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 .
Status of the Claims
This office action is in response to Applicant’s amendment filed on 12/12/2024.
Claims 18-37 are pending and are subject to this Office Action.
Claims 18, 21-23, 30 and 33 are amended.
Response to Amendment
The examiner withdraws objections to the claims for informalities due to Applicant’s amendment to the claims filed on 12/12/2024.
The examiner withdraws rejection of claims 13-23 under U.S.C. 112(b) as being indefinite due to Applicant’s amendment to the claims filed 12/12/2024.
Response to Arguments
Applicant's arguments, see pages 6-12, filed 12/12/2024 with respect to claims 18-26, 28-30 and 33-35 have been fully considered but they are not persuasive.
On pages 6-7, the Applicant argues that Nordskog does not teach the paper thickness to tobacco substrate ratio as claimed, as Nordskog teaches the smoking article diameter, not the substrate diameter.
The Examiner disagrees. The substrate diameter of Nordskog may be determined by subtracting the paper thickness from the smoking article diameter, producing a substrate diameter of about 6.4 mm to about 6.8 mm. This substrate diameter would have a corresponding paper thickness to tobacco substrate ratio of about 1:342 to about 1:41, which is both about 1:344 to about 1:43 as stated in the rejection and overlaps the claimed range of about 1:120 to about 1:40, rendering the claimed range obvious. Thus, the rejection of claims 18-26, 28-30 and 33-35 is maintained.
On pages 7-11, the Applicant argues that Wilke and Nordskog are not “similar products”, and therefore cannot be combined as prior art references.
The examiner disagrees. Regardless of the components within the paper, Nordskog teaches a paper that is known in the smoking article technology to be used to enclose smoking components, and is therefore considered analogous art to Wilke. Furthermore, the rejection does not modify Wilke to have the exact paper of Nordskog, but merely applies a paper thickness that is known in the art, where Wilke is silent to a paper thickness, and as such, it would be obvious of one having ordinary skill in the art to apply the paper thickness of Nordskog to the paper of Wilke with a reasonable expectation of success. Nordskog is therefore applicable to Wilke and the rejection of claims 18-26, 28-30 and 33-35 is maintained.
Applicant's argument, see page 11, filed 12/12/2024 with respect to claim 27 has been fully considered but it is not persuasive.
On page 11, the Applicant argues that Metrangolo does not teach the deficiencies of the rejection of claim 18, upon which it depends, and as such, the rejection should be reconsidered.
However, as discussed above, the Examiner disagrees, and had maintained the rejection of claim 18. Thus, the rejection of claim 27 is maintained.
Applicant's arguments, see pages 11-12, filed 12/12/2024 with respect to claims 31, 36 and 37 have been fully considered but they are not persuasive.
On pages 11-12, the Applicant argues that Kim does not teach the deficiencies of the rejection of claim 18, upon which it depends, and as such, the rejection should be reconsidered.
However, as discussed above, the Examiner disagrees, and had maintained the rejection of claim 18. Thus, the rejections of claims 31, 36 and 37 are maintained.
Applicant's arguments, see page 12, filed 12/12/2024 with respect to claim 32 has been fully considered but it is not persuasive.
On page 12, the Applicant argues that Kwak does not teach the deficiencies of the rejection of claim 18, upon which it depends, and as such, the rejection should be reconsidered.
However, as discussed above, the Examiner disagrees, and had maintained the rejection of claim 18. Thus, the rejection of claim 32 is maintained.
The following is a modified rejection based on Applicant’s amendments 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 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 18-26, 28-30, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Wilke et al. (US 20170055575 A1) in view of Nordskog et al. (US 20170000188 A1).
Regarding claim 18, Wilke teaches an aerosol generating substrate element (Fig. 4, article 1) comprising:
an aerosol generating substrate (material 20) comprising homogenized tobacco material (smokable material 21 may be homogenized tobacco; [0051], [0059]) that may comprise other materials or humectants such as glycerine (glycerol) ([0051]);
and a paper layer circumscribing the aerosol generating substrate (cover 10 comprising wrapper 12, which may be paper; [0074]),
wherein at least 80% of the aerosol generating substrate’s circumference is circumscribed by less than two paper layers (Fig. 4; [0074]),
Wilke does not specify (I) a glycerine content of the aerosol generating substance; (II) a paper layer thickness, and (III) a ratio of paper thickness to tobacco substrate diameter.
