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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Claim Status
Applicant’s arguments, filed on 11/20/2025, (“Remarks”) were in response to the Final Rejection mailed on 08/20/2025 (“Final Rejection”).
Claim(s) 2 is/are canceled.
Claim(s) 1 and 3–13 is/are pending. Of the pending claims, claim(s) 7–13 is/are currently withdrawn because they encompass other invention(s) not elected by Applicant on 01/17/2025.
Therefore, claim(s) 1 and 3–6 is/are addressed below.
Prior Art
Applicant’s Remarks, see id. at 5–8, have been fully considered and are persuasive in part.
Applicant argues Deforel US 20210329964 (“Deforel”) fails to disclose claim 1 as amended. Remarks at 6. Examiner agrees.
Applicant argues Reevell (US 20200359675) fails to remedy the deficiencies of Deforel. Remarks at 7. Specifically, Applicant argues “amended claim 1 specifies that the substrate portion is constituted by a single porous tobacco solid, which is clearly different from the plurality of tubular elements described in Reevell.” Remarks at 7. (underline in original) Examiner respectfully disagrees because the features upon which applicant relies (i.e., that the substrate portion is constituted by a single porous tobacco solid) are not recited in the rejected claim(s). The transitional term "comprises” in “wherein the second portion comprises a single cylindrical porous tobacco solid that comprises the tobacco element” is inclusive or open-ended and does not exclude additional cylindrical porous tobacco solids. See generally MPEP § 2111.03(I), contra id. at 211.03(II) (explaining “[t]he transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim.”) (annotation added). That is, even if Reevell teaches more than one cylindrical porous tobacco solids, the broadest reasonable interpretation of claim 1 captures the structure Reevell. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant continues “while the ‘tubes’ of Reevell are structures in which the through passages themselves are made of the tobacco material, amended claim 1 defines a structure in which passages and pores are formed inside a cylindrical solid, and thus the two configurations differ in terms of the diameter ratio and structural nature.” Remarks at 7. (underline in original) Examiner respectfully disagrees. Reevell teaches a porous tobacco solid ([0056]) comprises a single cylindrical porous tobacco solid (Figs. 1–2, 30; [0085–86]) with at least one passage (interior of 30) penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article (Fig. 3) and wherein a plurality of pores (that of the porous tobacco material [0056]) connected to the at least one passage (throughout the cross-sectional areal of 30) is formed in an outer circumferential surface of the porous tobacco solid ([0057]’s “sufficient pores or interstices are provided within the structure of a sheet or web such as to enable the flow of air through the sheet or web in a direction transverse to a surface of the sheet or web.” That is, the porosity extends from inside 30 to the outside of 30).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the present specification indicates that when the second portion comprises a single tobacco solid, it may be heated more uniformly compared to when it is composed of multiple solids) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Therefore, Applicant’s amendments do not overcome the prior art.
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.
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) 1, 3, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over DEFOREL US 20210329964 in view of REEVELL US 20200359675.
As to claim 1, DEFOREL discloses the aerosol generating article (4000a) comprising:
PNG
media_image1.png
377
478
media_image1.png
Greyscale
a first portion (4021a) comprising an aerosol generating element ([0132] “homogenised plant material is in the form of sheets, which are crimped and wrapped in a filter paper (not shown). The sheets both include additives, including glycerine as an aerosol-forming additive”);
a second portion (4022a) comprising a tobacco element ([0132]);
a third portion (1040) comprising a cooling element ([0125]); and
a fourth portion (1050) comprising a filter element ([0125]), wherein the first portion, the second portion, the third portion, and the fourth portion are sequentially provided in a length direction of the aerosol generating article (Figs. 4a–4b), and wherein the second portion comprises a single cylindrical porous tobacco solid that comprises the tobacco element ([0132] discloses that the 4022 is formed from tobacco particles homogenized into sheets. One of ordinary skill in the art understands that this material is porous).
DEFOREL fails to disclose wherein the single cylindrical porous tobacco solid comprises at least one passage penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article, and wherein a plurality of pores connected to the at least one passage are formed in an outer circumferential surface of the single cylindrical porous tobacco solid.
REEVELL teaches a porous tobacco solid ([0056]) comprises a single cylindrical porous tobacco solid (Figs. 1–2, 30; [0085–86]) with at least one passage (interior of 30) penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article (Fig. 3) and wherein a plurality of pores (that of the porous tobacco material [0056]) connected to the at least one passage (throughout the cross-sectional areal of 30) is formed in an outer circumferential surface of the porous tobacco solid ([0057]’s “sufficient pores or interstices are provided within the structure of a sheet or web such as to enable the flow of air through the sheet or web in a direction transverse to a surface of the sheet or web.” That is, the porosity extends from inside 30 to the outside of 30).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of REEVELL into the disclosure of DEFOREL for the benefit of improved resistance to draw manufactured consistently and with great precision (as taught by REEVELL at [0007–8] and [0022]).
Even though the obvious combination above arrives at multiple tubular elements (30) being incorporated into DEFOREL, the presence of one of the tubular elements (30) makes obvious the deficiency of DEFOREL because transitional term "comprises” in “wherein the second portion comprises a single cylindrical porous tobacco solid that comprises the tobacco element” is inclusive or open-ended and does not exclude additional cylindrical porous tobacco solids. See generally MPEP § 2111.03(I), contra id. at 211.03(II) (explaining “[t]he transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim.”) (annotation added).
