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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2025 has been entered.
Response to Arguments
Applicant's arguments filed 03/03/2025 have been fully considered but they are not persuasive for the reasons set forth below. The rejection has been reconsidered in view of the amendments and arguments, and the rejection is maintained.
Applicant correctly notes that the prior Office Action included additional references: Deevi and Prestia. Upon further review, Examiner agrees that neither Deevi nor Prestia is necessary to establish a prima facie case of obviousness.
Accordingly:
Deevi is withdrawn from all rejections.
Prestia is withdrawn from all rejections, including claims 8–9.
The §103 rejections of claims 1-6 and 8-21 now rely only on Malgat in view of Nakano.
First, Applicant argues that Malgat does not teach heating the formed combustible heat source at a temperature of at least 110°C for at least 90 minutes and that Applicant’s Figures 2–3 demonstrate unexpected results.
The arguments are not persuasive for the following reasons:
Malgat teaches drying the formed combustible heat source at about 100°C for about 1 hour, and discloses that heat-treatment conditions affect binder behavior and the physical integrity of the heat source. [0042]--[0043], [0128].
Thus, temperature and time are known process parameters that influence performance.
Under MPEP §2144.05, adjusting a known process variable to optimize performance is obvious in the absence of a showing of criticality.
The amended limitation merely adjusts the temperature from 100oC to 110oC and time from 60 min to 90 min.
Such minor adjustments constitute routine optimization of a result-effective variable.
Applicant relies on Figures 2 and 3 to argue that the claimed heating conditions produce unexpected improvements. However, the data presented involve heating at 120oC and heating durations of 1.5-5 hours, whereas claim 1 broadly covers any temperature greater than 110oC and any time greater than 90 minutes. The results are not commensurate with the full scope of the claim.
The improvements shown appear incremental and within what would be expected from longer drying times and higher temperatures which is consistent with Malgat’s teaching that binder performance depends on heat-treatment. The data do not isolate the effect of the amended temperature and time from other variables. Therefore, no critical threshold or unexpected property is established.
Accordingly, the showing is insufficient to rebut the prima facie case.
Secondly, Applicant argues that Nakano does not cure Malgat because Nakano does not teach heating. This argument is not persuasive.
Nakano is not relied upon for the heating step. Nakano is relied upon solely for teaching: polyvinyl alcohol as an organic binder and combinations of binders including PVA and CMC.
See [0031].
A prior art reference need not supply all limitations. Under MPEP §2143, each reference must provide only the teaching for which it is cited.
Thus, Malgat teaches the heating process and binder behavior; Nakano supplies the specific binder composition. Together they meet the claim.
Finally, Applicant argues that Prestia does not remedy deficiencies in Malgat and Nakano. As noted above, Prestia has been withdrawn and is no longer applied to any claim.
Malgat identifies binder composition and binder quantities as variables that affect performance. See [0042–0043].
Nakano teaches that PVA is a suitable binder for combustion heat sources and may be used alone or with CMC. See [0031].
Once PVA is taught as an acceptable binder and the art teaches that binder content affects performance, determining an appropriate binder percentage is routine optimization, even without Prestia.
Applicant has not shown criticality for the claimed PVA percentage ranges.
Thus, the withdrawal of Prestia does not change the conclusion that claims 8-9 remain obvious.
In, Conclusion: After reconsideration of the amendments and arguments, Examiner maintains the rejections because:
Malgat teaches the heating process and identifies heating conditions as performance variables.
Nakano teaches polyvinyl alcohol as a binder and its combination with carboxymethyl cellulose.
Adjusting heating time, heating temperature, and binder proportions constitutes routine optimization under MPEP §2144.05.
Applicant’s evidence is not commensurate in scope and does not demonstrate unexpected results.
The rejections under 35 U.S.C. §103 are therefore maintained.
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.
Claim(s) 1-6 and 8-21 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2015/0166916), and further in view of Nakano et al. (US 2019/0124973).
Regarding claim 1 and 3, Malgat teaches a method of producing a combustible heat source (Example 1) for aerosol-generating article, the method comprising:
forming a combustible heat source comprising carbon (Table 1: Unpyrolysed carbon powder 135g), a binding agent (Table 1: Organic polymeric binder 5g) and an ignition aid comprises an alkaline earth metal peroxide of calcium peroxide (Table 1: Calcium peroxide 150g);
and heating the formed combustible heat source at a temperature of at least about 90 degrees Celsius for a period of at least about 45 minutes (the pressed heat source was removed from the mould cavity and then dried at about 100° C. for about 1 hour and conditioned at about 22°C., 30 percent relative humidity, for about 12 hours [0128]).
