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 Claims
Claims 1-5, 7-16, 22, 24-29, and 62 are pending. Claims 1-5 are withdrawn. Claim 7, 15, and 24 are amended.
Response to Amendment
The Response of 01/29/2026 is entered. In addition to claims 7, 15, and 24, claims 28 and 62 are identified as “Currently Amended”. Applicant Representative was contacted on 03/05/2026 and confirmed that claims 28 and 62 should have the claim status as “Previously Presented” and these claims will be treated as such.
The amendment to claim 15 overcomes the rejection under 35 USC 112, and thus this rejection is withdrawn.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
Applicant amended claims 7 and 24 to require that the connector comprises heating material that is heatable by penetration with a varying magnetic field. The amendments to the claims require any changes to the grounds of rejections made in the rejections below.
Applicant amended claims 7 and 24 to include a new additional limitation, “the connector comprises heating material that is heatable by penetration with a varying magnetic field”. Applicant argues that this limitation is not taught by either reference, and that the prior art is silent on the technical advantages provided by incorporating the heating material into the connector, simplifying and reducing the number of components of the susceptor arrangement/consumable.
This argument is not persuasive, see reproduced drawings and corresponding machine translation below:
PNG
media_image1.png
417
1344
media_image1.png
Greyscale
PNG
media_image2.png
238
1247
media_image2.png
Greyscale
Morkes discloses a susceptor arrangement that anticipates the invention of claims 7 and 24.
Morekes discloses that heating material disclosed in figure 3 can be produced from a single material, where the weak points are formed by cut outs. Thus, the connector is formed of the same heating material throughout, which may be inductively heated. This anticipates the newly added limitation of claim 7 and 24. A technical advantage need not be taught for an anticipatory reference, however the advantage suggested by Applicant is one that has been found obvious by legal precedent, and would not be a basis to argue against an obviousness rejection absent unexpected results, see MPEP 2144.04 V. B. Making Integral. These arguments are not persuasive.
Mokes also shows in Fig 4 a susceptor arrangement similar to Fig 3, affixed to a carrier:
PNG
media_image3.png
415
1339
media_image3.png
Greyscale
PNG
media_image4.png
388
1258
media_image4.png
Greyscale
Examiner found it would be obvious to use improve the carrier of Morkes to include an additional susceptor, for the advantages of having two susceptors in contact, the advantages of having two susceptors layers described in Mironov which teaches a technique of using a first susceptor and second susceptor in immediate proximity to provide accurate temperature control, ([0015]).
Applicant faults this combination on three grounds:
Applicant argues the making of the modification would not be known to one of ordinary skill in the art, ([pg 8-9 carry over paragraph]),
Applicant argues that the teaching of Mironov is narrow, and does not render obvious the modification as described by Examiner, ([pg 9 1st full paragraph]),
Applicant argues that Mironov teaches away from the combination, ([pg 9 2nd full paragraph])
Regarding point 1, the method of making the susceptor arrangement is not claimed, and the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981)
Morkes discloses the basic susceptor arrangement of claims 7 and 24. Mironov teaches that this first susceptor material may be any suitable material, ([0011]). Mirnov’s requirements are compatible with Morkes disclosure regarding the first susceptor material. Mironov teaches a method of applying a second susceptor material to the first susceptor material, without any pronounced heating characteristic, but selected to have a Curie temperature that corresponds to a predefined maximum desired heating temperature of the first susceptor material and explains there may be an advantage of having the first and second susceptor materials in immediate proximity, ([0013]). Mironov teaches that the second susceptor material may be applied to the first susceptor material in a number of ways, ([0021]). With the first susceptor material in hand, as disclosed by Morkes, one of ordinary skill in the art could reasonably appliey the second susceptor layer to the carrier layer. This second susceptor layer, provided as part of the a carrier of Morkes, is then assembled as part of the susceptor arrangement and provides the advantages of temperature control, the motivation taught in Mironov for making the combination.
Regarding point 2, Applicant argues that the preferences taught by Mironov limit the reference.
The rejection suggests making the first susceptor layer according to Morkes, and that it would be obvious to modify the carrier layer, according to the teachings of Mironov, to have the second layer of susceptor material, [0021]. Paper backed carrier layers are well known in the art. Modifying the carrier of Morkes to have the second susceptor of Mironov is considered obvious.
Regarding point 3, Applicant argues Mironov teaches away from the combination. Applicant’s reliance upon Mironov’s preferred embodiments as teaching away from modifications to the disclosure of Morke 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.
Morkes anticipates a single susceptor layer and a carrier without a susceptor component. Mironov teaches two susceptors in close proximity. The Examiner found it obvious to modify the carrier of Morkes to include the second susceptor of Mironov, such that the susceptor arrangement of Morkes is layered onto the second susceptor of the modified carrier. None of the arguments made by Applicant teach away from such an arrangement.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 7-13, 15-16, 22, 24-29, and 62 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morke (EP 3552500 A1) (English Machine Translation relied upon).
Regarding claim 7, Morke discloses:
a susceptor arrangement for use in a method of manufacturing a consumable for use with a non-combustible aerosol provision device, ([0002]-[0003], [0005]), the susceptor arrangement comprising first and second susceptor portions and a connector joining the first and second susceptor portions to each other, wherein the first and second susceptor portions are spaced apart from each other by the connector, ([0024]-[0028] Fig 1-4), wherein the connector comprises heating material that is heatable by penetration with a varying magnetic field, 7).
PNG
media_image1.png
417
1344
media_image1.png
Greyscale
PNG
media_image2.png
238
1247
media_image2.png
Greyscale
Morekes discloses that heating material disclosed in figure 3 can be produced from a single material, where the weak points are formed by cut outs. Thus, the connector and susceptors are formed of the same heating material throughout, which may be inductively heated. This anticipates the limitation requiring the connector comprises heating material heatable by penetration with a varying magnetic field.
