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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/05/2025 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 12/05/2025.
Claims 16-33 are pending.
Claims 16, 29, and 31 are amended.
Claims 32-33 are new.
Response to Arguments
Applicant' s arguments, see pages 6-14, filed 12/05/2025, with respect to the rejections of claims 16-31 under 35 U.S.C. 103 have been fully considered and are not persuasive. However, the Applicant’s arguments regarding new claims 32-33 are persuasive and a reasons for allowance is provided below.
The Examiner notes that there is no argument regarding relying upon Zuber to teach the resistance to draw of upstream element which was previously presented in the prior art rejection. Zuber already teaches the resistance to draw of the upstream element can be varied/changed and Zuber could optimize the resistance to draw of the upstream element since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed resistance to draw is critical and has unexpected results. Since the Applicant has not provided an argument explaining the criticality of this resistance to draw or rebutting the reliance of optimization on Zuber, the rejection stands.
On pages 7-8, The Applicant argues that it would not have been obvious to the person of ordinary skill in the art to have considered applying the RTD of Malgat’s plug element to Zuber’s front plug because the RTD during use of the article is important and that the RTD is substantially different prior to use and during use.
The Examiner respectfully does not find the arguments persuasive.
The Examiner notes that the instant invention appears to be directed to the same type of heating device style with a blade/pin that deforms the substrate, and therefore the argument that the resistant to draw during use of a device would be different is not persuasive because the same could be said about the instant invention, that is that the resistance to draw would change during use with the heating device. Since the claim does not explicitly disclose the resistance to draw before use or during use of the device, there is no evidence that Malgat’s resistance to draw does not apply to the claim. Therefore, as currently claimed, Zuber in view of Malgat does indeed make obvious the resistance to draw of the device and the rejection stands.
On page 8, the Applicant argues it would not have been obvious for one of ordinary skill in the art to have considered applying the RTD of Malgat’s plug element to Zuber’s front plug 2 if attempting to arrive at the recited feature in Applicant’s claim 16 of an RTD of the upstream element being from 5 to 80 mmH2O because Zuber has a deformed front plug and Malgat does not so they cannot be used together because Zuber’s front-plug changes during use due to insertion of a heating element unlike in Malgat. The Applicant further argues that Zuber’s front plug is designed to be filled in/plugged up which would therefore increase the RTD.
The Examiner respectfully does not find the Applicant’s arguments persuasive.
First, Malgat is merely relied upon to teach that a front plug can have the resistance to draw claimed and that it is known in the art. Zuber is already considered to make obvious the resistance to draw as detailed in the previous office actions and further provided below. Malgat does not need to teach the front plug has the exact same purpose/design, Malgat is only relied upon to teach the claimed resistance to draw is obvious and known in the art.
Second, Zuber discloses the front-plug defines a hole or slit through which a heating element may be inserted ([0016]) and that the hole may almost exactly match the size and shape of a cross-section of the heating element ([0028]). Therefore, Zuber does not require that the susceptor deforms the front plug and instead teaches a slit in the upstream element which would not change the front-plug of Zuber during the insertion of a heating element. The hole/slit of Zuber is very similar to the hole in the front plug of Malgat and does not affect the combination of references. Therefore the rejection is maintained. Refer to Malgat’s figure 1 provided below.
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Third, Zuber does not teach the front plug “has to be plugged up” as Applicant is arguing. Zuber discloses that the susceptor “may” include an insulating collar 9 which surrounds the susceptor ([0066]) and does not teach the susceptor has to include the insulating collar which “plugs up” the hole. The Examiner further notes that Zuber is already considered to teach the claimed resistance to draw and Malgat is merely relied upon to teach the claimed resistance to draw is not novel. The arguments are not found persuasive and the rejection stands.
On pages 8-9, the Applicant argues that claim 24 overcomes the current rejection because Zuber teaches the upstream element cleans the heating element during removal of the heating element and therefore it would not be obvious to one of ordinary skill in the art to have considered modifying Zuber’s article to include a heater element as part of the article rather than part of the device.
The Examiner respectfully disagrees.
There is no claim language that requires the susceptor as part of the article and not the device. The claim merely recites that there is a susceptor element extending through the aerosol generating substrate and does not specify whether the susceptor element is part of the article or just intended to be pierced by the element. Therefore, as currently claimed, it is unclear if the susceptor element is extending through the article via a device or if it is already within the article and thus the claim having a susceptor extending through the rod is still considered to be taught by Zuber.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24, lines 2-3 is indefinite for reciting “comprising an elongate susceptor element extending in a longitudinal direction through the rod of aerosol-generating substrate” because it is unclear how the susceptor is located within the article. It is unclear whether extending through the rod means the susceptor is within the rod as in claim 32 and as illustrated in the figures provided, or if it just means a susceptor can be inserted through the rod similar as detailed in Zuber. The claim merely recites that there is a susceptor element extending through the aerosol generating substrate and does not specify whether the susceptor element is part of the article or just intended to be pierced by the element. Therefore, for purposes of this examination “comprising an elongate susceptor element extending in a longitudinal direction through the rod of aerosol-generating substrate” will be interpreted as any form of a susceptor extending through the rod of aerosol-generating substrate, such as Zuber’s piercing heating element.
