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 Submission
Applicant’s submission filed on 2026 March 27 has been entered. Claims 15-18 and 20-28 are pending.
Claim Rejections - 35 USC § 103
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.
Claims 15-16, 18, 20-21, 24, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO 2017153443 A1 cited on an IDS) in view of Santoso (WO 2016174013 A1).
Claims 15-16: Malgat teaches an aerosol-generating article (fig. 1 and p. 22, lines 21-31, #10) for producing an inhalable aerosol upon heating, the aerosol-generating article (10) comprising:
a rod of aerosol-generating substrate (20), the aerosol-generating substrate (20) comprising homogenized plant material (p. 24, lines 3-7, homogenized tobacco material) comprising tobacco particles (tobacco) and non-tobacco flavor particles (p. 7, lines 27-30, non-tobacco flavor compounds);
an upstream element (p. 22, lines 21-31, #90) upstream (p. 23, lines 13-19, aerosol flows from upstream end #80 to downstream end #70) of the rod of aerosol-generating substrate (20) and abutting an upstream end (leftmost end of 20) of the rod of aerosol-generating substrate (20), wherein the upstream element (90) comprises a plug of fibrous filtration material (p. 23, lines 26-27, cellulose acetate plug) and wherein a resistance-to-draw of the upstream element is at least 5 millimeters H2O (p. 4, lines 9-11, the plug element has a preferred RTD of 25-35 mm H2O);
and a downstream section (p. 22, lines 21-31, #30, #40, and #50) arranged downstream of the rod of aerosol-generating substrate (20) and in axial alignment with the rod of aerosol-generating substrate (20), the downstream section (30, 40, and 50) comprising one or more downstream elements (30, 40, and 50).
Malgat does not explicitly teach that the non-tobacco flavor particles are star anise, clove, ginger, rosemary, or combinations thereof and form between 2.5 percent and 20 percent by dry weight of the homogenized plant material.
Santoso teaches an aerosol-generating article (p. 7, [final paragraph], combustible smoking article) comprising an aerosol-generating plant material (tobacco rod) comprising between 5 wt-% and 20 wt-% cloves (p. 7, [4], cloves are preferred to be at least 5 wt-%; p. 7, [6], tobacco is preferred to be at least 80 wt-% which makes cloves at most 20 wt-%), such that flavor of aerosol is enhanced (p. 1, [4]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Malgat’s generic flavor particles, Santoso’s specific clove flavor particles that form between 5 wt-% and 20 wt-% of the homogenized plant material, because doing so is exemplified by Santoso as enhancing flavor of aerosol.
Claim 18: modified Malgat teaches the aerosol-generating article according to claim 15, wherein the homogenized plant material (p. 8, lines 6-8, substrate) is in the form of a crimped sheet (crimped and gathered sheet).
Claim 20: modified Malgat teaches the aerosol-generating article according to claim 15, wherein the resistance-to-draw of the upstream element (p. 4, lines 9-11, plug element) is at least 20 millimeters H2O (preferred RTD of 25-35 mm H2O).
Claim 21: modified Malgat teaches the aerosol-generating article according to claim 15, further comprising an elongate susceptor element (fig. 1 and p. 22, lines 21-31, #25) extending in a longitudinal direction through the rod of aerosol-generating substrate (20).
Claim 24: modified Malgat teaches the aerosol-generating article according to claim 15, wherein the downstream section (fig. 1 and p. 22, lines 21-31, #30, #40, and #50) further comprises a mouthpiece element (50) comprising a mouthpiece filter segment (p. 25, lines 3-5, filter) formed of a fibrous filtration material (cellulose acetate).
Claim 26: modified Malgat teaches the aerosol-generating article according to claim 24, wherein the downstream section (fig. 1 and p. 22, lines 21-31, #30, #40, and #50) further comprises an intermediate hollow (p. 24, lines 10-11, #30 is hollow; p. 24, lines 27-31, #40 forms longitudinal hollows) section (p. 22, lines 21-31, #30 and #40) between the rod of aerosol-generating substrate (20) and the mouthpiece element (50),
the intermediate hollow section (30 and 40) comprising an aerosol-cooling element (40) abutting the upstream end of the mouthpiece element (50), the aerosol-cooling element (40) comprising a hollow tubular segment (segment of 60 in which 30 and 40 are positioned) defining a longitudinal cavity (interior cavity of 60) providing an unrestricted flow channel (p. 24, lines 27-31, longitudinal channel).
Claim 27: modified Malgat teaches the aerosol-generating article according to claim 26, wherein the aerosol-cooling element (fig. 1 and p. 22, lines 21-31, #40) has a length between 10 millimeters and 14 millimeters (p. 16, lines 25-27).
Modified Malgat does not explicitly teach that the aerosol-cooling element’s length is less than 10 millimeters.
Malgat’s range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). The courts have held that prior art teaching a layer “not less than about 10 nm [i.e., 100 Angstroms]” renders obvious a claim reciting a layer between “50 to 100 Angstroms”. In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
Furthermore, dimensioning Malgat’s aerosol-cooling element to shorter than 10 millimeters would maintain the aerosol-cooling function, absent evidence to the contrary. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to dimension Malgat’s aerosol-cooling element to a length shorter than 10 millimeters, because doing so is taught by overlapping ranges and would be a patentably indistinct change in size.
