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 9, 21, 22, and 25 have been cancelled. Claims 1, 23, 26, and 27 have been amended. Claims 2-8, 10-16, 24, and 28-30 are as previously presented. Claims 31-33 are new. Claims 17-20 remain withdrawn. Therefore, claims 1-8, 10-16, 23, 24 and 26-33 are currently pending and have been considered below.
Response to Amendment
The amendment filed on 8/28/2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Regarding the instant independent claims:
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,271,578. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 10,271,578 anticipates instant claim 2.
Claims 1, 23, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 21, and 27 respectively, of U.S. Patent No. 10,271,578 in view of Counts et al. (US 5,369,723). The table below compares the above claims of U.S. Patent No. 10,271,578 to the above instant claims.
Regarding the instant dependent claims:
Claims 3-8, 10-16, 24, 28, and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-7, 1, 9-14, 21, 26, and 28, respectively, of U.S. Patent No. 10,271,578 in view of Counts et al. (US 5,369,723).
Instant application 17/934,519
U.S. Patent No. 10,271,578
1. A device for generating an inhalable aerosol and/or gas,
the device comprising an aerosol generating material having an integrated heat source,
so that the aerosol generating material may be heated in direct contact with the heat source,
wherein the aerosol generating material is provided as a unitary structure and/or coating which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas; and
wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
1. A device for generating at least one of an inhalable aerosol or a gas,
the device comprising: an aerosol generating material having an integrated electrical resistance heating element,
wherein the electrical resistance heating element is at least partially embedded in or coated by the aerosol generating material, so that the aerosol generating material may be heated in direct contact with the electrical resistance heating element,
wherein the aerosol generating material is provided as at least one of a unitary structure or a coating which may be heated to generate multiple deliveries of at least one of an inhalable aerosol or a gas; wherein the aerosol generating material is a cast or extruded material.
2. A device for generating an inhalable aerosol and/or gas,
the device comprising an aerosol generating material having an integrated heat source,
so that the aerosol generating material may be heated in direct contact with the heat source,
wherein the aerosol generating material is provided as a unitary structure and/or coating which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas;
wherein the aerosol generating material is a cast or extruded material.
1. A device for generating at least one of an inhalable aerosol or a gas,
the device comprising: an aerosol generating material having an integrated electrical resistance heating element,
wherein the electrical resistance heating element is at least partially embedded in or coated by the aerosol generating material, so that the aerosol generating material may be heated in direct contact with the electrical resistance heating element,
wherein the aerosol generating material is provided as at least one of a unitary structure or a coating which may be heated to generate multiple deliveries of at least one of an inhalable aerosol or a gas;
wherein the aerosol generating material is a cast or extruded material.
23. A composite structure comprising a heat source, which is at least partially embedded in, or coated by, an aerosol generating material,
wherein the material is in direct contact with the heat source and may be heated to generate multiple deliveries of an inhalable aerosol and/or gas; and
wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
21. A composite structure comprising: an electrical resistance heating element, which is at least partially embedded in, or coated by, an aerosol generating material,
wherein the material is in direct contact with the electrical resistance heating element and may be heated to generate multiple deliveries of at least one of an inhalable aerosol or a gas, wherein the aerosol generation material is a cast or extruded material.
29. An article comprising a composite structure as claimed in claim 23, and a means for moving the composite structure to allow different portions thereof to be heated.
27. An article comprising a composite structure as claimed in claim 21, and a means for moving the composite structure to allow different portions thereof to be heated.
The claims of U.S. Patent No. 10,271,578 do not expressly disclose wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
Counts is directed to a “tobacco flavor unit for electrical smoking article comprising fibrous mat” [Title]. Counts discloses wherein an aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums (Figs. 2 and 4, aerosol generating material comprises tobacco flavor material and fibrous mat; “the binder used to form a mat composed substantially of a matrix of the fibers, can be any type of binder which allows a mat to be formed and which is suitable for use in smoking articles (i.e., having acceptable subjective properties). Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises a binder. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Regarding the instant independent claims:
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,478,016. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,478,016 anticipates instant claim 2.