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.
Claims 16-31 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US-20140373856-A1), and further in view of Holford (US-20240188625-A1) and Malgat et al. (US 20190075845 A1, as cited in the IDS dated 08/22/2022).
In regards to claim 16, Zuber, directed to a smoking article with a front-plug and aerosol-generating substrate discloses a smoking article (i.e., aerosol-generating article) for producing an aerosol upon heating ([0002]), the aerosol-generating article comprising:
an aerosol generating substrate gathered into a rod ([0037]) comprising a composition that can be in the form of a gel ([0036]).
the gel composition comprising nicotine (i.e., alkaloid) ([0015]) and an aerosol former such as glycerine ([0033] and [0056]).
A front-plug (i.e., upstream element) upstream and abutting the aerosol-generating substrate (Figure 1 and [0017]).
A downstream section arranged downstream the aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate, wherein the downstream section comprising one or more downstream elements. See Figure 1 annotated by the Examiner provided below.
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Zuber fails to explicitly disclose a gel composition comprising a gelling agent, but it would be obvious to one of ordinary skill in the art that a gel composition would comprising a gelling agent in order for the composition to gel.
Zuber fails to explicitly disclose a gel composition comprising a cannabinoid (I) and a resistance-to-draw of the upstream element between 5 and 80 mm H2O.
In regards to (I), Zuber discloses the substrate may comprise tobacco or non-tobacco volatile flavor compounds, but does not explicitly disclose a gel composition comprising cannabinoids.
Holford, directed to an article for use in a non-combustible aerosol provision system, discloses an aerosol-generating substrate 3 upstream the mouth-end, wherein the substrate comprises a gelling agent, an aerosol-former, nicotine (alkaloid), and an active substance or substances such as cannabinoids ([0176]-[0177], [0220], and [0500]).
Holford further discloses the active substance, such as cannabinoid, is used as a physiologically active material intended to achieve or enhance a physiological response ([0176]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Zuber by modifying the gel composition to additionally comprise cannabinoids, as taught by Holford, because both are directed to similar aerosol-generating articles, Holford teaches cannabinoids can be used to enhance a physiological response ([0176]), and this merely involves modifying a similar composition to include a known component in the art to yield predictable results.
In regards to (II), Zuber does not explicitly disclose an RTD of the upstream element between 5 and 80 mm H2O.
However, Zuber discloses the front-plugs (upstream element) permeability may be varied to help control the resistance to draw through the smoking article ([0025]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the resistance to draw of the upstream element since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed resistance to draw is critical and has unexpected results. In the present invention, one would have been motivated to optimize the resistance to draw of the upstream element motivated by the desire to control the amount and rate of airflow through the article of the device to generate an ideal amount of aerosol.
In addition, Malgat, directed to an aerosol-generating article, discloses an article comprising a plug element located upstream the adjacent aerosol-forming substrate within the rod ([0004]).
Malgat further discloses the plug element comprising a resistance to draw from about 20 to 40 mm H2O ([0015]).
The range disclosed by the prior art overlaps the claimed range of the upstream element having a resistance-to-draw between 5 and 80 mm H2O, and is therefore considered prima facie obvious.
Malgat further discloses the plug element is permeable so that a user may draw air through the rod and that the permeability may be varied to support control of the resistance to draw throughout the aerosol-generating article ([0010]-[0014]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Zuber, by making the upstream element have a resistance-to-draw within the range of 5 and 80 mm H2O, as taught by Malgat, because all are directed to aerosol-generating articles, Malgat teaches a resistance-to-draw is important to control so that the user can draw air through the upstream element ([0012]-[0014]), and this involves applying a known and commonly used resistance-to-draw of a similar upstream element, which is merely silent to a specific resistance-to draw, to yield predictable results.
In regards to claim 17, Zuber discloses the aerosol-forming substrate may be absorbed into a porous carrier material (i.e., porous medium) that can be made from any suitable absorbent plug or body ([0038]).
Zuber further discloses the substrate may be deposited in the form of a gel ([0036]).
