DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-2, 4-7, 9-10, and 12-20 are pending. Claims 10 and 12-19 are withdrawn. Claim 1 has been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 3/9/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s amendments to claim 1 overcome the 35 U.S.C. 112(b) rejections noted in the prior Office action.
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
Applicant argues that the use of additive manufacturing gives clear and easily recognizable structural and physical features, “[i]n particular, using additive manufacturing forms a unitary aerosol-generating component in which the portions are attached to one another and cannot be readily separated from one another. This is in contrast, for example, to a component that is made by forming separate portions that are subsequently attached to one another, for example, by a bonding or fusing step” (Page 5 of the Remarks). This argument is not persuasive as the clearly distinct features Applicant alleges (i.e., “the portions are attached to one another and cannot be readily separated from one another”) are also present in Applicant’s allegedly contrasting example, as Applicant states that in the contrasting example “portions . . are . . . attached to one another” and they cannot be readily separated (as they are “bond[ed] or fus[ed]”).
Applicant further argues “that the active ingredient of tobacco is nicotine, and JPH350892 provides no disclosure, teaching or suggestion of any other actives, [therefore] JPH350892 does not disclose, teach, or suggest the claimed feature of a first portion comprising a first active and a second portion comprise a second active that is different to the first active as recited in amended claim 1” because the different portions of JPH’892 are merely different tobacco leaves (Page 7 of the Remarks). This argument is not persuasive as Applicant’s Specification sets forth that “the active substance may comprise . . . one or more botanicals or constituents, derivatives or extracts thereof. As used herein, the term ‘botanical’ includes . . . leaves”, Page 4, Lines 13-16 of Applicant’s Specification as originally filed). As such, while nicotine is indeed a constituent of tobacco leaves, the broadest reasonable interpretation of “active” which is consistent with the specification is not limited to a single chemical compound such as nicotine but also encompasses a “lea[f]”. As the first and second portions of JPH’892 comprise different tobacco leaves, the first and second active portions of JPH’892 comprise different actives.
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.
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 1-7, 9, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over JPH 0350892 U (hereinafter JPH‘892, a copy of which was provided by Applicant with IDS filed 6/14/2024, using the translation previously provided on 5/20/2025 for reference) in view of Emmett (US 2018/0177222 A1).
Regarding claim 1, JPH’892 discloses a unitary aerosol-generating component (cigarette of Fig. 1) comprising at least two distinct portions (“2 strong” and “3 middle” portions in Fig. 1), of which a first portion (“2 strong”) and a second portion (“3 middle) comprise different aerosol-generating materials (“2, 3, and 4 each contain a different type of tobacco leaf”, paragraph under “[Example]”), wherein the first portion comprises a first active (the “first active” is considered to be the particular type of tobacco leaf used in the first portion) and the second portion comprises a second active (the “second active” is considered to be the particular type of tobacco leaf used in the second portion) that is different to the first active (“2, 3, and 4 each contain a different type of tobacco leaf”, paragraph under “[Example]”).
JPH’892 does not explicitly disclose wherein the component is formed by an additive manufacturing process using a first feedstock material to form the first portion and a second feedstock material to form the second portion and laying down the feedstock materials layer upon layer such that the first portion and the second portion are attached to one another to form the unitary component and cannot be readily separated.
Emmett, in the same field of endeavor, forms unitary aerosol-generating components (“filler particle 10”, Fig. 1, ¶ 0031) by an additive manufacturing process (“supplying the slurry to a print head of an additive manufacturing system; and dispensing the slurry by means of the print head to form successive layers of the tobacco object”, ¶ 0006) using a feedstock material (“slurry”, ¶ 0006) and laying down the feedstock material to form the unitary component and cannot be readily separated (Emmett discloses using a “binder” in the feedstock material, ¶ 0013, 0017). There was a benefit to using the additive manufacturing process of Emmett in that can form unitary aerosol-generating components from recovered tobacco dust with improved energetic efficiency (¶ 0005 of Emmett). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the aerosol-generating component of JPH’892 using the additive manufacturing process of Emmett with a first feedstock material (corresponding to the first active) to form the first portion and a second feedstock material (corresponding to the second active) to form the second portion and laying down the feedstock materials layer upon layer such that the first portion and the second portion are attached to one another to form the unitary component and cannot be readily separated, in order to obtain this benefit.
Regarding claim 2, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. JPH’892 further discloses wherein the first portion comprises a first flavor (“strong”) and the second portion comprises a second flavor (“middle”) that is different to the first flavor (“by partially changing the leaves, it is possible to vary the flavor”, paragraph under “[Effect of Idea]”).
Regarding claim 4, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. JPH’892 further discloses using first and second portions having different pH (JPH’892 discloses using “a different type of tobacco leaf” for each portion, and different types of tobacco leaves have different pH1).
Regarding claim 5, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. JPH’892 further discloses wherein the first and second portions deliver different aerosols when used (“strong” and “middle”).
Regarding claim 6, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. JPH’892 further discloses wherein the first and second portions have different aerosol release profiles (“strong” and “middle”).
Regarding claim 7, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. JPH’892 further discloses wherein the first and second portions are aligned in series (see Fig. 1).
Regarding claim 9, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. With regards to the unitary aerosol-generating component being intended to be used in a non-combustible aerosol provision system, as the unitary component of JPH’892 in view of Emmett could be used in such a system, the claim limitation is satisfied.
Regarding claim 20, JPH’892 in view of Emmett discloses the unitary aerosol-generating component of claim 1 as discussed above. With regards to the unitary aerosol-generating component being intended to be used in a combustible aerosol provision system, as the unitary component of JPH’892 in view of Emmett could be used in such a system, the claim limitation is satisfied.
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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
1 “Variability in the acid-base nature of commercially available tobacco leaf is considerable” and “Simple adjustment of the tobacco blend can therefore produce a considerable range of acid or base content”, Centers for Disease Control and Prevention (US); National Center for Chronic Disease Prevention and Health Promotion (US); Office on Smoking and Health (US). How Tobacco Smoke Causes Disease: The Biology and Behavioral Basis for Smoking-Attributable Disease: A Report of the Surgeon General. Atlanta (GA): Centers for Disease Control and Prevention (US); 2010. 3, Chemistry and Toxicology of Cigarette Smoke and Biomarkers of Exposure and Harm. Page 34. Available from: https://www.ncbi.nlm.nih.gov/books/NBK53014/ (“CDC”) (retrieved online 05/15/2025) (a copy of which was previously provided on 05/20/2025).
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