Nordskog, directed to a smoking article, teaches an aerosol generating substrate element (aerosol-generating segment 51) comprising:
an aerosol generating substrate comprising homogenized tobacco material (Fig. 1, substrate material 55; [0059], [0083]) and a glycerine content of between about 10% and about 30% ([0087] specifies about 5 to about 50 weight percent glycerin (glycerine) for substrates comprised of reconstituted (homogenized) tobacco), the claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious;
and a paper layer circumscribing the aerosol generating substrate (overwrap material 64; [0070]), the paper layer may have a thickness in a range from about 78 micrometers to about 160 micrometers ([0095] teaches a thickness of about 0.025 to about 0.15mm), the claimed thickness range overlaps the range taught by the prior art and is therefore considered prima facie obvious,
Nordskog describes that the typical substrate element has a circumference of 20-27mm ([0073]). The smoking article would have a corresponding 6.4-8.6mm diameter. Thus, the ratio of paper thickness to tobacco substrate diameter would range from about 1:344 to about 1:43.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by:
using a glycerine content as taught by Nordskog because both Wilke and Nordskog are directed to aerosol generating substrates, Wilke is silent to a specific amount of glycerine and one of ordinary skill in the art would be motivated to look to a similar aerosol generating substrate for suitable and known amounts of glycerine in the art, and this merely involves applying a known teaching to a similar device to yield predictable results;
applying the paper thickness as taught by Nordskog because both Wilke and Nordskog are directed to aerosol generating substrates with circumscribing paper layers, Wilke is silent to a specific thickness of the paper layer and one of ordinary skill in the art would be motivated to look to a similar aerosol generating product for suitable and known thicknesses of paper layers in the art, and this merely involves applying a known teaching to a similar product with a reasonable expectation of success; and
preparing the substrate element with the diameter as taught by Nordskog such that the ratio of paper thickness and substrate overlaps the claimed range because both Wilke and Nordskog are directed to aerosol generating substrates, Wilke is silent in regards to a specific diameter and one of ordinary skill in the art would be motivated to look to a similar aerosol generating product for typical and known sizes of aerosol substrates in the art, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 19, Nordskog teaches a thickness of about 0.025 to about 0.15mm ([0095]). The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 20, Wilke teaches that the paper layer 10 does not extend beyond the end of the aerosol generating substrate (Fig. 4-5; [0074]).
Regarding claim 21, Wilke teaches that at least 95% of the aerosol generating substrate’s circumference is circumscribed by less than two paper layers (Fig. 4-5; [0074]).
Regarding claim 22, Wilke teaches at least 90% of the aerosol generating substrate’s circumference is circumscribed by less than two paper layers that do not extend beyond a length of the aerosol generating substrate (Fig. 4-5; [0074]).
Regarding claim 23, Wilke teaches at least 90% of the aerosol generating substrate’s circumference is circumscribed by less than two paper layers that do not extend beyond a length of the aerosol generating substrate (Fig. 4-5; [0074]), and thus are along a length of the substrate.
Regarding claim 24, Wilke teaches that the aerosol generating substrate defines a cylindrical shape ([0073]; Fig. 4).
Regarding claim 25, Nordskog describes that the typical substrate element has a circumference of 20-27mm ([0073]). The smoking article would have a corresponding 6.4-8.6mm diameter. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 26, Nordskog, directed to a smoking article, teaches an aerosol generating substrate comprising homogenized tobacco material (Fig. 1, substrate material 55; [0059], [0083]) and a glycerine content of between about 10% and about 30% ([0087] specifies about 5 to about 50 weight percent glycerin (glycerine) for substrates comprised of reconstituted (homogenized) tobacco). Wilke does not teach that the homogenized tobacco material comprises from about 1 percent to about 5 percent of a binder.
Nordskog teaches that for an aerosol generating substrate comprising homogenized tobacco material and a glycerine content of between about 10% and about 30%, the substrate will further comprise a binder content from about 0 to about 10 weight percent ([0087]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by using a homogenized tobacco material comprised of about 0 to about 10 weight percent binder as taught by Nordskog because both Wilke and Nordskog are directed to aerosol generating substrates, Wilke is silent to a specific composition and amount of binder, and one of ordinary skill in the art would be motivated to look to a similar aerosol generating substrate for suitable and known amounts of substrate components in the art, and this merely involves applying a known teaching to a similar device to yield predictable results. The claimed range of binder amount overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 28, Wilke teaches that the aerosol generating substance comprises a metallic induction heating element (elements 22, [0059-0060]).
