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 .
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 9/12/2025
Claims 1, 10, and 17-19 are amended.
Claims 2 and 16 are canceled.
Claims 1, 4, 6-8, 10, 13-15, and 17-19 are presently examined.
Drawings
The drawings are objected to because the abbreviation “FIG” should be used in the drawing names (in the place of “Figure”) as required under 37 CFR 1.84(u)(1). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 4-8, 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO2014006078A1).
Regarding Claim 1, Malgat teaches a combustible heat source for an aerosol-generating article, the combustible heat source comprising (see page 20 table 1):
carbon (page 9 line 3);
an alkaline earth metal peroxide ignition aid (calcium peroxide, magnesium peroxide, barium peroxide, etc., page 13 line 4-6); and
a binding agent comprising
a combination of carboxymethyl cellulose and hydroxypropyl cellulose (page 5 line 14-17, combinations thereof, page 5 line 17)
Malgat teaches the combustible heat source comprises between about 25 percent by weight of carbon and about 60 percent by weight of carbon
Specifically, Malgat teaches the combustible heat source comprises at least about 35 percent by weight of carbon (see page 9 line 5), which falls within the claimed range of at least about 25 percent by weight of carbon.
Malgat teaches 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.
Specifically, Malgat teaches 20 to 50 percent the alkaline earth metal peroxide ignition aid (see page 13 line 1), which falls in the claimed range of between about 15 percent by weight and about 65 percent by weight of the alkaline earth metal peroxide ignition aid. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the carboxymethyl cellulose is present in the combustible heat source in an amount of between about 1.5 percent by weight and about 15 percent by weight. Specifically, Malgat teaches the binding agent is 25-80% by weight of the organic polymeric binding material (page 5 lines 24-25), and teaches the combustible heat source composition is between 2% and 10 percent by weight binding agent (see page 8 lines 3-4), which equates to the combustible heat source is about 0.5% to about 8% by weight organic binder, which overlaps with the claimed range of about 1.5% to about 15%. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the combustible heat source comprises between about 0.2 percent by weight and about 6 percent by weight of the hydroxypropyl cellulose (HPC).
Specifically, Malgat teaches the organic binder portion of the composition can include a combination of CMC and HPC. (See page 5 lines 12-17). Therefore, as explained above it would be obvious to modify the organic binder of Malgat, to include a mixture of CMC and HPC as taught by Malgat on page 5, second new paragraph. Malgat teaches the mixture of organic binders can be selected in any combination, and it would be obvious for the organic binder to include the combinations to be a mixture in any percentage, e.g., such as equal contributions of each. Therefore, it would be obvious to a person of ordinary skill in the art to modify the organic binder and to select CMC and HPC as the organic binder of Malgat in any ratio such at 1:1.
Thus, CMC and HPC are selected for the organic binder which is taught by Malgat to make up the combustible heat source of about 0.5% to about 8% by weight. At a 1:1 ratio the CMC and HPC would each respectively take up half of the weight of the organic binder.
Thus Malgat teaches that CMC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which overlaps with the claimed range of about 1.5% to about 15% by weight CMC (In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).) and Malgat teaches HPC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which falls within with the claimed range of 0.2% to about 6% HPC.
Regarding Claim 4, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the alkaline earth metal peroxide ignition aid is calcium peroxide (page 11 line 4, calcium peroxide).
Regarding Claim 6, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the combustible heat source comprises between about 20 percent by weight and about 60 percent by weight of the alkaline earth metal peroxide ignition aid. (see page 13 line 1)
Specifically, Malgat teaches 20 to 50 percent the alkaline earth metal peroxide ignition aid (see page 13 line 1), which falls in the claimed range of between about 20 percent by weight and about 60 percent by weight of the alkaline earth metal peroxide ignition aid.
Regarding Claim 7, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the combustible heat source comprises at least about 3 percent by weight of the binding agent.
Specifically, Malgat teaches the combustible heat source comprises between 2 percent and 10 percent by weight of the binding agent (see page 8 lines 3-4), which falls within the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).)