In regards to claim 18, Zuber discloses the porous medium may take the form of powder, granules, pellets, shreds, spaghetti strands, strips or sheets ([0035]).
Zuber further discloses the substrate in the form of a bundle of crimped tobacco ([0056]).
In regards to claim 19, Zuber discloses the porous medium can be a non-woven fabric or fiber bundle which may comprise carbon, fibers, natural cellulose fibers or cellulose derivative fibers (i.e., cotton fibers) ([0039]).
In regards to claim 20, Zuber discloses the substrate is circumscribed by a wrapper and that suitable wrappers that are known in the art can be used ([0021] and [0037]), but does not explicitly disclose a water repellant wrapper.
Holford discloses the article comprises a moisture impermeable wrapper that circumscribes the aerosol-generating material ([0051]).
It would be obvious to one of ordinary skill in the art that an impermeable wrapper is a suitable wrapper known in the art and thus Modified Zuber discloses a water repellant wrapper as claimed.
In regards to claim 21, Zuber discloses nicotine present in the gel composition but does not explicitly disclose a weight percent of nicotine.
Modified Zuber discloses nicotine in the gel composition of the substrate being from 0.5 to 1.75 weight percent (Holford [0294]).
The range disclosed by the prior art overlaps the claimed range of the gel composition comprising at least 1 weight percent nicotine, and is therefore considered prima facie obvious.
In regards to claim 22, Zuber discloses the aerosol-forming substrate may comprise a tobacco-containing material containing volatile tobacco flavor compounds, which are released from the substrate upon heating ([0033]), but does not explicitly disclose an acid.
Modified Zuber discloses the gel compositions aerosol former can comprise acids (Holford [0291]).
Holford further discloses aerosol formers promote the generation of an aerosol by promoting an initial vaporization and/or the condensation of a gas to an inhalable solid and/or liquid aerosol. An aerosol-former material may improve the delivery of flavor from the aerosol generating material. ([0291]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that an acid could be incorporated into the gel composition of Zuber, as taught by Holford, because an acid is a known suitable aerosol former and Zuber discloses aerosol formers are used in the gel composition.
In regards to claim 23, Zuber discloses a gel composition, but does not explicitly disclose a gelling agent between 1 and 6 weight percent of the composition.
Modified Zuber discloses the amorphous solid composition (i.e., gel composition) can comprise 1 to 50 weight percent of a gelling agent (Holford [0495]).
The range disclosed by the prior art overlaps the claimed range of a gelling agent between 1 and 6 weight percent of the gel composition and is therefore considered prima facie obvious.
Therefore it would be obvious to one of ordinary skill in the art that a gel composition would require a gelling agent, as disclosed by Holford, and thus it would be obvious that modified Zuber would disclose a gelling agent with a known range in the art so the composition can properly gel.
In regards to claim 24, Zuber discloses a blade-shaped heating element is inserted into the aerosol-generating substrate and extends in a longitudinal direction through the rod of the substrate (Figure 1, [0045], and [0064]).
In regards to claim 25, Zuber discloses the upstream element comprising a front-plug 2 is a cylindrical portion of cellulose acetate tow (i.e., fibrous filtration material) ([0055]).
In regards to claim 26, Modified Zuber discloses the upstream element comprises a resistance to draw from about 20 to 40 mm H2O (Malgat [0015]).
The range disclosed by the prior art overlaps the claimed range of the upstream element having a resistance-to-draw of at least 20 mm H2O, and is therefore considered prima facie obvious.
In regards to claim 27, Zuber discloses a downstream section comprising a mouthpiece filter 3 (i.e., mouthpiece element) formed from cellulose acetate tow (i.e., fibrous filtration material) ([0053] and [0059]).
In regards to claim 28, Modified Zuber discloses the upstream element comprises a resistance to draw from about 20 to 40 mm H2O (Malgat [0015]).
Holford further discloses the resistance-to-draw across the mouthpiece (i.e., downstream element) can be at least 10 mm H2O ([0266]).
Holford further discloses the resistance-to-draw values enable the mouthpiece to slow down the aerosol as it passes through the mouthpiece so the temperature of the aerosol has time to reduce before reaching the downstream end of the mouthpiece ([0266]).
Modified Zuber would therefore disclose a resistance-to-draw of the upstream element being at least 1.5 times the downstream element.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art for modified Zuber to disclose a resistance-to-draw of the upstream element being at least 1.5 times the downstream element, because all are directed to aerosol-generating articles, Holford teaches the downstream resistance-to-draw allows the aerosol to cool as it passes through the mouthpiece ([0266]), and this merely involves applying known suitable resistance-to-draw values of similar components to yield predictable results.
