diididDETAILED 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 Claims
Claims 1-4, 8-11, 20, 25-28, 31, and 34-38 are pending. Claims 3, 31 and 34 are withdrawn. Claims 5-7. 12-19, 21-24, 29-30, and 32-33 are canceled. Claims 1 and 35 are currently amended.
Response to Amendment
The Response of 02/04/2026 is entered. The amendments to the Specification overcome the objections to the Specification, and thus those objections are withdrawn. The cancelation of claim 14 renders the objection and rejections to claim 14 under 35 USC 112 moot, and thus those objections and rejections are withdrawn.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Regarding claim 35, Applicant argues that no Markush group is presented. The list of alternatives for the material is found not to be a formal Markush group and absent the formal language required by the MPEP, the claimed selection comprising at least one material from a list of alternatives is not considered indefinite. The 35 USC 112b rejection of claim 35 is withdrawn.
Applicant introduces a new term into claim 1, “non-metallic” sheet material. This term is not found in the Specification. Thus, an objection is made to the Specification, and the claimed subject matter has been rejected based on the incorporation of new matter.
Applicant argues that Sutton teaches away from an arrangement where the smokeable material may be arranged directly on the metal foil of a carrier that is a paper backed foil carrier. Applicant is selecting preferred embodiments of Sutton, and asserting these preferred embodiments teach away from the claimed arrangement, which does not meet the legal standard for teaching away.
Reviewing Sutton, under the broadest disclosure of the invention, there is no requirement that the carrier position the metal foil away from the aerosol generating substrate. Sutton prefaces this discussion with, “in some embodiments”. There is no discussion in the reference suggesting that the foil must be oriented away from the aerosol generating substrate, such that other embodiments where the aerosol generating substrate would not be supported by the carrier if it were placed on the foil surface.
While one might fairly suggest that Sutton teaches a preferred orientation, this is insufficient to support a legal argument that Sutton teaches away from alternate orientations. Applicant’s reliance upon preferred embodiments as teaching away is misplaced. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments, I. Patents Are Relevant As Prior Art For All They Contain.
Reviewing Sutton thoroughly, no evidence was found to suggest that an alternative orientation would not work. There was no active discouragement regarding such an orientation. One of ordinary skill in the art would expect the amorphous substrate of Batista would adhere directly to the foil because Batista discloses the solid substrate may be deposited on the surface of the carrier in the form of a sheet, foam, gel, or slurry where the carrier is a metallic foil, ([0040]). While Sutton discloses a paper backed foil, one of ordinary skill in the art would expect that the aerosol generating substrate would adhere to the foil of Sutton, when Batista discloses that it would adhere when applied directly to a metallic foil without a paper backing. Applicant teaching away argument is unpersuasive.
Additionally, Sutton discloses a different embodiment where an adhesive is used to adhere the aerosol generating material to the carrier, ([pg 3 lines 9-10]). One of ordinary skill in the art would be capable of further modifying Batista with an adhesive if one was required, but there is no evidence that this is required.
This appears to be simple substitution of a paper backed metallic foil for the foil of Batista. “The Federal Circuit’s discussion in ICON also makes clear that if the reference does not teach that a combination is undesirable, then it cannot be said to teach away. An assessment of whether a combination would render the device inoperable must not ignore the modifications that one skilled in the art would make to a device borrowed from the prior art. Id. at 1382, 83 USPQ2d at 1752.” MPEP 2143 B. Simple Substitution of One Known Element for Another to Obtain Predictable Results, Example 5.
But even if changes might be required based on the substitution one carrier for the other, such as the use of an adhesive, if the reference teaches those changes or one of ordinary skill in the art would reasonably be capable of making those changes, then the modified product is still be considered obvious. Here, Batista discloses the substrate may be disposed on the foil surface, and thus the disclosures together suggest that placing the aerosol generating substrate on the metal foil surface of the foil backed carrier would work.