Regarding Claim 8, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the combustible heat source comprises between about 4 percent by weight and about 15 percent by weight of the binding agent.
Specifically, Malgat teaches the combustible heat source comprises between 2 percent and 10 percent by weight of the binding agent (2-10 percent overlaps with between 4 and 10 percent by weight of the binding agent. (see page 8 lines 3-4), In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 10, Malgat teaches the claim limitations as set forth above. Additonally Malgat teaches the combustible heat source comprises between about 0.75 percent by dry weight and about 5 percent by weight of the hydroxypropyl cellulose.
Specifically, Malgat teaches the binding agent is 25-80% by weight of the organic polymeric binding material (page 5 lines 24-25), and teaches the combustible heat source composition is between 2% and 10 percent by weight binding agent (see page 8 lines 3-4), which equates to the combustible heat source is about 0.5% to about 8% by weight organic binder, and further as explained in the rejection of Claim 1 above; Malgat teaches HPC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which overlaps with the claimed range of about 0.75% to about 5%. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 13, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the combustible heat source comprises between about 30 percent by weight and about 55 percent by weight of carbon.
Specifically, Malgat teaches the combustible heat source comprises at least about 35 percent by weight of carbon (see page 9 line 5), which falls within the claimed range of between about 30 percent by weight and about 55 percent by weight of carbon. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 14, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches one or more carboxylate burn salts (See claim 1, at least one carboxylate burn salt).
Regarding Claim 15, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches an aerosol-forming substrate downstream of the combustible heat source (see claim 13, “an aerosol forming substrate downstream of the combustible heat source”).
Regarding Claim 17, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches a combustible heat source for an aerosol-generating article, the combustible heat source comprising:
carbon (page 9 line 3);
an alkaline earth metal peroxide ignition aid (calcium peroxide, magnesium peroxide, barium peroxide, etc., page 13 line 4-6); and
a binding agent comprising a combination of carboxymethyl cellulose and at least one additional cellulose ether; (page 5 line 16-17, a combination of carboxymethyl cellulose and at least one additional cellulose ether are taught)
Malgat teaches the combustible heat source comprises between about 25 percent by weight of carbon and about 60 percent by weight of carbon
Specifically, Malgat teaches the combustible heat source comprises at least about 35 percent by weight of carbon (see page 9 line 5), which falls within the claimed range of at least about 25 percent by weight of carbon.
Malgat teaches 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.
Specifically, Malgat teaches 20 to 50 percent the alkaline earth metal peroxide ignition aid (see page 13 line 1), which falls in the claimed range of between about 15 percent by weight and about 65 percent by weight of the alkaline earth metal peroxide ignition aid. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the carboxymethyl cellulose is present in the combustible heat source in an amount of between about 1.5 percent by weight and about 15 percent by weight. Specifically, Malgat teaches the binding agent is 25-80% by weight of the organic polymeric binding material (page 5 lines 24-25), and teaches the combustible heat source composition is between 2% and 10 percent by weight binding agent (see page 8 lines 3-4), which equates to the combustible heat source is about 0.5% to about 8% by weight organic binder, which overlaps with the claimed range of about 1.5% to about 15%. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the combustible heat source comprises between about 0.2 percent by weight and about 6 percent by weight of the hydroxypropyl cellulose (HPC).
Specifically, Malgat teaches the organic binder portion of the composition can include a combination of CMC and HPC. (See page 5 lines 12-17). Therefore, as explained above it would be obvious to modify the organic binder of Malgat, to include a mixture of CMC and HPC as taught by Malgat on page 5, second new paragraph. Malgat teaches the mixture of organic binders can be selected in any combination (page 5 paragraph 2), and therefore it would be obvious for a person of ordinary skill in the art to modify the organic binder to include the combinations to be a mixture in any percentage, e.g., such as equal contributions of each. Therefore, it would be obvious to a person of ordinary skill in the art to modify the organic binder and to select CMC and HPC as the organic binder of Malgat in any ratio such at 1:1.
