DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment to claim 19 and supporting remarks filed 07/07/2026 (“Amendment”) have been entered. Accordingly, the objection to claim 19 and the rejection of claim 29 under 35 USC 103 are withdrawn. The other claim rejections under 35 USC 103 are maintained and a new objection to claim 32 is set forth below. Claim 29 is indicated allowable. Claims 19-36 remain pending, claims 34-36 remain withdrawn, and claims 19-33 are examined herein.
Response to Arguments
Applicant's arguments regarding the rejection of claims 19, 27, and 33 under 35 USC 103 (Amendment p. 7-12) have been fully considered but they are not persuasive.
Regarding claim 19, Applicant argues that the combination of Stefani and Cheong lacks motivation because Stefani discloses preventing combustion at the upstream end, which would be rendered inoperable by incorporating Cheong’s front-end filter segment 421 at the upstream end (Amendment p. 7-10). The Examiner respectfully disagrees. Applicant’s arguments mischaracterize Stefani as placing heightened importance on the upstream end, but one of ordinary skill in the art “taking the disclosure of Stefani as a whole” would recognize that Stefani is generally focused on compositional aspects of the flame retardant wrapper rather than the particular end of the stick where such functionality is provided. One of ordinary skill in the art would not be discouraged from the modification, but would instead recognize that modified Stefani still provides the same flame retardant wrapper 26 surrounding the heated aerosol-generating material 22, and that Cheong discloses its front-end filter segment 421 for use in an aerosol generating device, and thus one would reasonably expect modified Stefani’s stick to be suitable for use in an aerosol generating device without combusting. Furthermore, Cheong discloses that its front-end filter segment 421 may be packaged by a first wrapper 431 and a fifth wrapper 435 ([0075], Fig. 5), so the alleged combustibility problem pointed out by the Applicant would be easily solved by simply including Cheong’s front-end filter segment 421 within Stefani’s wrapper 26, which is within the scope of the modification set forth in the rejection below.
Regarding claim 27, Applicant argues that inherency in Stefani has not been established (Amendment p. 11). The Examiner respectfully disagrees. Inherency has been established because Stefani teaches the wrapper including all of the limitations except the claimed formation of the “carboxylate” and “phosphate”, but these are considered reaction products which necessarily form due to Stefani’s otherwise-identical composition, in the same manner that a property must inherently exist when the prior art teaches the identical composition. See MPEP 2112.01(II); see also in re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Neither claim 27 nor Applicant’s specification identify any compositional differences, nor any particular conditions or steps, which prevent the formation of the carboxylate and phosphate, and thus one of ordinary skill in the art would expect Stefani’s identical composition to similarly react and form the claimed carboxylate and phosphate.
Regarding claim 33, Applicant argues that Malgat does not render claim 33 obvious because it does not cure the deficiencies in the rejection of claim 19 (Amendment p. 11). The Examiner respectfully disagrees because the rejection of claim 19 is not deficient.
Applicant’s arguments with respect to the rejection of claim 29 under 35 USC 103 (Amendment p. 11) have been fully considered and are persuasive. The rejection of claim 29 has been withdrawn and claim 29 is indicated allowable.
Claim Interpretation
The “upstream element” and “filter material” thereof recited in claim 19 are supported by the specification at p. 49 which states, “Suitable materials for forming the upstream element include filter materials, ceramic, polymer material, cellulose acetate, cardboard, zeolite or aerosol-generating substrate” (emphasis added). The specification does not explicitly define “filter materials”, but states that a downstream mouthpiece filter may comprise a “cellulose acetate filter segment” and states that “Suitable fibrous filtration materials would be known to the skilled person” (p. 43). Therefore, for purposes of this office action, the broadest reasonable interpretation of the “filter materials” of the “upstream element” recited in claim 19 includes cellulose acetate and suitable fibrous filtration materials known to one of ordinary skill in the art (as described in the specification), and any other suitable filtration materials (not necessarily fibrous) for an aerosol-generating article known to one of ordinary skill in the art.
Claim Objections
Claim 32 is objected to because it recites “an aerosol former”, which should refer back to “the aerosol-former” introduced in claim 19.
Appropriate correction is required.
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 19-28 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Stefani (WO 2021/205368 A1, of record) in view of Cheong (US 2020/0352220 A1, of record).
Regarding claim 19, Stefani is directed to a paper well suited for use as a wrapper in heat but not burn sticks (Abstract). The stick 14 is received and heated in an aerosol generating device 10 ([0028], Fig. 1).
The stick 14 includes a column of aerosol-generating material 22, which may include a humectant such as glycerol (which reads on an “aerosol former”; see Applicant’s specification p. 17-18) in an amount greater than about 10 wt% [0030, 0035].
The stick 14 may include a filter 20 or mouthpiece 20 [0029], which is downstream of the column of aerosol-generating material 22 as shown in Figs. 1-3 (Fig. 1 reproduced below).
The wrapper 26 surrounds the column of aerosol-generating material 22 [0032]. The wrapper 26 includes a base web having a basis weight [0014].
