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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1-28-2026 has been entered.
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 1-28-2026.
Claim 1 is amended, claim 8 is canceled.
Claims 1-5 and 9-12 are currently examined.
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 1-3, 5, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (CA3093152A1), in view of Arndt (US 20210345659A1), and Reevell (WO2019110747A1).
Regarding Claim 1, Lee teaches an aerosol-generating article comprising:
a first portion including a crimped piece of paper impregnated with an aerosol generating element (aerosol generator 110, see also FIG 1A and page 8 paragraph 2), although Lee fails to explicitly disclose the crimped aerosol sheet is a plurality of sheets it would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the crimped aerosol sheet to a plurality of crimped aerosol sheets. The mere duplication of parts, without any new or unexpected results, would be obvious to one of ordinary skill in the art. See MPEP § 2144.04 VI B.
a second portion including a tobacco element (see FIG 1A, second portion 120, see also page 9 second paragraph);
a third portion including a cooling element (see cooler 130, page 10 last 2 paragraphs and FIG 1A); and
a fourth portion including a filter element (see mouthpiece 140, see FIG 1A and page 12 paragraph 2-4), wherein
the first portion, the second portion, the third portion, and the fourth portion are sequentially arranged along a longitudinal direction of the aerosol-generating article (see FIG 1A).
the aerosol- generating element includes at least 99 wt% of glycerin with respect to a total weight of the aerosol-generating element (Lee discloses the aerosol generating element may include at least one of glycerin (page 8 line 5), therefore Lee discloses the aerosol generator may be selected as only glycerin which when only selection would result in an aerosol generating element of 100% glycerin which anticipates the claim.
Lee teaches a plurality of crimped paper pieces as set forth above, however, Lee is silent to suitable alignment orientations for the crimped paper pieces and thus fails to explicitly disclose the plurality of crimped paper pieces are aligned in a predetermined direction in the first portion
However, Arndt teaches the plurality (strips, inherently plurality, [0180]) of crimped paper [0190] pieces are aligned in a predetermined direction in the first portion ([0180], substantially aligned in the longitudinal direction). Arndt teaches that its advantageous to have the aerosol generating element in strips because the relative amount of tobacco or clove can be adjusted easily by adjusting the number of strips.
Thus, 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 aerosol generating element of Lee to have a plurality of crimped pieces of paper aligned in a predetermined direction in the first portion, in order to adjust the relative amount of tobacco or clove by adjusting the number of strips in the plurality of strips.
However, Lee is silent to linear density.
Reevell teaches a similar aerosol generating article with a plurality of portions that include crimped paper and aerosol generating element in those portions and teaches suitable length and suitable linear density for portions of aerosol generating articles and teaches the length of the first portion is 3mm – 8 mm (page 10 lines 26) and diameter is 5mm to 12 mm (page 10 lines 35-36). Which gives a cross-sectional area of 19.63mm2 to 113.1 mm2. Reevell teaches a density of 0.1 mg/mm3 and 0.85 mg/mm3 for the second portion (page 6 lines 20-30), which together teaches a linear density range from 1.96 mg/mm to 96.1 mg/mm for the second portion. Reevell teaches the second portion is 10-20 percent higher in density than the first portion (page 6 lines 17-19). Thus, Reevell teaches the first portion has a density range of 10-20% less than the density range of the second portion.
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the aerosol generating element of Lee to have an aerosol generating element density of about 1.57 mg/mm to about 86.52 mg/mm as taught by Reevell because both Lee and Reevell are directed to crimped aerosol generating elements used in smoking devices, Lee is silent in regards to suitable linear density for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable linear density for a similar smoking article, Reevell teaches known linear density of an aerosol generating element for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
Therefore, Reevell teaches the first portion has a linear density of about 1.57 mg/mm to about 86.52 mg/mm, which overlaps with the claimed range of the first portion includes 3 mg/mm to 10 mg/mm of the plurality of crimped paper pieces based on a length of the first portion. 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 2, modified Lee teaches the claim limitations as set forth above. Additionally, Lee teaches the aerosol generator 110 includes a crimped sheet (page 14 line 4) and also discloses a length of the aerosol generator 110 which holds the crimped sheet is within a range of 4 mm to about 12 mm (see page 9, lines 2-3), which falls within the claimed range of 5 mm to about 15mm in one direction. Although Lee fails to explicitly disclose suitable orientation for the crimped sheet within the aerosol generator segment, as set forth above, Lee is modified with Reevell and teaches suitable orientation of crimped sheets (See FIG 2), therefore it would be obvious to modify the placement of the crimped sheets of Lee to be oriented as taught by Reevell. Therefore, the crimped sheets would have a length as long as the aerosol generator section of Lee of 4 mm to about 12 mm which falls with in the claimed range of 5 mm to 15 mm in one direction (e.g., the longitudinal direction).
Additionally, as set forth above, the aerosol generator of Lee is modified by the aerosol generating
Regarding Claim 3, modified Lee teaches the claim limitations as set forth above. However, Lee is silent to suitable thicknesses for the piece of paper and specifically is silent to the piece of paper has a thickness of about 100 μm to about 300 μm.
However, Reevell discloses suitable thicknesses for crimped materials and discloses the crimped pieces have a thickness of about 100 μm to about 300 μm.
Specifically, Reevell discloses the piece of crimped sheet has a thickness of about 150 micrometers to about 250 micrometers (see page 10 lines 7-8, which falls within the claimed range).
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the paper of Lee to have a thickness of about 150 micrometers to about 250 micrometers as taught by Reevell because both Lee and Reevell are directed to crimped aerosol generating element used in smoking devices, Lee is silent in regards to suitable thicknesses for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Reevell teaches known thicknesses of crimped material for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
Regarding Claim 5, modified Lee teaches the claim limitations as set forth above. However, Lee is silent to a suitable linear density of the paper.