Thus, CMC and HPC are selected for the organic binder which is taught by Malgat to make up the combustible heat source of about 0.5% to about 8% by weight. At a 1:1 ratio the CMC and HPC would each respectively take up half of the respective weight of the organic binder (which overlaps with the claimed ratio the ratio of the percentage by weight of CMC to the percentage by weight of HPC is at least about 1:1; In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists).
Thus, Malgat teaches that CMC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which overlaps with the claimed range of about 1.5% to about 15% by weight CMC (In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I)) and Malgat teaches HPC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which falls within with the claimed range of 0.2% to about 6% HPC.
Regarding Claim 18, modified Malgat teaches the claim limitations as set forth above. Additionally, although Malgat does not explicitly disclose the ratio of the percentage by weight of carboxymethyl cellulose to the percentage by weight of hydroxypropyl cellulose in the combustible heat source; Malgat teaches the organic binder can comprise both HPC and CMC in any combination thereof, see page 5 paragraph 2. Therefore it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the HPC:CMC combination to include both HPC and CMC in any percentage of each respective ingredient (e.g., from 0-100% by weight of each). Accordingly, it would also be obvious to a person of ordinary skill in the art to modify the ratio of organic binders to include a ratio such as about 3:2 of CMC to HPC as claimed with a reasonable expectation of success.
Regarding Claim 19, Malgat discloses a combustible heat source for an aerosol-generating article, the combustible heat source comprising:
carbon (page 9 line 3);
an alkaline earth metal peroxide ignition aid (calcium peroxide, magnesium peroxide, barium peroxide, etc., page 13 line 4-6); and
a binding agent comprising a combination of carboxymethyl cellulose and hydroxypropyl cellulose (page 5 line 12-17);
Malgat teaches the combustible heat source comprises between about 25 percent by weight of carbon and about 60 percent by weight of carbon
Specifically, Malgat teaches the combustible heat source comprises at least about 35 percent by weight of carbon (see page 9 line 5), which falls within the claimed range of at least about 25 percent by weight of carbon.
Malgat teaches 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.
Specifically, Malgat teaches 20 to 50 percent the alkaline earth metal peroxide ignition aid (see page 13 line 1), which falls in the claimed range of between about 15 percent by weight and about 65 percent by weight of the alkaline earth metal peroxide ignition aid. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the carboxymethyl cellulose is present in the combustible heat source in an amount of between about 1.5 percent by weight and about 15 percent by weight. Specifically, Malgat teaches the binding agent is 25-80% by weight of the organic polymeric binding material (page 5 lines 24-25), and teaches the combustible heat source composition is between 2% and 10 percent by weight binding agent (see page 8 lines 3-4), which equates to the combustible heat source is about 0.5% to about 8% by weight organic binder, which overlaps with the claimed range of about 1.5% to about 15%. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat teaches the combustible heat source comprises between about 0.2 percent by weight and about 6 percent by weight of the hydroxypropyl cellulose (HPC).
Specifically, Malgat teaches the organic binder portion of the composition can include a combination of CMC and HPC. (See page 5 lines 12-17). Therefore, as explained above it would be obvious to modify the organic binder of Malgat, to include a mixture of CMC and HPC as taught by Malgat on page 5, second new paragraph. Malgat teaches the mixture of organic binders can be selected in any combination (page 5 paragraph 2), and therefore it would be obvious for a person of ordinary skill in the art to modify the organic binder to include the combinations to be a mixture in any percentage, e.g., such as equal contributions of each. Therefore, it would be obvious to a person of ordinary skill in the art to modify the organic binder and to select CMC and HPC as the organic binder of Malgat in any ratio such at 1:1.
Thus, CMC and HPC are selected for the organic binder which is taught by Malgat to make up the combustible heat source of about 0.5% to about 8% by weight. At a 1:1 ratio the CMC and HPC would each respectively take up half of the respective weight of the organic binder (which overlaps with the claimed ratio the ratio of the percentage by weight of CMC to the percentage by weight of HPC is at least about 1:1; In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists).
