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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
Status of the Claims
Claims 29-36, and 39-52 are pending and are subject to this Office Action. Claims 49-52 are new. Claim 29 is amended. Claims 1-28, and 37-38 are cancelled. Claims 42-48 are withdrawn.
Response to Amendments
The amendments to the claims filed on December 19, 2025 are acknowledged.
Response to Arguments
Applicant's arguments, see pgs 8-11, filed December 19, 2025, with respect to the rejection(s) of claims 29-36, and 39-48 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 29 to require a limitation that the previously applied prior art does not disclose: “, and wherein the second tubular aerosol-forming substrate layer comprises a homogenized tobacco material comprising an aerosol-former content of from 5 percent by weight on a dry weight basis to 30 percent by weight on a dry weight basis.” Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art references in combination with previously applied prior art.
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.
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 29-36, 39-41, and 49-52 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (US 2021/0161201 A1) in view of Zuber (US 2014/0373856 A1) and Bilat (US 2018/0020735 A1), as evidenced by Soroudi (US 2009/0192478 A1), Egyed (US 2009/0081362 A1), Kojima (US 2011/0312036 A1), Bernauer (US 2018/0084608 A1), and Iyer (US 2006/0093463 A1).
Regarding Claim 29, Aoun, directed to aerosol-generating articles ([0002]-[0004]), teaches an aerosol-generating article ([0149]-[0150], Figs. 1-2; Consumable 1 comprises aerosolizable material 14. Consumable 1 is an article for use with apparatus for heating aerosolizable material to volatilize at least one component of aerosolizable material 14 to generate an aerosol), comprising:
a first tubular aerosol-forming substrate layer defining a cylindrical hollow central core ([0149]-
[0150], Figs. 1-2; Consumable 1 comprises aerosolizable material 14. Aerosolizable material 14 is a
tubular layer defining air gap 10, which is a cylindrical hollow core. [0057]-[0058], [0155], Aerosolizable
material 14 may be a gel layer comprising a material (substrate) which forms an aerosol upon heating); and
a second tubular aerosol-forming substrate layer arranged around the first tubular aerosol-forming
substrate layer ([0149]-[0150], Figs. 1-2; Consumable 1 comprises carrier 16, which is a tubular layer
arranged around aerosolizable material 14. [0154], Carrier 16 comprises or consists of a tobacco material,
such as a sheet of reconstituted tobacco. Tobacco is an aerosol-forming substrate; see instant specification, pg 3, ln 7-10),
wherein the first tubular aerosol-forming substrate layer is a gel layer ([0057]-[0058], and [0155], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be a gel layer),
wherein a membrane is arranged between the first tubular aerosol-forming substrate layer and the second tubular aerosol-forming substrate layer ([0035], [0149]-[0150], [0170]-[0172], Figs. 1-2, 4; The consumable 3 of Fig. 4 is identical to the consumable 1 of Figs. 1 and 2 except carrier 16 includes a first layer 18 and a second layer 20. Second layer 20 may comprises a sheet of reconstituted tobacco to form the second tubular aerosol-forming substrate layer. First layer 18 comprises a heating material, which may be provided with holes to allow the flow an aerosol. Further, the term “membrane” can be most generally defined as a flexible or inflexible barrier; see Soroudi. [0043]. Therefore, regardless of the presence of holes in first layer 18, first layer 18 is a membrane arranged between aerosolizable material 14 (first tubular aerosol-forming substrate layer) and second layer 20 (second tubular aerosol-forming substrate layer)),
wherein an inner diameter of the first tubular aerosol forming substrate layer taught by Aoun is between 2 mm and 10 mm ([0149]-[0151], [0198]-[0199], Figs. 1-2; Consumable 1 comprises a hollow tube defined by the inner surface of aerosolizable material 14 (first tubular aerosol-forming substrate layer). The hollow tube has an inner diameter between 2 mm and 10 mm),
wherein the first tubular aerosol-forming substrate layer comprises or is a liquid retention material ([0058], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 comprises an “amorphous solid”. The amorphous solid is a solid material that may retain some fluid, such as liquid, within it. Aerosolizable material is a liquid retention material. [0077]-[0079], The amorphous solid may comprises a fibrous organic filler material such as wood pulp. Wood pulp is a liquid retention material; see Egyed, [0003])
but does not teach the aerosol-generating article i) further comprising a homogenization portion downstream of the first and the second tubular aerosol-forming substrates, wherein the homogenization portion is a hollow tubular portion, wherein an inner diameter of the homogenization portion is identical to an inner diameter of the first tubular aerosol-forming substrate layer, and ii) wherein the second tubular aerosol-forming substrate layer comprises a homogenized tobacco material comprising an aerosol-former content of from 5 percent by weight on a dry weight basis to 30 percent by weight on a dry weight basis.