Specification
The disclosure is objected to because of the following informalities:
The letters “nd” appear at least 37 times throughout the present Specification, their meaning is unclear. It is also unclear what the ‘ after “lid” signifies, as used in the present Specification.
Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “non-metallic” sheet material does not appear in the Specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 9-11, 20, and 25-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “non-metallic” sheet material as part of the substrate. The present Specification clearly supports the substrate may comprise a sheet material, ([pg 2 line 2]). The materials described for the support may form the substrate when combined with aerosolizable material, ([pg 20-21 lines 31-2]), thus disclosures in the Specification that are materials for the support element may also be considered materials for the substrate. The Specification discloses several species of sheet material that are reasonably considered to be “non-metallic”, ([pg 7 lines 28-31],[pg 23 lines 18-21]), but the disclosure does not appear to support their selection on the basis that the sheets are “non-metallic”. Because the Specification does not refer to the sheet materials as “non-metallic” or otherwise apprise one of ordinary skill in the art to select sheet materials on the basis of being “non-metallic”, the selection and identification of sheet materials on the basis of being “non-metallic” is rejected as new matter, despite the support for some sheet materials for use with a metal foil which are reasonably considered non-metallic sheet materials.
Claims 2-4, 9-11, 20, and 25-28 are rejected under 35 USC 112(a) because they include the new matter incorporated into claim 1, based on their dependency.
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.
Claim(s) 1-2, 4, 9-10, 14, 20, 26-28, 35, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2017/0150755 A1), and further in view of Sutton et al. (WO 2016/156495 A2).
Claim 1 requires:
An article for use in a non-combustible aerosol provision system. This is disclosed by Batista, ([0006]), which describes a removable aerosol forming cartridge (meeting the requirement of an article) which is for use with an electrically operated aerosol generating system, electrically aerosol generating systems understood to meet the limitation of a non-combustible aerosol provision system.
The article is further required to comprise a support element with at least one cavity. Batista discloses a support element with at least one cavity, ([0076]-[0077]). This limitation is considered to be met because the aerosol forming cartridge may comprise at least one cavity in which the aerosol forming substrate is held is considered to meet the requirement of a support element (the base layer) with at least one cavity with a configuration where the cavity is designed to hold the aerosol forming material as well as disclosing holding the aerosol forming material within the cavity).
The article is further required to comprise an aerosol generating material disposed within the at least one cavity. Batista also meets this limitation ([0076]-[0077]). Batista describes the cavity is designed to hold the aerosol forming material which is considered to meet a configuration where the aerosol forming material is held within the cavity.
The aerosol generating material is required to comprise an amorphous solid material. Batista discloses this limitation, ([0057]). Batista discloses that the aerosol forming material may be a gel substrate, considered to meet the limitation of an amorphous solid.
The aerosol generating material is required to be provided on a substrate. Batista discloses this limitation ([0040]). Batista discloses that the aerosol generating material may be provided on a carrier. A carrier is considered to meet the limitation of the Applicant substrate because Applicant uses these terms interchangeably, see present Specification (pg 2 lines 1-2]).
The substrate is required to comprise sheet materials. Batista meets this limitation, ([0040]). Batista discloses that the aerosol generating material may be provided on a thermally stable carrier, which one of ordinary skill would immediately envisage includes materials such as paper and metallic foil, since these materials are disclosed as suitable for a tubular carrier (understood to be a sheet formed in the shape of a tube).
Batista also discloses that the aerosol generating material may be provided directly on the surface of a metal foil, ([0040]).
Batista does not explicitly disclose that the substrate (understood to be the same as a carrier, see above), comprises a non-metallic sheet material and a metallic foil, where the aerosol generating material is provided on the metallic foil and the metallic foil is arranged between the aerosol generating material and the non-metallic sheet material.