As to claim 3, DEFOREL and REEVELL make obvious the aerosol generating article of claim 1.
DEFOREL fails to disclose wherein an average diameter of the at least one passage ranges from 1 mm to 4 mm.
REEVELL further teaches wherein an average diameter of the at least one passage ranges from 1 mm to 4 mm ([0086]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of REEVELL into the disclosure of DEFOREL for the benefit of improved resistance to draw manufactured consistently and with great precision (as taught by REEVELL at [0007–8] and [0022]).
As to claim 6, DEFOREL and REEVELL make obvious the aerosol generating article of claim 1.
DEFOREL further discloses wherein the second portion comprises a thermally conductive wrapper provided on the porous tobacco solid ([0135] “which are crimped and wrapped in a filter paper (not shown).” This filter paper is thermally conductive).
Claim(s) 1 and 4–5 is/are rejected under 35 U.S.C. 103 as being unpatentable over DEFOREL US 20210329964 in view of RASOULI US 20150114405.
As to claim 1, DEFOREL discloses the aerosol generating article (4000a) comprising:
PNG
media_image1.png
377
478
media_image1.png
Greyscale
a first portion (4021a) comprising an aerosol generating element ([0132] “homogenised plant material is in the form of sheets, which are crimped and wrapped in a filter paper (not shown). The sheets both include additives, including glycerine as an aerosol-forming additive”);
a second portion (4022a) comprising a tobacco element ([0132]);
a third portion (1040) comprising a cooling element ([0125]); and
a fourth portion (1050) comprising a filter element ([0125]), wherein the first portion, the second portion, the third portion, and the fourth portion are sequentially provided in a length direction of the aerosol generating article (Figs. 4a–4b), and wherein the second portion comprises a single cylindrical porous tobacco solid that comprises the tobacco element ([0132] discloses that the 4022 is formed from tobacco particles homogenized into sheets. One of ordinary skill in the art understands that this material is porous).
DEFOREL fails to disclose wherein the single cylindrical porous tobacco solid comprises at least one passage penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article, and wherein a plurality of pores connected to the at least one passage are formed in an outer circumferential surface of the single cylindrical porous tobacco solid.
RASOULI teaches a single cylindrical porous tobacco solid (Figs. 1–2, 20) comprises at least one passage (40) penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article ([0060] teaches elongated channels are formed in the porous tobacco solid by using forming members 40 within a mold 30 in Figs. 3–4. Once the tobacco aerogel is formed the channel forming members 40 are removed, which creates at least one passage penetrating from upstream of the aerosol generating article to downstream of the aerosol generating article) and wherein a plurality of pores ([0015]) connected to the at least one passage (throughout the cross-sectional areal of 30) is formed in an outer circumferential surface of the porous tobacco solid ([0015] teaches “vapour can pass through the open pore structure via the interconnected voids or pores of the aerogel.” That is, the porosity extends from inside elongated channels to the external circumferential surface of the porous tobacco solid illustrated in Figs. 2–4. See also [0007]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of REEVELL into the disclosure of RASOULI for the benefit of a custom tailored tobacco substrate which can have any shape and can provide physical or structural properties to the tobacco substrate that can be substantially independent of the amount of tobacco in the tobacco substrate (as taught by RASOULI at [0013]).
As to claim 4, DEFOREL and RASOULI make obvious the aerosol generating article of claim 1.
DEFOREL fails to disclose wherein an average diameter of the plurality of pores ranges from 0.1 mm to 1 mm.
RASOULI teaches wherein an average diameter of the plurality of pores ranges from 0.1 mm to 1 mm ([0015] teaches “the voids or pores have an average size of less than 500 micrometres, or less than 250 micrometres, or less than 100 micrometre”).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of REEVELL into the disclosure of RASOULI for the benefit of a custom-tailored tobacco substrate which can have any shape and can provide physical or structural properties to the tobacco substrate that can be substantially independent of the amount of tobacco in the tobacco substrate (as taught by RASOULI at [0013]) and enabling resistance to draw that is similar to a resistance to draw of a tobacco rod of a conventional smoking article (as taught by RASOULI at [0015]).
As to claim 5, DEFOREL and RASOULI make obvious the aerosol generating article of claim 1.
DEFOREL fails to disclose wherein a specific surface area of the porous tobacco solid ranges from 200 m2/g to 1000 m2/g.
RASOULI teaches wherein a specific surface area of the porous tobacco solid ranges from 200 m2/g to 1000 m2/g ([0022–23]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of REEVELL into the disclosure of RASOULI for the benefit of a custom-tailored tobacco substrate which can have any shape and can provide physical or structural properties to the tobacco substrate that can be substantially independent of the amount of tobacco in the tobacco substrate (as taught by RASOULI at [0013]) and enabling resistance to draw that is similar to a resistance to draw of a tobacco rod of a conventional smoking article (as taught by RASOULI at [0015]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANLEY L CUMMINS IV whose telephone number is (571)272-1060. The examiner can normally be reached Monday-Friday 9:30 a.m. - 6:00 p.m. (CST).
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.
/MANLEY L CUMMINS IV/Primary Examiner, Art Unit 1747