With respect to i), Zuber, directed to aerosol-generating articles ([0001]-[0002]), teaches an aerosol-generating article ([0053], Fig. 1; Smoking article 1 comprises an aerosol-forming substrate 7, and is therefore, an aerosol-generating article) comprising:
an aerosol-forming substrate ([0053], Fig. 1; Smoking article 1 comprises an aerosol-forming substrate 7);
a homogenization portion downstream of the aerosol-forming substrate, wherein the homogenization portion is a hollow tubular portion ([0053], [0058], Fig. 1; Smoking article 1 comprises transfer section 4 downstream of aerosol-forming substrate 7. Transfer section 4 is a hollow tubular portion which allows for the homogenization of the aerosols release from aerosol-forming substrate 7); and
a mouthpiece filter downstream of the homogenization portion ([0053], Fig. 1; Smoking article 1 comprises mouthpiece filter 3 downstream of transfer section 4 (homogenization portion)),
wherein an inner diameter of the homogenization portion is between about 3 mm and about 9 mm ([0041], [0053], [0058], Fig. 1; Smoking article 1 including aerosol-forming substrate 7 and transfer section 4 has an outer diameter of 5 mm to 12 mm. The transfer section 4 comprises a thin-walled tube. The cross-sectional view of Fig. 1 shows that the walls of the transfer section 4 occupy at most 1/4 of the total outer diameter of the transfer section 4. Therefore, the transfer section 4 (homogenization portion) has an inner diameter between about 3 mm and about 9 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 aerosol-generating article taught by Aoun with a homogenization portion downstream of the first and the second tubular aerosol-forming substrates, wherein the homogenization portion is a hollow tubular portion, and further comprising a mouthpiece filter downstream of the homogenization portion similarly taught by Zuber because Aoun and Zuber are directed to aerosol-generating articles, Zuber demonstrates that the homogenization portion cools volatile substances released from an aerosol-forming substrate (Zuber, [0058]), and that the mouthpiece filter is formed from conventional cellulose acetate tow to filter the aerosol generated from an aerosol-forming substrate (Zuber, [0020], [0053]), and this involves combining prior art elements according to known methods to yield predictable results.
Further, because an inner diameter of the first tubular aerosol forming substrate layer taught by Aoun is between 2 mm and 10 mm ([0149]-[0151], [0198]-[0199], Figs. 1-2; Consumable 1 comprises a hollow tube defined by the inner surface of aerosolizable material 14 (first tubular aerosol-forming substrate layer). The hollow tube has an inner diameter between 2 mm and 10 mm), and an inner diameter of the homogenization portion taught by Aoun is between about 3 mm and about 9 mm ([0041], [0053], [0058], Fig. 1; Smoking article 1 including aerosol-forming substrate 7 and transfer section 4 has an outer diameter of 5 mm to 12 mm. The transfer section 4 comprises a thin-walled tube. The cross-sectional view of Fig. 1 shows that the walls of the transfer section 4 occupy at most 1/4 of the total outer diameter of the transfer section 4. Therefore, the transfer section 4 (homogenization portion) has an inner diameter between about 3 mm and about 9 mm), there must be at least one embodiment of the inventions of Aoun and Zuber wherein the inner diameter of the homogenization portion is identical to the inner diameter of the first tubular aerosol-forming substrate layer. Furthermore, adjusting the diameters of first tubular aerosol forming substrate layer and the homogenization portion to be equal to each other constitutes change in size to another known size in the art, especially because the two ranges for the inner diameters of the first tubular aerosol forming substrate layer and homogenization portion disclosed or suggested by Aoun and Zuber already overlap. The change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
Aoun in view of Zuber does not teach the aerosol generating article ii) wherein the second tubular aerosol-forming substrate layer comprises a homogenized tobacco material comprising an aerosol-former content of from 5 percent by weight on a dry weight basis to 30 percent by weight on a dry weight basis
With respect to ii), Bilat, directed to aerosol-generating articles ([0005]), teaches an aerosol-generating article ([0056], [0188]-[0191], Fig. 8; Aerosol-forming substrate 210 in Fig. 8 is a cigarette (an aerosol-generating article)) comprising:
an aerosol forming substrate ([0056], [0188]-[0191], Fig. 8; Aerosol-forming substrate 210)
wherein the aerosol-forming substrate comprises a homogenized tobacco material comprising an aerosol-former content of from 5 percent by weight on a dry weight basis to 30 percent by weight on a dry weight basis ([0056], The aerosol-forming substrate may comprise homogenised tobacco material. [0062], Homogenised tobacco material may have an aerosol-former content of between 5% and 30% by weight on a dry weight basis).