Sutton teaches an article for use with an apparatus for heating smokeable material comprising a carrier and a smokeable material arranged on the carrier, ([pg 1 lines 18-25]), and thus is considered within the inventor’s field of endeavor. Sutton teaches a variety of carriers which meet the limitations of sheet materials that are non-metallic and metallic foils, and contemplates their combination, ([pg lines 7 17-19]). Sutton by teaching that the carrier may comprise a metal foil (such as aluminum) in an open format, while disclosing the carrier may be paper, a non-metal foil, a polymer, a plastics material, a combination of foil (not particularly specified to be metallic or non-metallic) and paper, or “the like”, one of ordinary skill in the art would reasonably expect that any combination of these are being disclosed, either as a single layer or a combination of layers, to form a carrier.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of Batista according to the teachings of Sutton. This is the simple substitution of one known element for another to obtain predictable results. MPEP 2143 I. Examples of Rationales, (B). Batista contains an article, including the limitation requiring the aerosol generating material be provided on the metallic foil, which differed from the claimed device by the substitution of a substrate (carrier) where carrier comprises of both a non-metallic sheet material and a metallic foil. Sutton teaches carriers that include non-metallic sheet materials laminated to a metallic foil. The prior art functions of both the article of Batista, and the carriers of Sutton, and their functions were known in the art. One of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable. One of ordinary skill in the art would have been motivated to make this substitution for the obvious reason that adding additional layers to the substrate (carrier) would increase its stability as a carrier, in terms of strength and rigidity.
Regarding claim 2 and 27, modified Batista discloses the article according to claim 1, wherein the at least one cavity comprises an aperture extending entirely through a thickness of the support element, ([0075] one or more apertures in the base layer).
Regarding claim 4, modified Batista discloses the article according to claim 1, with the support element comprising a base layer, ([0077]), and a carrier (substrate) ([0040]).
Regarding claim 9, modified Batista discloses the article according to claim 1, wherein the aerosol generating material comprises an amorphous solid material having regions of different composition within the same body of material, ([0058] the first aerosol forming substrate may comprise a plurality of aerosol forming substrates, and the plurality of aerosol forming substrates may be stored together on the base layer).
Regarding claim 10 and 28, modified Batista discloses the article according to claim 1, comprising a plurality of discrete, spaced-apart cavities comprising aerosol generating material, ([0077] describing a plurality of cavities holding a plurality of aerosol forming substrates, [0058] disclosing the separate storage of incompatible substances within the same cartridge, where each of the aerosol generating materials are heated separately).
Regarding claim 20, modified Batista discloses the article according to claim 1, wherein at least one of: the amorphous solid material is a dried hydrogel, or the amorphous solid material further comprises a gelling agent, an aerosol generating agent, an active substance, or a flavorant, ([0039] disclosing the use of a binder (gelling agent), aerosol generating agent (aerosol former), tobacco (active substance, and flavorants).
Regarding claim 26, modified Batista discloses the article according to claim 1, the support element comprises a substantially planar body, (0033]-[0035]).
Claim 35, requires:
An article for use in a non-combustible aerosol provision system. This is disclosed by Batista, ([0006]), which describes a removable aerosol forming cartridge (meeting the requirement of an article) which is for use with an electrically operated aerosol generating system, electrically aerosol generating systems understood to meet the limitation of a non-combustible aerosol provision system.
The article is further required to comprise a support element with at least one cavity. Batista discloses a support element with at least one cavity, ([0076]-[0077]). This limitation is considered to be met because the aerosol forming cartridge may comprise at least one cavity in which the aerosol forming substrate is held is considered to meet the requirement of a support element (the base layer) with at least one cavity with a configuration where the cavity is designed to hold the aerosol forming material as well as disclosing holding the aerosol forming material within the cavity).
The article is further required to comprise an aerosol generating material disposed within the at least one cavity. Batista also meets this limitation ([0076]-[0077]). Batista describes the cavity is designed to hold the aerosol forming material which is considered to meet a configuration where the aerosol forming material is held within the cavity.
The aerosol generating material is required to comprise an amorphous solid material. Batista discloses this limitation, ([0057]). Batista discloses that the aerosol forming material may be a gel substrate, considered to meet the limitation of an amorphous solid.