Claims 1, 23, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, and 17 respectively, of U.S. Patent No. 11,478,016 in view of Counts et al. (US 5,369,723). The table below compares the above claims of U.S. Patent No. 11,478,016 to the above instant claims.
Regarding the instant dependent claims:
Claims 3, 4, 6-8, 10-16, 24, 28, and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 1, 3-5, 1, 7-12, 15, 15, and 18, respectively, of U.S. Patent No. 11,478,016 in view of Counts et al. (US 5,369,723).
Instant application 17/934,519
U.S. Patent No. 11,478,016
1. A device for generating an inhalable aerosol and/or gas,
the device comprising an aerosol generating material having an integrated heat source,
so that the aerosol generating material may be heated in direct contact with the heat source,
wherein the aerosol generating material is provided as a unitary structure and/or coating which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas; and
wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
1. A device for generating an inhalable aerosol or gas,
the device comprising: an aerosol generating material having an integrated electrical resistance heating element at least partially embedded therein,
so that the aerosol generating material may be heated in direct contact with the electrical resistance heating element,
wherein the aerosol generating material is provided as a unitary structure or coating which may be heated to generate multiple deliveries of an inhalable aerosol or gas, wherein the aerosol generating material is a cast or extruded material, and wherein at least part of the electrical resistance heating element is in the form of a mesh.
2. A device for generating an inhalable aerosol and/or gas,
the device comprising an aerosol generating material having an integrated heat source,
so that the aerosol generating material may be heated in direct contact with the heat source,
wherein the aerosol generating material is provided as a unitary structure and/or coating which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas;
wherein the aerosol generating material is a cast or extruded material.
1. A device for generating an inhalable aerosol or gas,
the device comprising: an aerosol generating material having an integrated electrical resistance heating element at least partially embedded therein,
so that the aerosol generating material may be heated in direct contact with the electrical resistance heating element,
wherein the aerosol generating material is provided as a unitary structure or coating which may be heated to generate multiple deliveries of an inhalable aerosol or gas,
wherein the aerosol generating material is a cast or extruded material, and wherein at least part of the electrical resistance heating element is in the form of a mesh.
23. A composite structure comprising a heat source, which is at least partially embedded in, or coated by, an aerosol generating material,
wherein the material is in direct contact with the heat source and may be heated to generate multiple deliveries of an inhalable aerosol and/or gas; and
wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
15. A composite structure comprising: an electrical resistance heating element which is at least partially embedded in, or coated by, an aerosol generating material,
wherein the aerosol generating material: is in direct contact with the electrical resistance heating element and may be heated to generate multiple deliveries of an inhalable aerosol or gas, is a cast or extruded material, has an integrated electrical resistance heating element at least partially embedded therein, so that the aerosol generating material may be heated in direct contact with the electrical resistance heating element, and is provided as a unitary structure or coating which may be heated to generate multiple deliveries of an inhalable aerosol or gas; and wherein at least part of the electrical resistance heating element is in the form of a mesh.
29. An article comprising a composite structure as claimed in claim 23, and a means for moving the composite structure to allow different portions thereof to be heated.
17. An article comprising the composite structure as claimed in claim 15, and means for moving the composite structure to allow different portions of the composite structure to be heated.
The claims of U.S. Patent No. 11,478,016 do not expressly disclose wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
Counts is directed to a “tobacco flavor unit for electrical smoking article comprising fibrous mat” [Title]. Counts discloses wherein an aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums (Figs. 2 and 4, aerosol generating material comprises tobacco flavor material and fibrous mat; “the binder used to form a mat composed substantially of a matrix of the fibers, can be any type of binder which allows a mat to be formed and which is suitable for use in smoking articles (i.e., having acceptable subjective properties). Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises a binder. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 29 recites, “a means for moving the composite structure.” Applicant’s disclosure describes the means for moving the composite structure as “a spool” [Applicant’s filed specification at page 4, line 20; claim 30].
