volatile flavor compounds into a flow of aerosol (Campitelli, [0096], [0106]), gels are colloidal compositions including a solid phase and a liquid phase as would be known to one of ordinary skill in the art, Campitelli demonstrates that the provision of a gel may be advantageous for storage, transport, and use, as the risk of leakage from the tubular portion may be reduced (Campitelli, [0096]), and this involves replacing one composition with another to yield predictable results.
With respect to ii), Rojo-Calderon, directed to aerosol generating articles ([0001]), teaches an article ([0141], Fig. 1; Aerosol generating article 1), the article comprising:
a tubular portion ([0141]-[0147], Fig. 1; Aerosol generating article 1 comprises a tubular aerosol-generating component 100 (tubular portion) forming a substantially circularly cylindrical cavity 109)),
wherein the tubular portion comprises a wall comprising an aerosol generating material ([0141]-[0147], Fig. 1; Aerosol-generating component 100 (tubular portion) forming a substantially circularly cylindrical cavity 109). Aerosol-forming substrate 103 forms a coating on the inner surface of the cup-shaped receptacle, in the cavity 109),
wherein the aerosol generating material comprises a coating ([0477], Fig. 23; Gel 724 (aerosol generating material) is a gel),
wherein the coating has a thickness of about 0.05 mm to about 1 mm ([0027], The thickness of the coating may be between about 0.5 mm and about 8 mm).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the gel taught by Campitelli having a thickness of about 0.05 mm to about 1 mm as taught by Rojo-Calderon, because Ferrie and Campitelli are directed to aerosol generating articles, Ferrie states that the second aerosol generating material may be a menthol coating (Ferrie, [0190]-[0191], [0988]), Rojo-Calderon demonstrates that an aerosol forming substrate coating provided on the inner surface of a wall of a tubular component ideally has a thickness 0.5 mm and about 8 mm (Rojo-Calderon, [0027]), and the disclosures in Rojo-Calderon would have motivated one to provide the gel having the claimed thickness.
Regarding Claim 6, Ferrie further teaches the article wherein the tubular portion is at an upstream end of the component ([0972]-[0973], [0977]-[0979], Fig. 8; The component comprises upstream filter element 22b, spacer 30b, and downstream filter element 26b. The component is located downstream of aerosol forming substrate 14b. [0133], Spacer element may be located between the aerosol-forming substrate and the upstream filter element. Therefore, the spacer 30b (tubular portion) may be located at an upstream end of the component).
Regarding Claim 10, Ferrie further teaches the article further comprising at least one hollow tubular element, wherein the hollow tubular element forms said tubular portion ([0977]-[0980], Fig. 8; Spacer 30b is the tubular portion, and can be regarded as the hollow tubular element) and/or
is provided as a component separate from said tubular portion ([0977]-[0980], Fig. 8; Upstream filter element 22b is a hollow tubular element, and downstream filter element 26b is a hollow tubular element). Spacer 30b is the tubular portion. Therefore, the hollow tubular element may be provided as a component separate from said tubular portion).
Regarding Claim 12, Ferrie further teaches the article wherein the at least one hollow tubular element is formed as a paper tube ([0977]-[0980], Fig. 8; Upstream filter element 22b is a hollow tubular element, and downstream filter element 26b is a hollow tubular element. [0098], At least one of the upstream or downstream filter element may be tubes comprised of paper).
Regarding Claim 14, Ferrie further teaches the article wherein the at least one hollow tubular element comprises an internal diameter of greater than 3.0 mm ([0977]-[0980], Fig. 8; Upstream filter element 22b is a hollow tubular element, and downstream filter element 26b is a hollow tubular element. [0053] states that where the filter element(s) is/are a hollow bore filter element (as shown in Fig. 8), each hollow bore may have a bore diameter of between 1 and 5 mm).