Thus, Malgat teaches that CMC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which overlaps with the claimed range of about 1.5% to about 15% by weight CMC (In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I)) and Malgat teaches HPC comprises about 0.25% by weight to about 4% by weight of the combustible heat source which falls within with the claimed range of 0.2% to about 6% HPC.
the binding agent does not comprise a non-combustible inorganic silicate binder (see page 20 line 18, Malgat discloses the binding agent excludes inorganic silicate binder, which anticipates the limitation.)
Response to Arguments
Applicant's arguments filed 9-12-2025 regarding specifically the 103 rejections have been fully considered but they are not persuasive.
Applicant argues (page 6 of response)
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This is not found persuasive because Applicant argues Malgat teaches away from this combination of binders as claimed however, Malgat teaches the two binders specifically as preferred binders and explicitly teaches their use in combination (see page 5 lines 12-17). Furthermore, no evidence is presented as to how Malgat teaches away from the teachings of Malgat. Additionally, "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).
Applicant argues starting on page 6 of the remarks:
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Applicant argues that this combination claimed is non obvious over Malgat because the combination of the two claimed binders carboxymethyl cellulose and hydroxypropyl cellulose, which are taught by Malgat as set forth above, has unexpectedly improved properties and dramatically reduced degradation of the ignition aid. Examiner appreciates these findings and their advantage, however in response to applicant's argument that the combination of the two claimed binders carboxymethyl cellulose and hydroxypropyl cellulose has unexpectedly improved properties and dramatically reduced degradation of the ignition aid and improves the combustion properties etc, the unexpected results are not found persuasive because the unexpected results shown are not commensurate in scope with the claims.
Regarding the evidence submitted to rebut a prima facie case of obviousness: It is well settled that evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains and that such evidence which is considerably narrower in scope than claimed subject matter is not sufficient to rebut a prima facie case of obviousness. In re Dill, 604 F.2d 1356, 1361, 202 USPQ805, 808 (CCPA 1979). Also see In re Boesch, 617 F.2d at 276, 205 USPQ at 219; In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Rejected claim 1 is significantly broader than examples in specification, and in the arguments which applicant cites as an example of unexpected results and which are limited to a comparison of compositions containing a specific percentage of hydroxypropyl cellulose and the carboxymethyl cellulose as an unexpectedly stable combination of binding agents vs carboxymethyl cellulose alone the evidentiary showing is far from being commensurate in scope with the degree of patent protection sought. For example, the arguments show that 4.7% CMC and 2% HPC significantly reduce the rate of degradation of the ignition aid over CMC alone (see snippet below), however the claims are significantly broader than these percentage findings and include 1.5% to 15% CMC and 0.2 to 6% HPC.
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Further no data is submitted by Applicant regarding the HPC content being unexpected results.
In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (fed. Cir. 1990) ("'[O]bjective evidence of nonobviousness must be commensurate in scope with the claims.'" (quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979) ("The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.").
Applicant argues starting on page 10 of the remarks:
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Essentially Applicant argues that because the composition of Malgat teaches an inorganic binder, that Malgat teaches away from two different organic binders such as CMC and HPC. This is not found persuasive because Malgat teaches the organic binder portion of the composition can include a combination of CMC and HPC. See page 5 lines 12-17. Therefore, as explained above it would be obvious to modify the organic binder composition of Malgat, which is taught to be about 0.5% to about 8% by weight organic binder as set forth above, and includes a mixture of CMC and HPC as taught by Malgat on page 5, second new paragraph (see rejection above). Malgat teaches the mixture of organic binders can be in any combination, and they could be a mixture in any percentage. Therefore, it would be obvious to a person of ordinary skill in the art to modify the organic binder and to select CMC and HPC as the organic binder of Malgat in any ratio of the two taught organic binders CMC and HPC, such at 1:1. The claims as presented do not exclude an inorganic binder, thus Malgat does not teach away from the claims. Modifying the organic portion of the binder of Malgat to be a mixture of CMC and HPC does not teach away from the teachings of Malgat.
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.
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755