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
Claims 1-3, 7-10, 13-14, and 21-22 are pending and are subject to this Office Action.
Response to Amendment
The Examiner acknowledges Applicant’s supplemental response filed on 12/02/2025 containing amendments and remarks to the claims.
The objection to claims 8 and 10 has been withdrawn due to claim amendments.
Response to Arguments
Applicant’s arguments, see pages 5-11, filed 12/02/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered and are persuasive. However, upon further consideration, a new ground(s) of rejection is made in view of newly found art. As this is a new ground of rejection and the claim has not been amended, this action is non-final.
The following is a modified rejection.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 9-10, 13, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (WO2020/008510, citations will refer to the English equivalent US2021/0120867) in view of Ballesteros (WO2019/105750).
Regarding claim 1, Sakurai teaches:
A heat-not-burn aerosol generating article (article 10, figure 1, [0060]) comprising: an aerosol generating substrate comprising nicotine ((filler 11 that includes a tobacco rod part [0060]) and at least about 10% aerosol former (the aerosol generating base material in the filler is preferably 10 wt. % or more [0075]) comprising glycerine (the type of aerosol generating base material may include glycerin [0074]).
A mouthpiece segment (filter part 15) comprising a plug of cellulose acetate (the filter part 25 may be a material filled with a fiber bundle containing acetate tow, cellulose [0066]).
A hollow tube between the mouthpiece segment and the aerosol generating substrate (paper tube part 14, [0065], figure 1.)
A first paper wrapper (first paper wrapper 12) and a second paper wrapper (second paper wrapper 13) circumscribing the aerosol generating substrate ([0060], figure 1).
The first paper wrapper having a thickness of more preferably 30 um or more and 100 um or less [0050]. The range taught by the prior art overlaps the claimed thickness of about 60 micrometers and is therefore prima facie obvious.
The first paper wrapper in contact with the aerosol generating substrate (as wrapper 12 wraps the filler 11, [0060], figure 1).
The second paper wrapper joining the aerosol generating substrate to the mouthpiece segment (the tobacco rod part and the mouthpiece part are connected using a second wrapping paper 13 [0060], figure 1).
Sakurai does not appear to disclose wherein the hollow tube is a hollow cellulose acetate tube.
Ballesteros, directed to an aerosol-generating article, teaches:
A cooling element 107 that may comprise a hollow tube and may be formed of paper or cellulose acetate (page 14, last paragraph). As such, the cooling element is a hollow cellulose acetate tube.
As shown in figure 2, the cooling element 107 spaces the filter 109 from the aerosolizable material 10.
The cooling element 107 of Ballesteros therefore functions as an aerosol-cooling passage which is the same function of the paper tube part 14 of Sakurai.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the hollow tube of Sakurai be cellulose acetate as taught by Ballesteros because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP § 2144.07.
Regarding claim 2, Sakurai further teaches wherein the first paper wrapper separates the second paper wrapper from the aerosol generating substrate (as shown in figure 1).
Regarding claim 3, Sakurai further teaches wherein the first paper wrapper extends an entire length of the aerosol generating substrate (as shown in figure 1).
Regarding claim 9, Sakurai further teaches wherein the aerosol generating substrate comprises homogenized tobacco material ([0071]).
Regarding claim 10, Sakurai further teaches wherein the homogenized tobacco material comprises about 5 weight % or more of an aerosol former ([0076], aerosol generating base material). The range taught by the prior art overlaps the claimed range of from about 5 percent to about 30 percent of an aerosol-former and is therefore prima facie obvious.
Sakurai does not appear to disclose whether the weight % is on a dry weight basis or a wet weight basis. However, it would be obvious to one of ordinary skill in the
art that it is either one or the other and to try the aerosol former amount on a dry weight
basis as choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in
the art. See MPEP § 2143, E.
Regarding claim 13, Sakurai further teaches an aerosol generating device (electric heating device 20) comprising a heating element (heater 24) configured to heat the aerosol generating substrate ([0082], figure 2).