The range for the internal diameter suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 15, Ferrie further teaches the article wherein the at least one hollow tubular element comprises a minimum wall thickness of greater than 0.9 mm ([0977]-[0980], Fig. 8; Upstream filter element 22b is a hollow tubular element, and downstream filter element 26b is a hollow tubular element. [0051] states that each filter element may have a substantially cylindrical shape with a diameter substantially matching the diameter of the aerosol-forming substrate. [0072] states that the aerosol-forming substrate may have a diameter of between 5 and 10 mm. [0053] states that where the filter element(s) is/are a hollow bore filter element (as shown in Fig. 8), each hollow bore may have a bore diameter of between 1 and 5 mm. If upstream or downstream filter elements 22b, 26b have a diameter of 10 mm and a bore diameter of 1 mm, then the wall thickness of the hollow tubular elements (filter elements 22b, 26b) is a maximum of 4.5 mm).
The range for the minimum wall thickness suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 16, Ferrie further teaches the article wherein the at least one hollow tubular element comprises a first hollow tubular element, and the component further comprises a second hollow tubular element ([0977]-[0980], Fig. 8; Upstream filter element 22b is the first hollow tubular element, and downstream filter element 26b is the second hollow tubular element).
Regarding Claim 17, Ferrie further teaches the article wherein the second hollow tubular element is at the opposite end of the component to the first hollow tubular element ([0977]-[0978], [0980], Fig. 8; Downstream Filter element 26b (second hollow tubular element) is at the opposite end of the component to upstream filter element 22b (first hollow tubular element)).
Regarding Claim 21, Ferrie further teaches the article wherein the second hollow tubular element is formed as a paper tube ([0977]-[0980], Fig. 8; Upstream filter element 22b is the first hollow tubular element, and downstream filter element 26b is the second hollow tubular element. [0098], At least one of the upstream or downstream filter element may be tubes comprised of paper).
Regarding Claim 28, Ferrie further teaches the article wherein the second aerosol generating material comprises at least one of a flavorant or an amorphous solid ([0190]-[0191], [0979], [0988], Fig. 8; Menthol coating 100 is a flavorant).
Regarding Claim 43, Ferrie teaches a non-combustible aerosol provision system ([0144], [0150], [0192]-[0193], [0972]-[0973], [0986]-[0987], Figs. 8 and 11; The substitute smoking system of Fig. 11 comprises the HNB consumable 10b is Fig. 8 and HNB device 54b. Device 54b is configured to heat not burn (combust) aerosol-forming substrate 14b of consumable 10b) comprising:
an article according to claim 1 ([0972], Fig. 8; The HNB consumable 10b of Ferrie has been modified in view of Campitelli to yield the article according to claim 1); and
a non-combustible aerosol provision device ([0986]-[0987], Figs. 8 and 11; HNB device 54b).
Claims 22-23, 25, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (US 2021/0244076 A1) in view of Campitelli (US 2022/0046979 A1) and Rojo-Calderon (US 2020/0260777 A1) as applied to Claims 1 and 12, and further in view of Jordil (WO 2019/105950 A1, cited on the IDS dated 6/16/2022).
Regarding Claim 22-23, Modified Ferrie teaches all the claim limitations as set forth above, but does not teach the article wherein the paper tube is formed from at least two layers of paper, wherein: the at least two layers of paper each comprise a butt seam, or the at least two layers of paper are concentrically wrapped, wherein the total thickness of the paper tube is in the range about 50 micrometers to about 500 micrometers, about 100 to about 400 micrometers, or about 200 micrometers to about 350 micrometers.