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 second tubular aerosol-forming substrate layer comprising a homogenized tobacco material comprising an aerosol-former content of from 5 percent by weight on a dry weight basis to 30 percent by weight on a dry weight basis as taught by Bilat because Aoun, Zuber, and Bilat are directed to aerosol generating articles, Aoun states that the second tubular aerosol-forming substrate layer comprises a reconstituted tobacco material but does not provide a specific composition (Aoun, [0170]-[0172]), Bilat provides a reconstituted tobacco material composition wherein the aerosol former facilitates formation of a dense and stable aerosol and is substantially resistant to thermal degradation (Bilat, [0056]), and this involves substituting one aerosol-forming substrate composition for another to yield predictable results.
Regarding Claim 30, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate layer and the second tubular aerosol-forming substrate layer are aligned coaxially ([0149]-[0150], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) and carrier 16 (second tubular aerosol-forming substrate layer) are aligned coaxially).
Regarding Claim 31, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate layer is a nicotine-containing layer ([0057]-[0058], [0068], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising nicotine at 1 wt% to 70 wt%).
Regarding Claim 32, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the second tubular aerosol-forming substrate layer is a tobacco-containing layer ([0149]-[0150], [0154], Figs. 1-2; Carrier 16 (second tubular aerosol-forming substrate layer) comprises or consists of a tobacco material, such as a sheet of reconstituted tobacco).
Regarding Claim 33, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein a melting point of the first tubular aerosol-forming substrate layer is different from a melting point of the second tubular aerosol-forming substrate layer ([0057]-[0058], [0061]-[0063], [0149]-[0150], [0154], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising between 1 and 60 wt% agarose. Agarose has a melting point of 65 degrees Celsius; see Kojima, [0050]. Carrier 16 (second tubular aerosol-forming substrate layer) comprises or consists of a tobacco material, such as a sheet of reconstituted tobacco. Tobacco thermally degrades at temperatures above 800 degrees Celsius by pyrolysis and combustion; see Bernauer, [0002]. It is reasonably understood that a melting point of the first tubular aerosol-forming substrate layer is lower than a melting point of the second tubular aerosol-forming substrate layer).
Regarding Claim 34, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the melting point of the first tubular aerosol-forming substrate layer is lower than the melting point of the second tubular aerosol-forming substrate layer ([0057]-[0058], [0061]-[0063], [0149]-[0150], [0154], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising between 1 and 60 wt% agarose. Agarose has a melting point of 65 degrees Celsius; see Kojima, [0050]. Carrier 16 (second tubular aerosol-forming substrate layer) comprises or consists of a tobacco material, such as a sheet of reconstituted tobacco. Tobacco thermally degrades at temperatures above 800 degrees Celsius by pyrolysis and combustion; see Bernauer, [0002]. It is reasonably understood that the melting point of the first tubular aerosol-forming substrate layer is lower than the melting point of the second tubular aerosol-forming substrate layer).
Regarding Claim 35, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the aerosol- forming substrate of the first tubular aerosol-forming substrate layer is different from the aerosol-forming substrate of the second tubular aerosol-forming substrate layer ([0057]-[0058], [0149]-[0150], [0154], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel). Carrier 16 (second tubular aerosol-forming substrate layer) comprises or consists of a tobacco material, such as a sheet of reconstituted tobacco).
Regarding Claim 36, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate comprises a flavorant, and wherein the flavorant is menthol ([0057]-[0058], [0067], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising a flavor, such as menthol, at 0.1 wt% to 60 wt%).