Temperature and heating time are recognized in the art as result effective variables that directly influence drying efficiency, binder setting, and stability of carbon based heat sources. When the prior art discloses the general process conditions, determing the optimum or workable ranges of temperature and time would have been routine optimization for one of ordinary skill in the art (See MPEP 2144.05).
Malgat does not explicitly teach: heating the formed combustible heat source at a temperature of at 110oC and for a period of at least 90 minutes and that wherein the binding agent comprises polyvinyl alcohol.
Although Malgat does not expressly teach the exact temperature or duration recited in the amended claim, Malgat teaches heating at about 100oC for about one hour, wherein is very close to the claimed conditions. When a reference teaches values that closely approach the claimed values, a prima facie case of obviousness is established because one of ordinary skill in the art would have been expected to optimize such parameters using routine experimentation (see MPEP 2144.05; MPEP 2144.02).
Nothing in Malgat indicates that heating at 100oC for one hour is critical or represents an upper limit. A skilled artisan would have reasonably expected that slightly increasing the temperature above 100oC or extending the heating duration beyond one hour would further enhance drying or stability, and such modifications would have been predictable in view of the known purpose of the heating step.
With respect to the binder, Nakano discloses a flavor inhaler and method of manufacturing combustion type heat source wherein the as the organic binder, it is possible to use, for example, a mixture containing at least one of CMC (carboxymethyl cellulose), CMC-Na (carboxymethyl cellulose sodium), alginates, ethylene vinyl acetate (EVA), polyvinyl alcohol (PVA), polyvinyl acetate (PVAc), and sugars [0031]. Nakano discloses these binders as suitable alternatives.
Since Both references are directed to the formation of combustible heat sources and the selection of one known binder in place of another would have been expected to yield predictable results. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to substitute the binder of Malgat with the polyvinyl alcohol binder taught in Nakano because it has been held that combining prior art elements according to known methods to yield predictable results (See MPEP § 2143I (A)).
Accordingly, it would have been obvious to one of ordinary skill in the art to modify the method of Malgat by using the binder taught by Nakano and by optimizing the heating temperature and time in Malgat to arrive at the claimed least 110 degree C and at least 90 minutes.
Applicant has not provided evidence establishing that the specific combination of at least 110 degrees Celsius and at least 90 minutes yields unexpected results or is critical to the operation of the claimed method.
Assertions of improved performance in the specification are not commensurate in scope with the claim and do not demonstrate that the claimed values are nonobvious. EE MPEP 716.01 (c) and MPEP 2145 II.
Regarding claim 2, Malgat teaches a in Table 1 a mixture of combustible heat source with an ignition aid of 150g and a total mixture of 300g which is 50% of the mixture thereby reading on the limitation of “wherein the combustible heat source comprises between about 15 percent by weight and about 65 percent by weight of the alkaline earth metal peroxide ignition aid”.
Regarding claim 4-5, Malgat has established in the rejection of claim 1 that the temperature and heating duration are recognized result effective variables that would have been routinely optimized by one of ordinary skill in the art (See MPEP 2144.05).
Malgat does not teach heating at temperatures of including the ranges in claims 4 and 5, and heating for a time period including the range recited in claim 6.
Although Malgat does not disclose these exact values, it teaches conditions that closely approach the claimed ranges. When the prior art proves general process parameters, selecting specific temperatures and times through routine experimentation would have been obvious.
Malgat does not identify 100oC for one hour as critical. Thus, adjusting the temperature slightly upward or extending the heating duration would have been expected to product predictable improvements in drying or stability.
Regarding claim 8-9, Nakano teaches that polyvinyl alcohol (PVA) is a suitable organic binder for forming a combustion-type heat source and may be used alone or in combination with other polymeric binders. (See Nakano ¶[0031]).
Malgat teaches that binder characteristics, including the type and quantity of binder, affect the mechanical integrity and performance of the combustible heat source. (See Malgat ¶¶[0042]–[0043]), which describe how binder selection influences integrity, strength, and behavior of the formed heat source.