Jordil, directed to aerosol generating articles (pg 1, ln 4-5), teaches an article for use in a non-combustible aerosol provision system (pg 1, ln 4-5, pg 12, ln 10-13, pg 13, ln 1-5, Figs. 1-2; The aerosol generating article is configured to be heated and not combusted by an electrical heating element to provide an aerosol. The aerosol generating article and the electrical heating element form a non-combustible aerosol provision system. Figs. 1-2 show aerosol-generating article 10 in accordance with the present invention), the article comprising:
a first aerosol generating material (pg 11, ln 35 – pg 12, ln 2, pg 13, ln 1-5, Figs. 1-2; Aerosol-generating article 10 comprises a tobacco rod 12. Tobacco is an aerosol generating material (see instant specification, pg 4, ln 11-12)), and
a component downstream of the first aerosol generating material (pg 3, ln 14-16, pg 13, ln 1-5, Figs. 1-2; Aerosol-generating article 10 comprises a mouthpiece 14 downstream of tobacco rod 12),
wherein the component comprises a tubular portion (pg 3, ln 14-16, pg 5, ln 23-25, pg 13, ln 15-23, Figs. 1-2; Mouthpiece 14 includes upstream cavity 26. As shown in Fig. 2, upstream cavity 26 is defined by plug wrap 28 and tipping paper 16. In alternative embodiments, mouthpiece 14 may include a hollow tube segment (not pictured) which defines upstream cavity 26) and
wherein the tubular portion comprises a wall comprising a second aerosol generating material (pg 5, ln 29-30, pg 6, ln 4-5, Hollow tube segment may be formed of any suitable material to define an annular wall. Hollow tube segment may include one or more plasticizer such as triacetin. Triacetin is an aerosol generating material (see instant specification, pg 9, ln 27-30)),
further comprising at least one hollow tubular element, wherein the hollow tubular element forms said tubular portion (pg 5, ln 23-25, pg 13, ln 15-23, Figs. 1-2; Hollow tube segment is the tubular portion),
wherein the at least one hollow tubular element is formed as a paper tube having a plurality of overlapping paper layers (pg 6, ln 16-22, Hollow tube segment may be formed as a paper tube),
wherein the paper tube is formed from at least two layers of paper (pg 6, ln 16-22, Hollow tube segment may be formed from two to ten paper layers),
wherein: the at least two layers of paper are concentrically wrapped (pg 6, ln 16-22, The paper layers of hollow tube segment are concentrically wrapped)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the hollow tubular element taught by Ferrie from the layered paper tube material taught by Jordil because Ferrie and Jordil are directed to aerosol generating articles, Jordil demonstrates that the paper tube is formed from a plurality of layers to improve resistance to collapse or deformation (Jordil, pg 6, ln 16-20), and this involves replacing one material with another to yield predictable results.
Regarding Claim 25, Jordil further teaches the article wherein the total thickness of the paper tube is in the range about 50 micrometers to about 500 micrometers (pg 6, ln 25-32, When hollow tube segment is formed from paper, the thickness of the paper tube may be between 100 and 300 micrometers).
The range for the thickness of the paper tube disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 32, Ferrie in view of Campitelli and Rojo-Calderon does not teach the article wherein the component comprises ventilation, and wherein the level of ventilation into the component is less than 50%.
Jordil, directed to aerosol generating articles (pg 1, ln 4-5), teaches an article for use in a non-combustible aerosol provision system (pg 1, ln 4-5, pg 12, ln 10-13, pg 13, ln 1-5, Figs. 1-2; The aerosol generating article is configured to be heated and not combusted by an electrical heating element to provide an aerosol. The aerosol generating article and the electrical heating element form a non-combustible aerosol provision system. Figs. 1-2 show aerosol-generating article 10 in accordance with the present invention), the article comprising:
a first aerosol generating material (pg 11, ln 35 – pg 12, ln 2, pg 13, ln 1-5, Figs. 1-2; Aerosol-generating article 10 comprises a tobacco rod 12. Tobacco is an aerosol generating material (see instant specification, pg 4, ln 11-12)), and
a component downstream of the first aerosol generating material (pg 3, ln 14-16, pg 13, ln 1-5, Figs. 1-2; Aerosol-generating article 10 comprises a mouthpiece 14 downstream of tobacco rod 12),
wherein the component comprises a tubular portion (pg 3, ln 14-16, pg 5, ln 23-25, pg 13, ln 15-23, Figs. 1-2; Mouthpiece 14 includes upstream cavity 26. As shown in Fig. 2, upstream cavity 26 is defined by plug wrap 28 and tipping paper 16. In alternative embodiments, mouthpiece 14 may include a hollow tube segment (not pictured) which defines upstream cavity 26) and
wherein the tubular portion comprises a wall comprising a second aerosol generating material (pg 5, ln 29-30, pg 6, ln 4-5, Hollow tube segment may be formed of any suitable material to define an annular wall. Hollow tube segment may include one or more plasticizer such as triacetin. Triacetin is an aerosol generating material (see instant specification, pg 9, ln 27-30)),
wherein the component comprises ventilation (pg 10, ln 10-11, pg 13, ln 27-30, Figs. 1-2; Mouthpiece 14 may include one or more ventilation zones 30), and
wherein the level of ventilation into the component is between 40% and 60% of the volume of aerosol passing through the component (pg 10, ln 10-28, pg 13, ln 27-30, Figs. 1-2; Mouthpiece 14 may include one or more ventilation zones 30. Mouthpiece 14 may have a ventilation level between 20 percent and 80 percent as measured in accordance with ISO 9512:2002).