Regarding Claim 39, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article further comprising a mouthpiece filter downstream of the first and second aerosol forming substrates ([0149]-[0150], Figs. 1-2; Consumable 1 comprises aerosolizable material 14 (first tubular aerosol-forming substrate layer), and carrier 16 (second tubular aerosol-forming substrate layer) arranged around aerosolizable material 14. [0194], the consumable 1, 2, 3, 4, 5 also comprises a filter (not shown). The filter may be for filtering aerosol or vapor released from the aerosolizable material 14 in use. The filter abuts a longitudinal end of the hollow tube and is axially aligned with the hollow tube. The filter must be downstream of aerosolizable material 14 and carrier 16 in order to filter the aerosol released from aerosolizable material 14),
but does not teach the aerosol-generating article further comprising a mouthpiece filter downstream of the homogenization portion.
Zuber, directed to aerosol-generating articles ([0001]-[0002]), teaches an aerosol-generating article ([0053], Fig. 1; Smoking article 1 comprises an aerosol-forming substrate 7, and is therefore, an aerosol-generating article) comprising:
an aerosol-forming substrate ([0053], Fig. 1; Smoking article 1 comprises an aerosol-forming substrate 7);
a homogenization portion downstream of the aerosol-forming substrate, wherein the homogenization portion is a hollow tubular portion ([0053], [0058], Fig. 1; Smoking article 1 comprises transfer section 4 downstream of aerosol-forming substrate 7. Transfer section is a hollow tubular portion which allows for the homogenization of the aerosols release from aerosol-forming substrate 7); and
a mouthpiece filter downstream of the homogenization portion ([0053], Fig. 1; Smoking article 1 comprises mouthpiece filter 3 downstream of transfer section 4 (homogenization portion)).
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 aerosol-generating article taught by Aoun in view of Zuber and Bilat with a mouthpiece filter downstream of the homogenization portion similarly taught by Zuber because Aoun and Zuber are directed to aerosol-generating articles, Aoun states that the article may comprise a mouthpiece filter downstream of the first and second aerosol forming substrates (Aoun, [0149]-[0150], [0194], Figs. 1-2), Zuber demonstrates that the mouthpiece filter is formed from conventional cellulose acetate tow to filter the aerosol generated from an aerosol-forming substrate (Zuber, [0020], [0053]), and this involves combining prior art elements according to known methods to yield predictable results.
Regarding Claim 40, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the gel layer comprises one or more of agar, agarose, sodium alginate, and Gellan gum ([0057]-[0058], [0063], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising agarose).
Regarding Claim 41, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein a melting temperature of the gel layer is above 50 degrees Celsius, or 60 degrees Celsius ([0057]-[0058], [0061]-[0063], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 (first tubular aerosol-forming substrate layer) may be an amorphous solid (gel) comprising between 1 and 60 wt% agarose. Agarose has a melting point of 65 degrees Celsius; see Kojima, [0050]).
Regarding Claim 49, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate layer comprises a liquid retention material ([0058], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 comprises an “amorphous solid”. The amorphous solid is a solid material that may retain some fluid, such as liquid, within it. Aerosolizable material is a liquid retention material. [0077]-[0079], The amorphous solid may comprises a fibrous organic filler material such as wood pulp. Wood pulp is a liquid retention material; see Egyed, [0003]).
Regarding Claim 50, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate layer comprises a capillary material ([0058], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 comprises an “amorphous solid”. [0077]-[0079], The amorphous solid may comprises a fibrous organic filler material such as wood pulp. Wood pulp is a capillary material; see Iyer, [0062]-[0063]).
Regarding Claim 51, Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 49. Aoun further teaches the aerosol-generating article wherein the first tubular aerosol-forming substrate layer comprises a capillary material ([0058], [0149]-[0150], Figs. 1-2; Aerosolizable material 14 comprises an “amorphous solid”. [0077]-[0079], The amorphous solid may comprises a fibrous organic filler material such as wood pulp. Wood pulp is a capillary material; see Iyer, [0062]-[0063]).
Regarding Claim 52 Aoun in view of Zuber and Bilat teaches the aerosol-generating article according to claim 29. Bilat further teaches the aerosol-generating article wherein the second tubular aerosol-forming substrate layer is a gel layer ([0064]).
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