Although neither Malgat nor Nakano explicitly discloses the molecular weight of the PVA, binder type and binder properties are known variables affecting the physical characteristics of the formed combustible heat source as taught by Malgat. Once the prior art identifies PVA as a binder suitable for forming the combustible heat source, determining an appropriate molecular weight for that binder would have been considered routine optimization of a result-effective variable. See MPEP 2144.05. Applicant has not provided evidence establishing criticality or unexpected results associated with the claimed molecular weight ranges.
Accordingly, selecting a molecular weight of PVA within the claimed ranges would have been an obvious matter of routine experimentation. Claims 8–9 are therefore unpatentable over Malgat in view of Nakano.
Regarding claim 10-11, Malgat in view of Nakano does not explicitly teach the specific amount of polyvinyl alcohol recited in claims 10 and 11 such as specific lower limit of at least 0.5 percent by weight of PVA as recited in claim 10 and 0.5 percent to about 2 percent by weight of PVA as recited in claim 11.
However, Nakano teaches that polyvinyl alcohol (PVA) is one of several suitable organic polymer binders for forming combustible heat sources (See Nakano [0031]). When the prior art discloses the use of a particular binder, the selection of the amount of that binder is considered a result effective variable that a person of ordinary skill in the art would have optimized through routine experimentation to achieve desired binding strength or structural stability. See MPEP 2144.05
Although the prior art does not expressly disclose these numerical values, when the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a known component through routine experimentation would have been obvious. (See MPEP 2144.05 and MPEP 2144.02).
Neither Malgat nor Nakano suggests that any particular amount of PVA is critical or produces unexpected results. Applicant has not provided evidence demonstrating that the specific amounts recited in claims 10 and 11 yield unexpected results or represent a critical threshold.
Accordingly, determining the claimed amounts of polyvinyl alcohol would have been obvious to one of ordinary skill in the art as a result of routine optimization of a known binder used for its known function. Claims 10 and 11 are therefore unpatentable over Malgat in view of Nakano.
Regarding claim 12, Malgat teaches wherein the binding agent further comprises carboxymethyl cellulose (the organic polymeric binder material comprises carboxymethyl cellulose (CMC) [0027]).
Regarding claim 13, Malgat teaches wherein the combustible heat source comprises at least about 2 percent by weight of carboxymethyl cellulose (4 percent by weight and about 10 percent by weight of the binding agent and most preferably between about 5 percent by weight and about 9 percent by weight of the binding agent [0043]).
Regarding claim 14, Malgat teaches use of carboxymethyl cellulose (CMC) as an organic polymeric binder and further teaches that the binder component may include one or more organic polymer binders in combination. (See Malgat ¶[0027]; ¶[0043]).
Nakano teaches that polyvinyl alcohol (PVA) is a suitable binder for combustible heat sources and expressly teaches that mixtures of binders, including mixtures of CMC and PVA, may be used. (See Nakano ¶[0031]).
While neither reference discloses the specific ratio of CMC to PVA recited in claim 14, the relative proportion of different binders in a mixed-binder formulation is a recognized result-effective variable that influences cohesion, integrity, and mechanical properties of the formed heat source. See MPEP 2144.05. A person of ordinary skill in the art, seeking to obtain the desired structural and stability characteristics of Malgat’s combustible heat source, would have routinely adjusted the relative amounts of known binders such as CMC and PVA in accordance with Nakano’s teaching that such binders may be used alone or in combination.
Neither Malgat nor Nakano suggests that any particular ratio between CMC and PVA is critical, and Applicant has not provided evidence demonstrating unexpected results or criticality associated with the claimed ratio. In the absence of such evidence, determining an appropriate ratio of CMC to PVA would have been an obvious matter of routine optimization.
Regarding claim 15, Claim 15 is a product-by-process claim. Under MPEP §2113, patentability of a product-by-process claim is based on the structure of the resulting product rather than on the process steps. Malgat teaches producing a combustible heat source comprising carbon, a binding agent, and an alkaline earth metal peroxide ignition aid (see [¶0027], [¶0043]). Malgat further teaches forming the heat source into cylindrical rods having a length of about 13 mm and a diameter of about 7.8 mm (see [¶0128]).