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Worm et al. (US 2013/0037041).
Regarding claim 2, Worm discloses a device for generating an inhalable aerosol and/or gas (“The present invention describes articles, such as smoking articles, that can provide an inhalable substance in a form suitable for inhalation by a consumer” [Abstract]), the device comprising an aerosol generating material (“inhalable substance medium 350”) having an integrated heat source (“heating coil 407”), so that the aerosol generating material may be heated in direct contact with the heat source (“a conventional heating member according to the various constructions described herein also may be combined with the inhalable substance medium so to be at least partially embedded therein. For example, referring to FIG. 12, the heating coil 407 may be integrally formed with the inhalable substance medium 350 so that at least a portion of the heating coil is fully located within the outer and inner walls of the inhalable substance medium” [0091]), wherein the aerosol generating material is provided as a unitary structure and/or coating (aerosol generating material / inhalable substance medium 350 is shown as a unitary structure in Fig. 12) which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas (“The electrical heating member provides for heating almost immediately upon taking a puff from the article and can provide for delivery of an aerosol throughout the puff and over about 6 to about 10 puffs on the article” [0006]), wherein the aerosol generating material is a cast or extruded material (“the inhalable substance medium 350 may comprise a mix of finely ground tobacco, tobacco extract, spray dried tobacco extract, or other tobacco form mixed with optional inorganic materials (such as calcium carbonate), optional flavors, and the aerosol forming materials to form a substantially solid or moldable (e.g., extrudable) substrate” [0089]).
Furthermore, regarding the limitation, “wherein the aerosol generating material is a cast or extruded material,” it is noted that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP § 2113-I.
Regarding claim 3, Worm discloses wherein the aerosol generating material comprises nicotine (“the inhalable substance medium may comprise tobacco condensates or fractions thereof (i.e., condensed components of the smoke produced by the combustion of tobacco, leaving flavors and, possibly, nicotine)” [0057]).
Regarding claim 4, Worm discloses wherein at least part of the heat source is in the form of a mesh or a coil (Fig. 12, (“heating coil 407” [0091]).
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 1, 5-8, 10, 12, 14-16, 23-24, 26-28, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 2013/0037041) in view of Counts et al. (US 5,369,723).
Regarding claim 1, Worm discloses a device for generating an inhalable aerosol and/or gas (“The present invention describes articles, such as smoking articles, that can provide an inhalable substance in a form suitable for inhalation by a consumer” [Abstract]), the device comprising an aerosol generating material (“inhalable substance medium 350”) having an integrated heat source (“heating coil 407”), so that the aerosol generating material may be heated in direct contact with the heat source (“a conventional heating member according to the various constructions described herein also may be combined with the inhalable substance medium so to be at least partially embedded therein. For example, referring to FIG. 12, the heating coil 407 may be integrally formed with the inhalable substance medium 350 so that at least a portion of the heating coil is fully located within the outer and inner walls of the inhalable substance medium” [0091]), wherein the aerosol generating material is provided as a unitary structure and/or coating (aerosol generating material / inhalable substance medium 350 is shown as a unitary structure in Fig. 12) which may be heated to generate multiple deliveries of an inhalable aerosol and/or gas (“The electrical heating member provides for heating almost immediately upon taking a puff from the article and can provide for delivery of an aerosol throughout the puff and over about 6 to about 10 puffs on the article” [0006]).
Worm does not expressly disclose wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
Counts is directed to a “tobacco flavor unit for electrical smoking article comprising fibrous mat” [Title]. Counts discloses wherein an aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums (Figs. 2 and 4, aerosol generating material comprises tobacco flavor material and fibrous mat; “the binder used to form a mat composed substantially of a matrix of the fibers, can be any type of binder which allows a mat to be formed and which is suitable for use in smoking articles (i.e., having acceptable subjective properties). Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises a binder. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Regarding claim 5, Worm discloses wherein the aerosol generating material may be repeatedly heated by the heat source to generate deliveries of inhalable aerosol and/or gas (“the consumer may use the pushbutton to energize the heating member. Optionally, the pushbutton still may be mechanically linked to the cartridge, such as in the example described above, so that actuation of the pushbutton moves the cartridge one segment forward and then energizes the heating member to heat the fresh segment of the inhalable substance medium” [0107]).