Regarding claim 8, Morke discloses the susceptor arrangement of claim 7, the connector comprises a weakened region of the susceptor arrangement, ([0026] Fig 3).
Regarding claim 9, Morke discloses the susceptor arrangement of claim 8, the susceptor portions are integrally formed with the weakened region, ([0027] the heating strip is manufactured from a single material).
Regarding claim 10, Morke discloses the susceptor arrangement of claim 9, the susceptor arrangement comprises at least one further susceptor portion and at least one further connector, wherein the susceptor arrangement is arranged such that a repeating sequence of susceptor portion followed by connector followed by susceptor portion is present, (Fig 2-4).
Regarding claim 11, Morke discloses the susceptor arrangement of claim 7, the connector comprises a carrier to which the susceptor portions are affixed, ([0028] the sheathing as depicted acts as a carrier, and may be a cellulose layer (paper), a film, or the like; Fig 4).
Regarding claim 12, Morke discloses the susceptor arrangement of claim 11, the susceptor arrangement comprises at least one further susceptor portion and wherein the first susceptor portion, the second susceptor portion and at least one further susceptor portion are affixed to the carrier, ([0028] Fig 4).
Regarding claim 13, Morke discloses the susceptor arrangement of claim 11, the susceptor portions are spaced apart from one another on the carrier, and wherein the carrier comprises a weakened region between the susceptor portions, ([0028] the sheathing (carrier) has a weakened layer structure in the connection area Fig 4).
Regarding claim 15-16, Morke discloses the susceptor arrangement of claim 11. Moke further discloses that the carrier is free from heating material that is heatable by penetration with a varying magnetic field, (0028] disclosing the carrier may be a cellulose material (paper)).
Regarding claim 22 and 24-27, Morke discloses the susceptor arrangement of claim 7. Morke discloses an assembly for use in a method of manufacturing a consumable for use with a non-combustible aerosol provision device, the assembly comprising: the susceptor arrangement of claim 7; and aerosol-generating material in thermal contact with the susceptor arrangement; wherein the assembly is dividable by a process comprising dividing the connector and the aerosol-generating material, ([0029]-[0031] Fig 5, depicting the connector portion extending to one end of the aerosol generating material).
Regarding claim 28, Morke discloses the consumable arrangement of claim 24, the or each susceptor portion is at least partially embedded in the aerosol-generating material, ([0024] the process describing introducing the susceptor assembly into the tobacco material, where it is folded together with a crimped tobacco sheet, anticipating the limitation of at least partially embedding the susceptor material into the aerosol generating material).
Regarding claim 29, Morke discloses the consumable arrangement of claim 24, the or each susceptor portion is substantially coaxial with a central axis of the consumable, ([0024] the susceptor arrangement is introduced centrally, see also Fig 5),
Regarding claim 62, Morke the consumable arrangement of claim 24. Morke discloses a non-combustible aerosol provision device for causing heating of the aerosol generating material of the consumable to volatilize at least one component of the aerosol generating material, wherein the device comprises a heating zone for receiving the consumable and a magnetic field generator for generating a varying magnetic field for penetrating the susceptor portion of the consumable, when the consumable is in the heating zone, thereby to cause heating of the aerosol generating material. ([0002]-[0003]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morke (EP 3552500 A1) (English Machine Translation relied upon) as applied to claim 11 above, and further in view of Mironov et al. (US 2019/0008210 A1).
Regarding claim 14, Morke discloses the susceptor arrangement of claim 11. Moke discloses that the carrier may be a cellulose layer (paper), a film, or the like; Fig 4). Moke is silent as to whether or not the carrier additionally comprises a heating material heating material that is heatable by penetration with a varying magnetic field.
Mironov teaches an aerosol generating article with susceptor arrangement, ([0002]), and thus is within the Applicant’s field of endeavor. Mironov teaches that a susceptor arrangement may comprise a layered arrangement of two susceptors, ([0013]), with one susceptor optimized for heating efficiency and the second susceptor to provide temperature control, ([0013]-[0015]). The first susceptor is preferably iron, or an iron alloy, such as steel, but may also be a non-magnetic material such as aluminum, ([0015]-[0018]), the first susceptor and the second susceptor material are in intimate contact, ([0020]), and the intimate contact between the first susceptor material and the second susceptor material may be made by any suitable means, ([0021]).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have found it obvious to modify Morke according to the teachings of Mironov, to incorporate a second susceptor in intimate contact with the heating material of Morke. Morke discloses a first carrier material. Mironov teaches a second susceptor material. In particular, it would be obvious modify the carrier of Morke to include the second susceptor material of Mironov. This arrangement was part of the Non-Final Rejection of 08/29/2025. Mironov teaches that any method of providing intimate contact between the two susceptors is acceptable. One of ordinary skill in the art would be aware of arrangements of carriers comprising foils and have found it obvious to incorporate the second susceptor in a layered arrangement, with the susceptor of Morke in intimate contact with the second susceptor of Mironov, provided as part of a carrier with a cellulose backing. One of ordinary skill in the art would have the requisite skill to modify the carrier of Morke to include the second susceptor of Mironov, and then layer the heating material of Morke onto the modified carrier, such that the second susceptor was layered in between the heating material and carrier of Morke, ensuring intimate contact between the first and second susceptors. The motivation to do so is obvious, to provide temperature control to avoid overheating the aerosol generating substrate, taught by Mironov. One of ordinary skill in the art would have reasonably expected that the layered arrangement would provide the same benefits disclosed by Mironov, in modified Morke.
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.
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, 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.
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.
/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747