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 the Claims
Claims 16 and 18-32 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 6/3/26.
Claim 16 is amended.
Claim 32 remains withdrawn.
Response to Arguments
Applicant’s arguments (filed 6/3/26, pages 6-11) with respect to the rejection(s) of amended Claim 16 under 35 USC § 103 have been fully considered and are persuasive. The Applicant has amended claim 16 to include a limitation not previously presented. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Banerjee (EP 0336456 A2).
Applicant's arguments (filed 6/3/26, page 11) with respect to the double patenting rejections of Claim 16 as amended have been fully considered and are persuasive. The nonstatutory double patenting rejections over: (a) Claims 16, 19, and 24 of copending Application No. 17/905,734 (application allowed, Patent No. US 12,433,327 B2) and (b) Claims 16 and 19 of copending Application No. 17/905,738 have been withdrawn.
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, 18-28, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Borges (US 20160143355 A1) in view of Stone (US 20120042885 A1) and Banerjee (EP 0336456 A2).
Regarding Claim 16, Borges teaches an aerosol-generating article for producing an aerosol upon heating ([0001]) the aerosol-generating article comprising:
a rod of aerosol-forming substrate comprising an aerosol former (substrate 10; [0019]-[0020], [0243], Fig 1),
the aerosol-forming substrate having an aerosol former (the substrate may comprise an aerosol-forming compound such as glycerine or other known aerosol-formers. [0012], [0216]);
a filter positioned downstream of the rod of aerosol-forming substrate, the filter comprising: a mouthpiece segment comprising a plug of filtration material arranged downstream of the rod of aerosol-forming substrate (filtration material 32; [0224], [0249], Fig 1), and
a hollow tubular segment located between the mouthpiece segment and the rod of aerosol-forming substrate (hollow cellulose acetate tube 28; [0246], Fig 1),
wherein the rod of aerosol-forming substrate and the filter are assembled within a wrapper, the wrapper being formed of a sheet, wherein the mouthpiece segment and the hollow tubular segment are circumscribed by the sheet (outer wrapper 20; [0020], [0243], Fig 1), and
first and second air ingress zones located on the wrapper, the first and the second air ingress zones each being configured to allow the ingress of air into an interior of the aerosol-generating article ("cool air drawn through the one or more first air inlets around the periphery of the aerosol-forming substrate advantageously reduces the temperature of the aerosol-forming substrate" [0104]. First air inlets 40; [0255], Fig 1. The article may further comprise second and third air inlets to draw in cool air. [0112]-[0115]),
wherein the second air ingress zone is located at a position at least 1.5 mm downstream of the first air ingress zone (wherein one or more first air inlets are located at a position A-D and one or more third air inlets are located downstream of the substrate, such as at position E, the distance between the inlets may be between 6 and 10 mm. [0114], [0261], Table 1).
Borges does not explicitly disclose that the aerosol-forming substrate has an aerosol former content of greater than 10 percent on a dry weight basis. However, Stone discloses a rod of aerosol-forming substrate comprising an aerosol former, the aerosol-forming substrate having an aerosol former content of greater than 10 percent on a dry weight basis (The tobacco substrate may comprise 20% to 30% by a dry weight basis of glycerin. [0031]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the substrate of Borges with an aerosol former of greater than 10% on a dry weight basis as taught by Stone because Borges and Stone are both directed to aerosol generating articles, Borges is silent on the quantity of glycerin utilized, Stone teaches the use of greater than 10% on a dry weight basis of the aerosol former compound glycerin in the tobacco substrate of a smoking article, and this merely involves applying a known component quantity to a similar article to yield predictable results.
Borges is directed to a smoking article which comprises a combustible heat source physically separated from an aerosol-forming substrate wherein heat from the combustible heat source is conducted through a heat-conducting element to heat the aerosol-forming substrate ([0014]). Thus, Borges does not teach a susceptor element. However, Borges teaches additional article configurations known in the art for transferring heat between a combustible heat source physically separated from an aerosol-forming substrate, including directly describing the embodiment in Fig. 2 of Banerjee (EP 0336456 A2). Banerjee teaches the use of an aluminum rod connecting a combustible heat source to an aerosol-forming substrate in order to conduct heat to the aerosol-forming substrate (Col. 20, lines 11-38), allowing heat to be conducted from the heat source to the interior of the aerosol-forming substrate.
In regard to the amended claim limitation of “a susceptor element located in the aerosol-forming substrate,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, “susceptor” is a recitation of intended use where the article does not include the corresponding induction element. Thus, any prior art teaching an element located in the aerosol-forming substrate which is capable of being utilized as a susceptor would be capable of performing the intended use, and thus meets the claim. While the aluminum conducting rod taught by Banerjee, referenced by Borges, is not explicitly utilized as a susceptor element, an aluminum conducting rod is cable of being utilized as a susceptor element and thus meets the claim.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the heat conductive portion of Borges with the aluminum heat conducting rod as taught by Banerjee because Borges and Banerjee are both directed to a smoking article which comprises a combustible heat source physically separated from an aerosol-forming substrate, Banerjee teaches the use of the aluminum heat conducting rod located in the aerosol-forming substrate as an additional component of the heat conducting means (Col 10, lines 27-38), an aluminum conducting rod is cable of being utilized as a susceptor element, and this merely involves applying a known heat conducting component to a similar aerosol generating article to yield predictable results.