In regards to claim 29, Zuber discloses a transfer section 4 (i.e., aerosol-cooling element) which allows the aerosol to pass through for cooling ([0058]).
The transfer section is downstream and comprises an intermediate hollow section between the aerosol-generating substrate 7 and the mouthpiece element 20 (Figure 1).
Zuber further discloses the aerosol-cooling element comprises a thin-walled tube (i.e., hollow tubular segment defining a longitudinal cavity) and allows volatile substances released from the substrate to pass along the rod towards the mouthpiece ([0058]).
Zuber discloses a cavity within the transfer elements tube (Figure 1) and does not disclose any restriction to the airflow, therefore it would be obvious to one of ordinary skill in the art that the cavity provides an unrestricted flow channel.
In regards to claim 30, Zuber discloses the intermediate hollow section comprising a support element between the aerosol-cooling element 4 and the rod of aerosol-generating material 7 ([0057] and Figure 1 provided below).
Zuber further discloses the support element comprising a tube 6 (i.e., hollow tubular segment) defining a longitudinal cavity. Since Zuber discloses a cavity and does not disclose any restriction to the airflow, it would be obvious to one of ordinary skill in the art that the cavity provides an unrestricted flow channel. See Figure 1 annotated by the Examiner provided below.
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In regards to claim 31, Modified Zuber discloses the resistance-to-draw across the downstream mouthpiece element can be at least 10 mm H2O (Holford [0266]).
The range disclosed by the prior art overlaps the claimed range of the mouthpiece having a resistance to draw of less than 25 mmH2O and is therefore considered prima facie obvious.
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance:
No prior art alone or in combination with references discloses a limitation as recited in claim 32. Specifically, no prior art appears to disclose a susceptor as claimed located within the article and the upstream element upstream of the susceptor.
Zuber et al. (US-20140373856-A1), directed to a smoking article with a front-plug and aerosol-generating substrate discloses a smoking article (i.e., aerosol-generating article) for producing an aerosol upon heating ([0002]), the aerosol-generating article comprising:
an aerosol generating substrate gathered into a rod ([0037]) comprising a composition that can be in the form of a gel ([0036]).
the gel composition comprising nicotine (i.e., alkaloid) ([0015]) and an aerosol former such as glycerine ([0033] and [0056]).
A front-plug (i.e., upstream element) upstream and abutting the aerosol-generating substrate (Figure 1 and [0017]).
A downstream section arranged downstream the aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate, wherein the downstream section comprising one or more downstream elements. See Figure 1 annotated by the Examiner provided below.
A heating element (i.e., susceptor) within the rod of the aerosol-generating substrate when the article is inserted into the heating device and wherein the upstream element 2 is upstream of the susceptor element (Figure 1 and [0066]).
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Zuber differs from the claimed invention in that Zuber discloses a susceptor within the article only during use with the device and does not teach a susceptor located within the article without the addition of the heating device and a susceptor downstream the upstream element within the aerosol generating article before insertion into the heating device.
Malgat et al. (US 20190075845 A1, as cited in the IDS dated 08/22/2022), directed to an aerosol-generating article, discloses an article comprising a plug element located upstream the adjacent aerosol-forming substrate within the rod ([0004]).
Malgat further discloses the plug element comprising a resistance to draw from about 20 to 40 mm H2O ([0015]).
Malgat further discloses an elongate susceptor located within the aerosol generating substrate when in contact with the heating device ([0002]-[0003]).
Malgat further discloses the article has a cavity arranged within the plug element such that the plug element does not contact the elongate susceptor arranged within the aerosol-forming substrate ([0025]).
While Malgat discloses the susceptor downstream the plug element and within the article, Malgat differs from the claimed invention in that Malgat does not teach a susceptor within the article prior to engagement with a heating device and a susceptor downstream the upstream element within the aerosol generating article before insertion into the heating device.
Mironov et al. (US-20160150825-A1) directed to an aerosol generating article with a multi-material susceptor, discloses the aerosol generating article comprising a substrate and a susceptor for heating the aerosol-forming substrate ([0010]).
Mironov further discloses the susceptor located within the aerosol generating article and activated by a device comprising an inductor ([0025]).
Mironov differs from the instant invention in that Mironov does not disclose an aerosol-generating article comprising a susceptor located downstream the upstream element because Mironov does not teach an upstream element of the susceptor (Figure 3).
As such, no prior art appears to disclose or reasonably suggest a susceptor as claimed located within the article and the upstream element upstream of the susceptor as recited in claim 32, and therefore claim 33 is allowable by virtue of its dependency on claim 32.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rossoll et al. (WO-2018220558-A1) directed to aerosol-generating articles with a heating element in the form of a susceptor and internal heating elements within the consumable known in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755