Claim 28: modified Malgat teaches the aerosol-generating article according to claim 26, wherein the intermediate hollow section (fig. 1 and p. 22, lines 21-31, #30 and #40) further comprises a support element (30) between the aerosol-cooling element (40) and the rod of aerosol-generating substrate (20), the support element (30) comprising the hollow tubular segment (segment of 60 in which 30 and 40 are positioned) defining the longitudinal cavity (interior cavity of 60) providing the unrestricted flow channel (p. 24, lines 27-31, longitudinal channel).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO 2017153443 A1 cited on an IDS) in view of Santoso (WO 2016174013 A1) as applied to claim 15 in further view of Deforel (WO 2018122060 A1).
Claim 17: modified Malgat teaches the aerosol-generating article according to claim 15, wherein the homogenized plant material (p. 8, lines 9-11, substrate) further comprises a binder (binder).
Modified Malgat does not explicitly teach that the binder forms between 1 percent and 10 percent by weight of the homogenized plant material.
Deforel teaches an aerosol-generating article (p. 1, lines 3-5, aerosol-generating article) comprising an aerosol-generating plant material in the form of a sheet (gathered sheet) and comprising between 1 wt-% and 10 wt-% binder (p. 5, lines 1-16), such that the binder improves homogeneity of the sheet (p. 4, lines 30-31).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Malgat’s generic binder amount, Deforel’s specific binder amount between 1 wt-% and 10 wt-%, because doing so is exemplified by Deforel as improving homogeneity of the sheet.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO 2017153443 A1 cited on an IDS) in view of Santoso (WO 2016174013 A1) as applied to claim 21 in further view of Zinovik (US 20170055587 A1).
Claim 22: modified Malgat teaches the aerosol-generating article according to claim 21, wherein the elongate susceptor element (fig. 1 and p. 22, lines 21-31, #25) has a preferred thickness from 10 micrometers to 100 micrometers (p. 9, lines 24-26).
Modified Malgat does not explicitly teach that the susceptor thickness is from about 57 micrometers to about 63 micrometers.
Zinovik teaches an aerosol-generating article (fig. 3 and [79], #2) comprising a susceptor (21) having a thickness of about 50 microns [100].
Zinovik’s range is close to the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946). The courts have held that prior art teaching a groove with an angle of up to 90° renders obvious a claim reciting a groove with an angle of no less than 120°.
Furthermore, dimensioning Malgat’s susceptor to between about 57 microns and about 63 microns thick would maintain the susceptive-heating function, absent evidence to the contrary. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
Malgat’s susceptor is elongated (Malgat p. 9, lines 18-19), and Zinovik’s susceptor is elongated [Zinovik 100] to yield expectation to succeed. Where Malgat teaches a range of susceptor thicknesses, one of ordinary skill would look to Zinovik’s similar device for narrower teachings of thicknesses.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, within Malgat’s susceptor thickness between 10 microns and 100 microns, Zinovik’s specific susceptor thickness of about 50 microns, and thereafter dimension the susceptor to a thickness between about 57 microns and about 63 microns, because doing so is exemplified by Zinovik’s similar elongated susceptor and would otherwise be a patentably indistinct specification of size.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO 2017153443 A1 cited on an IDS) in view of Santoso (WO 2016174013 A1) as applied to claim 15 in further view of England (WO 2020183162 A1).
Claim 23: modified Malgat teaches the aerosol-generating article according to claim 15, wherein the upstream element (fig. 1 and p. 22, lines 21-31, #90) is circumscribed by a wrapper (60).
Modified Malgat does not explicitly teach that the wrapper has a basis weight of at least 80 grams per square meter.
England teaches an aerosol-generating article (title) comprising a wrapper (p. 16, lines 2-9, stiff wrap) having a basis weight of at least 80 gsm (lines 8-9), such that the wrapper can withstand forces and moments imparted during manufacture and use of the article (lines 5-7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Malgat’s generic wrapper basis weight, England’s specific wrapper basis weight of at least 80 gsm, because doing so would enable the wrapper to withstand forces and moments imparted during manufacture and use of the article.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (WO 2017153443 A1 cited on an IDS) in view of Santoso (WO 2016174013 A1) as applied to claim 24 in further view of Schneider (US 5979459 A) and Clarke (US 6422244 B1).
Claim 25: modified Malgat teaches the aerosol-generating article according to claim 24.
Modified Malgat does not explicitly teach that the resistance-to-draw of the upstream element is at least 1.5 times a resistance-to-draw of the mouthpiece element.
Schneider teaches an aerosol-generating article (fig. 2 and col. 4-5, Example 2) comprising a mouthpiece element (23 and 24) having a preferred RTD of 10 mm H2O (col. 2, lines 45-49).
Clarke teaches an aerosol-generating article (fig. 6 and col. 4, lines 28-39) comprising a mouthpiece element (18) having a low RTD (lines 45-54), such that the mouthpiece element’s low RTD permits lightly-filtered smoke to flow to a user in order to give a good smoking feeling (lines 45-54).
The ratio between Malgat’s upstream element preferred RTD between 25 mm H2O and 35 mm H2O (Malgat p. 4, lines 9-11) and Schneider’s mouthpiece element preferred RTD of 10 mm H2O (Schneider col. 2, lines 45-49) is between 2.5 and 3.5 (ratio = Malgat upstream element RTD / Schneider mouthpiece element RTD = between 25 mm H2O / 10 mm H2O = 2.5 and 35 mm H2O / 10 mm H2O = 3.5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Malgat’s generic mouthpiece element RTD, Schneider’s specific mouthpiece element RTD of 10 mm H2O, because doing so would permit lightly-filtered smoke to flow to a user in order to give a good smoking feeling as taught by Clarke.
Response to Arguments
Applicant’s arguments of 2026 March 27 have been carefully considered. Upon further search and consideration, a new ground of rejection is made for claim 1 over Malgat (WO 2017153443 A1) in view of Santoso (WO 2016174013 A1).
Conclusion
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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