Regarding claim 6, Worm discloses wherein the aerosol generating material comprises an aerosol generating agent (“the inhalable substance medium can comprise one or more aerosol-forming or vapor-forming materials, such as a polyhydric alcohol (e.g., glycerin, propylene glycol, or a mixture thereof) and/or water” [0060]).
Regarding claim 7, Worm discloses wherein the aerosol generating material comprises tobacco material (“tobacco materials, such as a tobacco aroma oil, a tobacco essence, a spray dried tobacco extract, a freeze dried tobacco extract, tobacco dust, or the like may be combined with the vapor-forming or aerosol-forming material” [0060]).
Regarding claim 8, Worm discloses wherein the aerosol generating material comprises an inorganic filler material (“the inhalable substance medium 350 may comprise a mix of finely ground tobacco, tobacco extract, spray dried tobacco extract, or other tobacco form mixed with optional inorganic materials” [0089]).
Regarding claim 10, Worm discloses wherein at least part of the heat source is at least partially embedded in, or coated by, the aerosol generating material (“a conventional heating member according to the various constructions described herein also may be combined with the inhalable substance medium so to be at least partially embedded therein. For example, referring to FIG. 12, the heating coil 407 may be integrally formed with the inhalable substance medium 350 so that at least a portion of the heating coil is fully located within the outer and inner walls of the inhalable substance medium” [0091]).
Regarding claim 12, Worm discloses wherein a first portion of the aerosol generating material may be heated independently from a second portion of the aerosol generating material by the heat source (“the consumer may use the pushbutton to energize the heating member. Optionally, the pushbutton still may be mechanically linked to the cartridge, such as in the example described above, so that actuation of the pushbutton moves the cartridge one segment forward and then energizes the heating member to heat the fresh segment of the inhalable substance medium” [0107]).
Regarding claim 14, Worm discloses wherein at least one portion of the aerosol generating material must be moved from a first position to a second position in order to be heated by the heat source (“the consumer may use the pushbutton to energize the heating member. Optionally, the pushbutton still may be mechanically linked to the cartridge, such as in the example described above, so that actuation of the pushbutton moves the cartridge one segment forward and then energizes the heating member to heat the fresh segment of the inhalable substance medium” [0107]).
Regarding claim 15, Worm discloses wherein the heating of the aerosol generating material by the heat source is to be initiated and/or controlled by the user of the device (“the consumer may use the pushbutton to energize the heating member” [0107]).
Regarding claim 16, Worm discloses wherein the device is a heat-not-burn device (“the invention relates to smoking articles that employ an electrical heating element and an electrical power source to provide the inhalable substance in a vapor or aerosol form, and also provide other sensations associated with smoking, preferably without substantially burning or completely burning tobacco or other substances, producing little or no combustion or pyrolysis products” [0006]).
Regarding claim 23, Worm discloses a composite structure comprising a heat source (“heating coil 407”), which is at least partially embedded in, or coated by, an aerosol generating material (“inhalable substance medium 350”; “a conventional heating member according to the various constructions described herein also may be combined with the inhalable substance medium so to be at least partially embedded therein. For example, referring to FIG. 12, the heating coil 407 may be integrally formed with the inhalable substance medium 350 so that at least a portion of the heating coil is fully located within the outer and inner walls of the inhalable substance medium” [0091]), wherein the material is in direct contact with the heat source (described above) and may be heated to generate multiple deliveries of an inhalable aerosol and/or gas (“The electrical heating member provides for heating almost immediately upon taking a puff from the article and can provide for delivery of an aerosol throughout the puff and over about 6 to about 10 puffs on the article” [0006]).
Worm does not expressly disclose wherein the aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums.