Regarding claim 29, Wilke teaches that the aerosol generating substance comprises a plurality of metallic induction heating elements (elements 22, [0059-0060]).
Regarding claim 30, Wilke teaches that the aerosol generating substrate element is configured to heat the aerosol generating substrate directly without transmitting heat to the aerosol generating substrate through the paper layer ([0058-0059]).
Regarding claim 33, Nordskog teaches a paper thickness of about 0.025 to about 0.15mm ([0095]) and a circumference of 20-27mm ([0073]), which corresponds to a paper thickness to tobacco substrate diameter in a range from about 1:344 to about 1:43. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 34, Nordskog teaches a paper thickness of about 0.025 to about 0.15mm ([0095]). The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 35, Wilke teaches that the aerosol generating substance comprises a plurality of metallic induction heating elements (elements 22, [0059-0060]).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Wilke and Nordskog, as applied to claim 25 above, in view of Metrangolo et al. (US 20150107610 A1).
Regarding claim 27, Wilke does not teach that the sheets of homogenized tobacco are crimped.
Metrangolo, directed to a tobacco substrate for use in an aerosol generating article, teaches the use of crimped sheets of homogenized tobacco ([0037]) to provide improved fill value of an aerosol material [0003] while avoiding the downsides of tobacco shreds ([0008]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by crimping the homogenized tobacco sheets as taught by Metrangolo because both modified Wilke and Metrangolo are directed to reconstituted tobacco materials for heating, Metrangolo teaches that crimping sheets of tobacco improve fill value, and this involves applying a known technique to a similar aerosol generating substrate to yield predictable results.
Claims 31, 36, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Wilke and Nordskog, as applied to claims 18, 33, and 34 above, in view of Kim et al. (KR 100844445 B1; hereinafter referring to the English translation provided).
Regarding claim 31, Wilke does not teach that the paper layer forms a laminate with an aluminum layer.
Kim, directed to a heated cigarette, teaches a paper layer (Fig. 5, cigarette paper 422; page 6, ¶ 6) comprised of laminated paper (paper 422a) and aluminum foil (aluminum foil 422b) wrapped around an aerosol generating substrate (cigarette portion 420) to improve thermal stability and strength of the paper (page 6, ¶ 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by laminating the paper layer with aluminum as taught by Kim because both Wilke and Kim are directed to paper-encased aerosol generating substrates, Kim teaches that laminating paper layer with aluminum foil improves strength and stability of the paper, and this involves applying a known technique to a similar aerosol generating substrate to yield predictable results.
Regarding claims 36 and 37, Wilke teaches that the aerosol generating substrate comprises a plurality of metallic induction heating elements (elements 22, [0059-0060]).
Wilke does not teach that the paper layer forms a laminate with an aluminum layer.
Kim, directed to a heated cigarette, teaches a paper layer (Fig. 5, cigarette paper 422; page 6, ¶ 6) comprised of laminated paper (paper 422a) and aluminum foil (aluminum foil 422b) wrapped around an aerosol generating substrate (cigarette portion 420) to improve thermal stability and strength of the paper (page 6, ¶ 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by laminating the paper layer with aluminum as taught by Kim because both Wilke and Kim are directed to paper-encased aerosol generating substrates, Kim teaches that laminating paper layer with aluminum foil improves strength and stability of the paper, and this involves applying a known technique to a similar aerosol generating substrate to yield predictable results.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Wilke and Nordskog, as applied to claim 18 above, in view of Kwak et al. (KR 100636287 B1).
Regarding claim 32, Wilke teaches that the aerosol generating substrate element is configured to be heated via heating elements within the substrate material. Wilke does not teach that the aerosol generating substrate element is configured to receive a resistive heating blade inserted into the aerosol generating substrate.
Kwak, directed to an electrical heater for heating a tobacco substrate (Fig. 3-4), teaches a reusable resistive heating blade (heating member 30 comprising electrical resistor 33; pages 3-4) for receiving an aerosol generating substrate (heatable tobacco 2) for improved heating control and thermal efficiency and lower manufacturing costs (page 4, ¶ 7).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Wilke by replacing the heat elements of with a reusable resistive heating blade as taught by Kwak because both Wilke and Kwak are directed to heated aerosol generating products, Kwak teaches a reusable heating element that improves heating and reduces costs, and this involves applying a known teaching to a similar device to yield predictable results.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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