Additionally, Malgat confirms the structural characteristics of the resulting combustible heat source in describing Example 1, noting a heat source of 11 mm in length, 7.8 mm in diameter, and a density of about 0.84 g/cm³ (see [¶0120]). These dimensions and structural attributes reasonably appear substantially identical to the product recited in claim 15.
Therefore, because Malgat teaches a combustible heat source having a structure that is the same or substantially the same as that resulting from the claimed process, claim 15 is unpatentable over Malgat under MPEP §2113.
Regarding claim 16, Malgat teaches forming a combustible heat source comprising carbon, a binding agent, and an ignition aid. Malgat teaches that the binding agent comprises carboxymethyl cellulose and that the ignition aid comprises an alkaline earth metal peroxide such as calcium peroxide. (See [0027] and [0043]). Malgat further teaches heating the formed combustible heat source at about 100 degrees Celsius for about one hour which satisfies heating at a temperature of at least about 90 degrees Celsius for at least about 45 minutes. (See [0128]).
Nakano teaches that polyvinyl alcohol may be used as an organic binder and that it may be used in combination with carboxymethyl cellulose. See [0031].
However, Malgat and Nakano do not explicitly teach that the ratio of percentage by weight of carboxymethyl cellulose to the percentage by weight of polyvinyl alcohol is at least about 2:1. The binder ratio is a result effective variable because Malgat teaches that binder type and binder quantity affect the physical integrity and performance of the combustible heat source. (See [0042] and [0043]).
According to MPEP §2144.05, optimization of a result effective variable would have been obvious to one of ordinary skill in the art. Determining the relative proportions of two known binders to achieve desired heat source integrity would therefore have been considered routine experimentation. Accordingly it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify Malgat in view of Nakano to include a binder ratio of at least 2:1.
Regarding claim 17, Malgat and Nakano teach the use of CMC and polyvinyl alcohol as described above. However neither Malgat nor Nakano explicitly teaches a ratio of CMC to polyvinyl alcohol that is less than or equal to about 3:1. As noted above, binder ratios are result effective variables. Adjusting binder proportions within an operable range to obtain desirable mechanical and processing characteristics would have been routine optimization according to MPEP §2144.05. Applicant has not demonstrated that the upper limit of 3:1 is critical.
Therefore it would have been obvious for one of ordinary skill in the art to adjust the ratio of the known binders to a value less than or equal to about 3:1.
Regarding claim 18, Malgat teaches that the combustible heat source preferably comprises between about 4 percent and about 10 percent by weight of carboxymethyl cellulose and more preferably between about 5 percent and about 9 percent by weight of the binding agent. See [0043]. The claimed range of 3 percent to 8 percent by weight overlaps the preferred range taught by Malgat. Selecting a value within an overlapping or encompassed range is considered obvious in the absence of evidence of criticality or unexpected results. See MPEP §2144.05. Therefore it would have been obvious to select a CMC content falling within the claimed range of 3 to 8 percent based on the teachings of Malgat.
Regarding claim 19, Nakano teaches the use of polyvinyl alcohol as an organic binder and Malgat teaches that binder amounts may be varied to achieve desired physical characteristics of the combustible heat source. (See Malgat [0042], [0043], and Nakano [0031]).
However neither reference explicitly teaches the claimed range of 0.5 to 2 percent by weight of polyvinyl alcohol. Because binder quantity is a known result effective variable, determining the amount of PVA to include when combining PVA with CMC would have been a matter of routine optimization. See MPEP §2144.05. Applicant has not provided evidence that the claimed range is critical. Therefore the claimed amount of between 0.5 and 2 percent by weight of polyvinyl alcohol would have been obvious.
Regarding claim 20, Malgat teaches that the combustible heat source comprises 150 grams of calcium peroxide in a total mixture of 300 grams. See [Malgat Table 1]. This corresponds to 50 percent by weight of the alkaline earth metal peroxide which falls squarely within the claimed range of 30 to 55 percent by weight. Therefore the limitation of claim 20 is taught by Malgat.
Regarding claim 21, Malgat teaches that the combustible heat source comprises 135 grams of carbon in a total of 300 grams which equals 45 percent by weight. See [Malgat Table 1]. This is within the claimed range of 35 to 50 percent by weight. Therefore the limitation of claim 21 is taught by Malgat.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A KESSIE/Examiner, Art Unit 1747