However, Reevell teaches the first portion includes 5 mg/mm to 30 mg/mm of the plurality of crimped material based on a length of the first portion.
Specifically, Reevell teaches the length of the first portion (or second portion) is 3mm – 8 mm (page 10 lines 26) and diameter is 5mm to 12 mm (page 10 lines 35-36). Which gives a cross-sectional area of 19.63mm2 to 113.1 mm2. Reevell teaches a density of 0.1 mg/mm3 and 0.85 mg/mm3 for the second portion (page 6 lines 20-30), which teaches a linear density range from 1.96 mg/mm to 96.1 mg/mm for the second portion. Reevell teaches the second portion is 10-20 percent higher in density than the first portion (page 6 lines 17-19). Thus, Reevell teaches the first portion has a density range of 10-20% less than the density range of the second portion.
Therefore, Reevell teaches the first portion has a density of about 1.57 mg/mm to about 86.52 mg/mm, which overlaps with the claimed range of the first portion includes 5 mg/mm to 30 mg/mm of the plurality of crimped paper pieces based on a length of the first portion. 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).
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the paper of Lee to have a density of about 1.57 mg/mm to about 86.52 mg/mm as taught by Reevell because both Lee and Reevell are directed to crimped aerosol generating elements used in smoking devices, Lee is silent in regards to suitable density for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable density for a similar smoking article, Reevell teaches known density of crimped material for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
Regarding Claim 10, modified Lee teaches the claim limitations as set forth above. Additionally Lee teaches an aerosol generating system comprising: an aerosol-generating article according to claim 1 (See rejection of claim 1 above); and
an aerosol generating device comprising an accommodating space configured to accommodating the aerosol-generating article (see FIG 6, the article from claim 1 is part 620 and is inserted in the space as shown in the figure),
a heating element configured to heat the aerosol-generating article (see page 19 paragraph 2 and 3, the heater heats the article), and
a battery configured to supply power to the heating element (FIG 9 shows further elements of the device and that it can include a battery 920 which supplies power to the heater see page 27 paragraph 2).
Regarding Claim 11, modified Lee teaches the claim limitations as set forth above. Additionally, Lee teaches the heating element is arranged to surround the accommodating space, see e.g., FIG 8 which shows how the heating element 810 is arranged to surround the accommodating space.
Regarding Claim 12, modified Lee teaches the claim limitations as set forth above. Additionally, Lee teaches the aerosol generating device is configured to heat at least a portion of the first portion and at least a portion of the second portion (see e.g., FIG 1A which illustrates the heat conductor around the first and second portions, see also FIG 5A-5C, when the heat conductor portions of the aerosol generating device are placed into the heater, at least a portion of the first portion and second portion are heated, see also page 17 paragraphs 1-3).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (CA3093152A1), Arndt (US 20210345659A1), and Reevell (WO2019110747A1 as applied to claim 1 above, and in view of Parcevaux (FR2772237A1), English machine translation relied upon.
Regarding Claim 4, modified Lee teaches the claim limitations as set forth above. However, Lee is silent to the basis weight of the piece of paper. However, Parcevaux teaches the piece of paper has a basis weight of 20 g/m2 to 100 g/m2 (See Parcevaux claim 2 and 3).
Specifically, Parcevaux teaches the crimped paper has a grammage of less than 60g/m2, 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).
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the aerosol generating element of Lee to have a grammage of less than 60g/m2 as taught by Parcevaux because both Lee and Parcevaux are directed to crimped paper aerosol generating elements used in smoking devices, Lee is silent in regards to suitable grammage for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable grammage for a similar smoking article, Parcevaux teaches grammage of an aerosol generating element for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
Claims 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (CA3093152A1), Arndt (US 20210345659A1), and Reevell (WO2019110747A1 as applied to claim 1 above, and further in view of Reevell (WO2019110747A1) and Sakurai (WO2020115898A1), English machine translation relied upon.
Regarding Claim 9, modified Lee teaches the claim limitations as set forth above. However Lee is silent to roundness and hardness of the cross sectional area.
However, Reevell teaches a roundness of 90 % or more (a substantially circular cross section, page 11 lines 3-4, which approaches 100% and 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).)
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the paper of Lee to have a roundness that approaches 100% as taught by Reevell because both Lee and Reevell are directed to similar smoking devices, Lee is silent in regards to suitable roundness for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable roundness for a similar smoking article, Reevell teaches known roundness a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
However, both Lee and Reevell are silent to a suitable hardness of the horizontal cross section of the first portion and further that the horizontal cross section has a hardness of 90 % or more.
However, Sakurai teaches about suitable hardnesses of smoking articles and teaches a horizontal cross section of the first portion (tobacco aerosol generating portion) has a hardness of 90 % or more (see page 6, 1st new paragraph, 80-95%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking article of Lee to have a hardness of 80-95% as taught by Sakurai because both Lee and Sakurai are directed to similar smoking devices, Lee is silent in regards to suitable hardness for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable hardness for a similar smoking article, Sakurai teaches known hardness for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. See MPEP 2144.
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks, and most specifically the claim amendments, filed 1-28-2026, with respect to the rejections of claims 1 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection of record of claim relying on Lee and Arndt has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lee (CA3093152A1), Arndt (US 20210345659A1) and Reevell (WO2019110747A1 as set forth above.
Applicant asserts on page 5:
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In response the Examiner regrets the miscommunication in the interview and summary. The rejection of record of claim 1 relying on Lee and Arndt is overcome in view of the amendment including the limitations of claim 8 which additionally requires Reevell and accordingly overcomes the rejection of record for claim 1, however a new rejection is set forth above in view of Lee, Arndt, and Reevell.
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755