Regarding Claim 18, Borges teaches an aerosol-generating article wherein the filter further comprises an aerosol-cooling element located between the mouthpiece segment and the hollow tubular segment (aerosol-cooling element 14; [0243], Fig 1).
Regarding Claim 19, Borges teaches an aerosol-generating article wherein a width of the first air ingress zone is greater than or equal to a width of the second air ingress zone ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]. Wherein the shape and size of the first inlets may be adjusted, the first air inlets may be larger, smaller, or similar in size to the second and third air inlets; and thus, the width of the first inlets may be equal to or greater than the widths of the second and third air inlets).
Regarding Claims 20 and 21, Borges does not explicitly teach an aerosol-generating article wherein a width of the first air ingress zone is at least 3 mm and/or 5mm. However, Borges teaches that the number, size, and shape of the ingress zones affects the resistance to draw of the article ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]). Given that the size and location of the inlets directly effects the smoking performance of the article, a person having ordinary skill in the art would be motivated to perform routine optimization. A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the number, size, and shape of the inlets. See MPEP 2144.05(II). Moreover, it would be obvious to one having ordinary skill in the art that the width of the air ingress zone being at least 3 mm and/or 5mm is a matter of design choice and involves the scaling of known elements. See MPEP 2144.04(IV)(A). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the smoking performance of the article through modification of the size, shape, and spacing of the inlets as disclosed in Borges, would arrive at the width of the air ingress zone of at least 3 mm and/or 5mm as claimed, absent evidence to the contrary.
Regarding Claims 22 and 24, Borges teaches an aerosol-generating article wherein the first and/or second air ingress zone comprises a porous portion of the wrapper (wherein a circumferential arrangement of first air inlets 40 is provided in wrapper 20, the inlet portion of the wrapper comprises a porous portion of the wrapper; and the section of the wrapper which comprises the inlets would be more porous than sections of the wrapper which do not comprise inlets. [0255], Fig 1.).
Regarding Claim 23, Borges teaches an aerosol-generating article wherein the second air ingress zone comprises a plurality of apertures extending through the wrapper ("the term ‘air inlet’ is used to describe a hole, slit, slot or other aperture through which air may be drawn into the smoking article" [0021]. "The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]).
Regarding Claims 25 and 26, Borges does not explicitly teach an aerosol-generating article wherein a width of the second air ingress zone is at least 3 mm and/or 5mm. However, Borges teaches that the number, size, and shape of the ingress zones affects the smoking performance of the article ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]). Given that the size and location of the inlets effects the smoking performance of the article, a person having ordinary skill in the art would be motivated to perform routine optimization. A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the number, shape, and size of the air inlets. See MPEP 2144.05(II). Moreover, it would be obvious to one having ordinary skill in the art that the spacing of the air ingress zone being at least 3 mm and/or 5mm apart is a matter of design choice and involves the scaling of known elements. See MPEP 2144.04(IV)(A). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the smoking performance of the article through modification of the size, shape, and spacing of the inlets as disclosed in Borges, would arrive at the width of the second air ingress zone of at least 3 mm and/or 5mm as claimed, absent evidence to the contrary.
Regarding Claim 27, Borges teaches an aerosol-generating article wherein the first and the second air ingress zones are located along the rod of aerosol-forming substrate (First air inlets 40 surround the substrate. [0255], Fig 1. The article may further comprise second air inlets to draw in cool air located downstream of the heat source. [0112]-[0113]).
Regarding Claim 28, Borges teaches an aerosol-generating article wherein the second air ingress zone is located along the hollow tubular segment (The article may further comprise third air inlets to draw in cool air positioned downstream of the substrate, such as around the hollow cellulose acetate tube at location E. [0114]-[0115], [0261], Fig 1).
Regarding Claim 31, Borges teaches an aerosol-generating article wherein the wrapper comprises an air-impermeable material (the wrapper may further comprise a heat-conducting portion which comprises a layer of a heat-conductive material such as a sheet metal. [0039]-[0043], [0253]).
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Borges and Stone and Banerjee as applied to Claims 16 and 22 above, and further in view of Matteau (US 6206008 B1).
Regarding Claims 29 and 30, Borges discloses an article wherein the porosity of the air ingress zones are adjusted to control smoking performance ([0107]), but does not explicitly disclose wherein the first air ingress zone has a porosity of at least 3000 Coresta Units and/or less than 25000 Coresta Units.
Matteau teaches an aerosol generating article which explicitly discloses that the filter has a porous section or is wrapped with porous foil/wrapper in the order of 10,000-30,000 Coresta units (Col. 5, Lines 53-54) which is interchangeable with the vent holes on the filter (ventilation holes 17; Col. 6, Lines 37-43). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. (See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the inlets of Borges with a porous wrapper which has a porosity of at least 3000 Coresta Units and/or less than 25000 Coresta Units as taught by Matteau because Borges and Matteau are both directed to radially ventilated aerosol generating articles, Matteau teaches that the permeability of the ventilation may be adjusted to achieved the desired flowrate (Col. 4, lines 65-67; col. 5 lines 1-2), and this merely involves applying a known ventilation component to a similarly ventilated article to yield predictable results.
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 Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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