The article requires that the material of the support element comprises at least one of paper, paperboard or cardboard. Batista meets this limitation, ([0040]). Batista discloses that the aerosol generating material may be provided on a thermally stable carrier, which one of ordinary skill would immediately envisage includes materials such as paper and metallic foil, since these materials are disclosed as suitable for a tubular carrier (understood to be a sheet formed in the shape of a tube).
Batista also discloses that the aerosol generating material may be provided directly on the surface of a metal foil, ([0040]).
The material of the support element is required to be resistant to oil or grease penetration. The present Specification discloses a variety of requirements for the support element by which this functional limitation may be met. One way this limitation may be met is a laminar construction of a fluid impermeable layer with another layer, (pg 8 lines 4-6).
Batista does not explicitly disclose the material of the support element is resistant to oil or grease penetration.
Sutton teaches an article for use with an apparatus for heating smokeable material comprising a carrier and a smokeable material arranged on the carrier, ([pg 1 lines 18-25]), and thus is considered within the inventor’s field of endeavor. Sutton teaches a variety of carriers which meet the limitations of sheet materials that are non-metallic and metallic foils, and contemplates their combination, ([pg lines 7 17-19]). Sutton by teaching that the carrier may comprise a metal foil (such as aluminum) in an open format, while disclosing the carrier may be paper, a non-metal foil, a polymer, a plastics material, a combination of foil (not particularly specified to be metallic or non-metallic) and paper, or “the like”, one of ordinary skill in the art would reasonably expect that any combination of these are being disclosed, either as a single layer or a combination of layers, to form a carrier which functions as a support element for aerosol generating material.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified the invention of Batista according to the teachings of Sutton. This is the simple substitution of one known element for another to obtain predictable results. MPEP 2143 I. Examples of Rationales, (B). Batista contains an article, including the limitation requiring the aerosol generating material be provided on a carrier of metallic foil which functions as a support element, which differed from the claimed device by the substitution of a substrate (carrier) where carrier comprises of both a non-metallic sheet material and a metallic foil, and also functions as a support element. Sutton teaches carriers that include non-metallic sheet materials laminated to a metallic foil. The prior art functions of both the article of Batista, and the carriers of Sutton, and their functions were known in the art. One of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable. One of ordinary skill in the art would have been motivated to make this substitution for the obvious reason that adding additional layers to the substrate (carrier) would increase its stability as a carrier, in terms of strength and rigidity.
The requirement of the material of the support element being resistant to oil or grease penetration is met because the support element of modified Batista taught by Sutton comprises metallic foil and paper, which would have this property as evidenced by the Applicant’s own disclosure (pg 8 lines 4-6), metallic foil being understood to be fluid impermeable which includes impermeability to fluids such as grease and oil, the impermeable property providing resistance to penetration by these fluids.
Regarding claim 38, modified Batista discloses the article according to claim 35. Modified Batista discloses the base layer and the carrier layer each comprise paper, (Batista [0040]), (Sutton [pg 7 lines 17-19]).
Claims 8, 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2017/0150755 A1) and Sutton et al. (WO 2016/156495 A2) as applied to claim 35 above, and further in view of Deforel et al. (WO 2020/074535 A1).
Regarding claims 8, modified Batista discloses the article according to claim 35. Modified Batista discloses a base layer with cavities and a carrier layer, each of which may comprise a sheet of foil backed with paper, as described in the rejection of claim 35 above.
Batista discloses that homogenized tobacco paper may have an aerosol former content of between 5-30%, comprise tobacco dust, fines, or other tobacco by products, binders, fibers, flavorants, and fillers, formed by a casting process, ([0039]). Batista does not disclose the thickness of the homogenized sheet of tobacco paper.
Sutton discloses the carrier (a support element) the paper of the carrier may be reconstituted tobacco paper, ([pg 8 lines 20-21]).