Counts is directed to a “tobacco flavor unit for electrical smoking article comprising fibrous mat” [Title]. Counts discloses wherein an aerosol generating material comprises one or more binders selected from the group consisting of: an alginate, celluloses or modified celluloses, starches or modified starches, and natural gums (Figs. 2 and 4, aerosol generating material comprises tobacco flavor material and fibrous mat; “the binder used to form a mat composed substantially of a matrix of the fibers, can be any type of binder which allows a mat to be formed and which is suitable for use in smoking articles (i.e., having acceptable subjective properties). Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises a binder. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Regarding claim 24, Worm discloses wherein the aerosol generating material is a cast or extruded material (“the inhalable substance medium 350 may comprise a mix of finely ground tobacco, tobacco extract, spray dried tobacco extract, or other tobacco form mixed with optional inorganic materials (such as calcium carbonate), optional flavors, and the aerosol forming materials to form a substantially solid or moldable (e.g., extrudable) substrate” [0089]).
Furthermore, regarding the limitation, “wherein the aerosol generating material is a cast or extruded material,” it is noted that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP § 2113-I.
Regarding claim 26, Worm does not expressly disclose wherein the one or more binders are selected from the group consisting of: an alginate, and celluloses or modified celluloses.
Counts discloses wherein the one or more binders are selected from the group consisting of: an alginate, and celluloses or modified celluloses (“Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the one or more binders are selected from the group consisting of: an alginate, and celluloses or modified celluloses. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Regarding claim 27, Worm does not expressly disclose wherein the alginate is selected from the group consisting of sodium alginate, calcium alginate, and potassium alginate, and wherein the natural gums are selected from the group consisting of xanthan gum and guar gum.
Counts discloses wherein the alginate is selected from the group consisting of sodium alginate, calcium alginate, and potassium alginate, and wherein the natural gums are selected from the group consisting of xanthan gum and guar gum (“calcium treated alginates” [Col. 5, line 20]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the alginate is selected from the group consisting of sodium alginate, calcium alginate, and potassium alginate, and wherein the natural gums are selected from the group consisting of xanthan gum and guar gum. This is a known material used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results.
Regarding claim 28, Worm discloses wherein the aerosol generating material is provided as a unitary structure (aerosol generating material / inhalable substance medium 350 is shown as a unitary structure in Fig. 12).
Regarding claim 31, Worm / Counts does not expressly disclose wherein the aerosol generating material comprises 6-50% binder by weight.
However, Counts discloses wherein the aerosol generating material comprises binder at “9% by weight” [Col. 16, lines 11-14].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises 6-50% binder by weight. This is a known weight percentage of binder used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results. Additionally, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP § 2144.05-I.
Regarding claim 32, Worm / Counts does not expressly disclose wherein the aerosol generating material comprises 10-35% binder by weight.
However, Counts discloses wherein the aerosol generating material comprises binder at “9% by weight” [Col. 16, lines 11-14].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises 10-35% binder by weight. This is a known weight percentage of binder used in devices for generating inhalable aerosols, applied to a known device, to achieve predictable results. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP § 2144.05-I.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 2013/0037041) in view of Counts et al. (US 5,369,723), further in view of Plojoux et al. (WO 2013/098395).
Regarding claim 11, Worm does not expressly disclose wherein at least part of the aerosol generating material is at least partially surrounded by the heat source.
Plojoux is directed to an aerosol generating device [Title]. Plojoux discloses wherein at least part of an aerosol generating material is at least partially surrounded by a heat source (“The term "external heating element" refers to one that at least partially surrounds the aerosol-forming substrate” [page 4, lines 4-5]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein at least part of the aerosol generating material is at least partially surrounded by the heat source. This is a known, alternative configuration of a heat source and an aerosol generating material, applied to a known device, to achieve predictable results.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 2013/0037041) in view of Counts et al. (US 5,369,723), further in view of Plojoux et al. (WO 2013/098395) and Dubief et al. (WO 2013/083635).
Regarding claim 13, Worm does not expressly disclose wherein the first portion and the second portion have different chemical compositions.