It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the article taught by Ferrie in view of Campitelli and Rojo-Calderon comprising ventilation, and wherein the level of ventilation into the component is between 40% and 60% of the volume of aerosol passing through the component as taught by Jordil because Ferrie and Jordil are directed to aerosol generating devices, Jordil demonstrates that providing a ventilation level between 40% and 60% of the volume of aerosol passing through the component provides an additional cooling effect on the aerosol, dilutes the aerosol, and reduces its moisture content (Jordil, pg 10, ln 10-28), and the teaching in Jordil would have motivated one of ordinary skill to provide the article with ventilation at the claimed level.
The range for the level of ventilation disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Claim 29-31 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (US 2021/0244076 A1) in view of Campitelli (US 2022/0046979 A1) and Rojo-Calderon (US 2020/0260777 A1) as applied to Claim 1, and further in view of Murray (US 2022/0022537 A1).
Regarding Claims 29-31, Ferrie in view of Campitelli and Rojo-Calderon does not teach the article wherein the second aerosol generating material comprises microcapsules, wherein the microcapsules contain an aerosol forming additive, wherein the microcapsules are configured to release the aerosol forming additive on application of heat.
Murray, directed to aerosol-generation ([0002]-[0003]), teaches a sticker intended for use with a smoking substitute apparatus ([01295], Figs. 8A, 8B; Sticker 700), comprising
an aerosol generating material ([1299]-[1302], Sticker 700 comprises a flavorant layer 708, wherein a flavorant may be contained in an array of microcapsules arranged to form the flavorant layer 708. In operation, an aerosol flows through or past sticker 700 and flavorant layer 708 such that the flavorant is entrained in the flow of aerosol),
wherein the second aerosol generating material comprises microcapsules ([1299]-[1302], Flavorant layer 708 is an array of microcapsules),
wherein the microcapsules contain an aerosol forming additive ([1299]-[1302], A flavorant may be contained in an array of microcapsules arranged to form the flavorant layer 708. In operation, an aerosol flows through or past sticker 700 and flavorant layer 708 such that the flavorant is entrained in the flow of aerosol. The flavorant is therefore an aerosol forming additive),
wherein the microcapsules are configured to release the aerosol forming additive on application of heat ([0104], [1302], wherein the microcapsules are arranged to rupture upon application of heat).
It would have been obvious to one of ordinary skill in the art to provide the second aerosol generating material within microcapsules as taught by Murray because Ferrie and Murray are directed to aerosol generation, Ferrie states that the second aerosol generating material is an aerosol forming additive and a flavorant (Ferrie, [0036], [0979], [0988], Fig. 8; Spacer 30b comprises a menthol coating 100 on its inner wall to provide flavor to the aerosol generated from aerosol-forming substrate 14b), Murray demonstrates that the microcapsules configured to rupture upon application of heat is a suitable method release a flavorant into a stream of aerosol (Murray, [0104]), and this involves combining prior art elements according to known methods to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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