Deforel teaches an aerosol generating substrate comprising plant material and tobacco particles, that is heated rather than combusted, ([pg 1 lines 3-7]), and is thus within the inventor’s field of endeavor. Deforel teaches a homogenized plant material, which is similar to the homogenized plant material described by Batista, and in the form of one or more sheets of homogenized plant material, ([pg 9 lines 34-35]). Deforel teaches that the homogenized plant material comprises one or more binders, and may comprise other additives including fibers, aerosol formers, humectants, flavorants, and fillers, ([pg 8 lines 10-13]). Deforel teaches that the aerosol former content may be between 5-30%, ([pg 9 lines 25-26]). Deforel teaches that the sheet may have a thickness of between 100-600 µm, 150-300 µm, and most preferably between 200-250 µm, ([pg 10 lines 1-3]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Batista to use the homogenized tobacco paper of Deforel, to form the carrier and base layers of modified Batista, as described in the rejection of the claims above . Because both homogenized tobacco sheets comprise virtually identical ingredient profiles, one of ordinary skill would have had a reasonable expectation of success in substituting the sheet of Deforel for the sheet of Batista. Deforel teaches a range of thickness for each sheet of homogenized tobacco paper include a range of thickness of 200-250µm, which would be obvious to select because this range is a preferred range. Modified Batista discloses using a first sheet for the base layer and a second sheet for the carrier layer. Measuring a thickness of the support element consisting of the two sheets of homogenized sheets of tobacco paper yields between 400-500µm, rendering the claimed range obvious.
Regarding claim 36, modified Batista discloses the article according to claim 35. Batista does not disclose the grammage of the sheet material.
Modified Batista discloses using a sheet of homogenized tobacco paper as taught by Deforel, as discussed in the rejection of claim 8.
Deforel teaches that the sheet material may have a grammage of between 100-300g/m2, ([pg 10 lines 9-10]), overlapping and rendering the range of 180-210 GSM obvious.
It would have been obvious to one or ordinary skill in the art, before the effective filing date of the claimed invention, to have formed the homogenized sheet material with grammage within the range taught by Deforel. One of ordinary skill in the art would have had a reasonable expectation of success in choosing values from center portion of this range, which overlaps with and renders the claimed range obvious.
Regarding claims 37, modified Batista discloses the article according to claim 35. Modified Batista discloses the sheet material has a thickness of between 200-250µm, see the rejection of claim 8 above.
Claims 11 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Batista (US 2017/0150755 A1) and Sutton et al. (WO 2016/156495 A2) as applied to claim 1 above, and further in view of Counts et al. (US 5,369,723).
Regarding claim 11 and 25, modified Batista discloses the article according to claim 1. Batista further discloses that the aerosol generating material may comprise an amorphous solid material having regions of different composition within the same body of material, ([0058] the first aerosol forming substrate may comprise a plurality of aerosol forming substrates, and the plurality of aerosol forming substrates may be stored together on the base layer). Batista does not disclose that the aerosol generating material is perforated.
Counts teaches an article comprising an aerosol generating substrate that generates aerosol, ([Col 2 lines 56-59]). The aerosol generating substrate may be a sheet, foam, gel, or cast slurry, ([Col 4 lines 2-5]). Counts teaches that aerosol and flavor generation may be controlled by patterning the sheet surface, and increasing the porosity of the aerosol generating substance by perforating the sheet.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aerosol generating material of Batista by perforated the aerosol generating material, as taught by Counts, corresponding to the different regions of aerosol compositions on the base layer of Batista, to independently control and influence the aerosol and flavor generation from the different compositions. One of ordinary skill in the art would have found it reasonably predictable to increase the perforation density corresponding to aerosol generating material type to produce more aerosol flavor generation from that aerosol generating material. The difference in perforation density, while intended to alter the flavor and aerosol generation of discrete regions of the aerosol generating material, would necessarily demarcate these regions.
Conclusion
Applicant's amendment 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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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