Regarding claim 21, Sakurai teaches that the second paper wrapper wraps the mouthpiece part and part of filler 11 (see figure 1) and the first paper wrapper wraps the filler 11 ([0060], figure 1).
Sakurai does not appear to disclose wherein the second paper wrapper wraps the entire filler 11, and thus extends an entire length of the heat-not-burn aerosol generating article. However, Sakurai further teaches that the tobacco rod part and the mouthpiece part are connected by the second wrapping paper which is the same as or different from the wrapping paper that wraps the filler [0060].
As such, it would be obvious for one having ordinary skill in the art that if the second paper wrapper is the same as the wrapping paper that wraps the filler (i.e. the first paper wrapper), then it could also extend over the entire filler 11, and thus extend an entire length of the heat-not-burn aerosol generating article, to be the same as the first paper wrapper.
Regarding claim 22, Sakurai further teaches where the first wrapper has a permeability of 15 CORESTA units or less and 1 CORESTS unit or more [0044]).
The range taught by the prior art overlaps the claimed range of from about 1 to about 10 CORESTA units and is therefore prima facie obvious.
Claim(s) 7-8 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakurai (WO2020/008510, citations will refer to the English equivalent US2021/0120867) in view of Ballesteros (WO2019/105750) as applied to claims 1 and 13 above, and further in view of Reevell (WO2019/110747, cited previously).
Regarding claims 7-8, Sakurai further teaches wherein the aerosol generating substrate defines a substantially cylindrical shape (as show in figure 1). Sakurai is silent to the diameter of the aerosol generating substrate.
Reevell, directed to an aerosol-generating article, teaches:
The rod of aerosol-generating substrate may have an external diameter of between 6 millimeters and 8 millimeters (page 10, last paragraph).
Therefore, as Sakurai is silent to the size/diameter of the aerosol generating substrate, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of aerosol generating substrate sizes/diameters that one of ordinary skill could apply to Sakurai with a reasonable expectation of success in the aerosol generating substrate being suitably sized for use in a smoking article.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill to make the aerosol-generating substrate have a diameter of between 6 millimeters and 8 millimeters as taught by Reevell, because both Sakurai and Reevell are directed to aerosol generating articles, and this merely involves incorporating a known diameter of an aerosol generating substrate to a similar aerosol generating article to yield predictable results.
The range taught by the prior art overlaps the claimed range of about 6.8 mm to about 7.1 mm and is therefore prima facie obvious.
Modified Sakurai having a first paper wrapper thickness of 30 micrometers or more and 100 micrometers or less, as discussed with claim 1 previously, and the aerosol generating substrate having a diameter of between 6 millimeters and 8 millimeters, would yield a ratio of paper thickness to aerosol generating substrate diameter of 1:266 to 1:60. The range taught by the prior art overlaps the claimed range of bout 1:120 to about 1:40 and is therefore prima facie obvious.
Regarding claim 14, Sakurai further teaches that the heater element is an electrically resistive heat element [0085], and the heating element surrounds the article ([0082], figure 2).
Sakurai does not appear to disclose wherein the heating element is configured to be inserted into the aerosol generating substrate.
Reevell, directed to an aerosol-generating article, teaches:
The heater element is preferably a heater blade that is adapted to be inserted into the rod of aerosol-generating substrate so that the heater blade heats both of the plugs from the inside (page 11, last paragraph).
Alternatively, the heater element may be an external heater that at least partially surrounds the plugs of homogenized tobacco material and heats them both from the outside (page 4, last paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to substitute the heating element of Sakurai to be a heater blade that is configured to be inserted into the aerosol generating substrate as taught by Reevell, because both Sakurai and Reevell are directed to aerosol generating articles that are electrically heated by external devices, Reevell teaches this allows the substrate to be heated from the inside, and this merely involves simple substitution of one known type of aerosol generating article heater for another aerosol generating article heater to a similar aerosol generating system to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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, Philip Louie can be reached at (571) 270-1241. 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.
/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755