Dubief is directed to an aerosol generating device [Title]. Dubief discloses wherein s first portion and s second portion have different chemical compositions (“for cartridges containing different substrate compositions to be used, then the cartridges can be designed to include either or both of the first and second air inlets, optimised for the particular composition that they contain” [page 12, lines 35-37]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the first portion and the second portion have different chemical compositions. This allows for the user to inhale aerosols with different flavors.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 2013/0037041) in view of Counts et al. (US 5,369,723), further in view of Hale et al. (US 2011/0253135).
Regarding claim 29, Worm discloses an article comprising a composite structure as claimed in claim 23, as described in the rejection of claim 23.
Worm does not expressly disclose a means for moving the composite structure to allow different portions thereof to be heated.
Hale is directed to an aerosol delivery device [0003]. Hale discloses a means for moving a composite structure to allow different portions thereof to be heated (means for moving / “reel mechanism”; composite structure / “reel 400” shown in Fig. 10; “As shown in FIG. 10, a tape 406 in the form of a spool or reel 400 comprises a plurality of drug supply units 402, 404. The plurality of drug supply units 402, 404 can comprise a heating unit on which is disposed a thin film of a drug or a drug/complex to be thermally vaporized. …. The tape can be advanced in a device using a reel mechanism (not shown) and a spring or other mechanism can be used to actuate the initiator composition by striking” [0114]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a means for moving the composite structure to allow different portions thereof to be heated. This is a known means for moving a composite structure comprising the aerosol generating material, applied to a known device, to achieve predictable results.
Regarding claim 30, Worm does not expressly disclose wherein the composite structure is in the form of an elongate ribbon or band and the means for moving it is a spool.
Hale discloses wherein the composite structure is in the form of an elongate ribbon or band (“reel 400” shown in Fig. 10, and described in the rejection of claim 29) and the means for moving it is a spool (“reel mechanism” described in the rejection of claim 29).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the composite structure is in the form of an elongate ribbon or band and the means for moving it is a spool. These are known elements in an aerosol delivery device, applied to a known device, to achieve predictable results.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 2013/0037041) in view of Counts et al. (US 5,369,723), further in view of Sebastian et al. (US 2014/0000638).
Regarding claim 33, Worm discloses wherein the aerosol generating material comprises water (“In addition to the inhalable substance (e.g., flavors, nicotine, or pharmaceuticals generally), the inhalable substance medium can comprise one or more aerosol-forming or vapor-forming materials, such as a polyhydric alcohol (e.g., glycerin, propylene glycol, or a mixture thereof) and/or water” [0060].
However, Worm does not expressly disclose wherein the aerosol generating material comprises 3-15% water.
Sebastian is directed to an electronic smoking article [Abstract]. Sebastian discloses wherein an aerosol generating material comprises 3-15% water (“A useful aerosol precursor also can comprise up to about 25% by weight, about 20% by weight or about 15% by weight water--particularly about 2% to about 25%, about 5% to about 20%, or about 7% to about 15% by weight water” [0060]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the aerosol generating material comprises 3-15% water. This is a known composition of water in an aerosol generating material, applied to a known device, to achieve predictable results.
Response to Arguments
Applicant's arguments filed 8/28/2026 have been fully considered but they are not persuasive. On page 10, Applicant argues that the “binder” of Counts is not part of an aerosol generating material, since the binder of Counts is used to form a mat, and the mat is used as a carrier to support a tobacco flavor material.
However, the aerosol generating material comprises the tobacco flavor material and the mat. “[T]he binder used to form a mat composed substantially of a matrix of the fibers, can be any type of binder which allows a mat to be formed and which is suitable for use in smoking articles (i.e., having acceptable subjective properties). Some binders having these preferred characteristics include polyvinyl alcohol (PVA), sugars, starches or modified starches, alginates, cellulose-based adhesives, and artificial or natural gums” [Col. 4, line 61 – Col. 5, line 1]. That is, the binder is part of the mat, and the mat is part of the aerosol generating material. Accordingly, the binder is part of the aerosol generating material.
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.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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