A reduced ignition composition is applied to the wrapper 26 in an amount which may be greater than about 4 gsm [0009, 0069]. This is the dry (i.e., free of solvents) weight of the coating composition [0069], and thus one of ordinary skill in the art would expect the weight of reduced ignition compounds to be similar to the total composition weight. Stefani’s disclosure therefore overlaps the claimed range and renders it obvious. Additionally, Stefani discloses Example 1 wherein Papers #5-12 contain alginate or microcrystalline cellulose gel compositions with coating levels of 3.4-5.8 gsm, which fall within the claimed range and render it obvious ([0082-86], Table 1).
However, Stefani fails to disclose “an upstream element located upstream of the rod of aerosol-generating substrate, wherein the upstream element is made from a filter material, and wherein the upstream element extends from the aerosol-generating substrate to an upstream end of the aerosol-generating article”.
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Cheong is directed to an aerosol-generating article (Title). The article 400 includes a tobacco rod 410 and a front-end filter segment 421 (“upstream element”) ([0074], Fig. 5). As shown in Fig. 5, the front-end filter segment 421 extends from the tobacco rod 410 to the front end of the article 400, which reads on “an upstream element located upstream of the rod of aerosol-generating substrate, wherein the upstream element is made from a filter material, and wherein the upstream element extends from the aerosol-generating substrate to an upstream end of the aerosol-generating article” as claimed (see also Abstract disclosing the “front-end filter segment arranged at an upstream end”).
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Cheong’s front-end filter segment 421 advantageously prevents the tobacco rod 410 from being detached and prevents aerosol from flowing out the front end into an electronic device [0103, 0108]. One of ordinary skill in the art would recognize that Cheong’s front-end filter segment 421 could similarly be used to prevent Stefani’s column of aerosol-generating material 22 from being detached and to prevent aerosol from flowing out the front end of Stefani’s stick 14 into the device 10 (compare Cheong Fig. 5 with Stefani Fig. 1).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Stefani’s stick 14 by incorporating Cheong’s front-end filter segment 421 upstream of Stefani’s column of aerosol-generating material 22 (resulting in the front-end filter segment 421 forming the upstream end of Stefani’s modified stick 14), because both Stefani and Cheong are directed to aerosolization articles, Cheong teaches that this advantageously prevents a tobacco rod from being detached and prevents aerosol from flowing out the front end into an electronic device, and this would involve the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 20, Stefani’s reduced ignition composition may be applied in an amount greater than about 4 gsm [0069], as set forth above, which overlaps the claimed range and renders it obvious. Additionally, Papers #5-12 of Example 1 all disclose coating levels of 3.4-5.8 gsm which fall within the claimed range, as set forth above ([0082-86], Table 1).
Regarding claim 21, in one embodiment, the reduced ignition composition may be applied in an amount of about 1-5 gsm [0069], which overlaps the claimed range and renders it obvious. Additionally, Papers #5-12 of Example 1 all disclose coating levels of 3.4-5.8 gsm which fall within the claimed range, as set forth above ([0082-86], Table 1).
Regarding claims 22-23, Stefani discloses Example 1 wherein Papers #1, 5-12 with basis weights of 31, 38, 39, and 40 gsm are disclosed, all of which fall within the claimed ranges ([0082-86], Table 1).
Regarding claims 24-25, the reduced ignition composition may be coated onto 100% of one side of the base web [0067]. One of ordinary skill in the art would recognize that the two sides of the base web form outer and inner surfaces of the wrapper around the column, and thus the coated side could be the outer surface, which reads on “wherein the treated portion extends over at least about 90 percent of an outer surface area of the rod of aerosol-generating substrate” per claim 24 and “wherein a length of the treated portion is at least about 90 percent of a length of the rod of aerosol-generating substrate” per claim 25.
Regarding claim 26, the reduced ignition composition may be coated onto 100% of one side of the base web, as set forth above [0067]. The composition may alternatively be applied to both sides of the base web [0053]. In either case, one of ordinary skill in the art would recognize that the two sides of the base web form outer and inner surfaces of the wrapper around the column, and thus coating either side or both sides would read on the claim.
Regarding claim 27, Stefani discloses that any suitable ignition reducing composition can be coated onto the wrapper, particularly alginate which includes calcium, sodium, potassium, and/or magnesium salts of high molecular weight polysaccharides [0054-55] (which reads on “a polymer and a mixed salt based on…a hydroxide or a salt of an alkali or an alkaline earth metal”). Stefani also discloses burn control agents applied to the wrapper which include a salt of a carboxylic acid and phosphoric acid [0048]. Stefani is silent on formation of a “carboxylate” and a “phosphate” as claimed, but these are compounds formed by reaction of the precursors present in Stefani’s chemical composition, and thus their presence is inherent. See MPEP 2112.01(II); see also in re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 28, the reduced ignition composition may include calcium carbonate [0063-64].
Regarding claim 30, Stefani does not disclose that the wrapper comprises metal.
Regarding claim 31, Stefani discloses the wrapper and the heat but not burn stick as set forth above. The stick 14 may have a length of about 1-25 cm (i.e., 10-250 mm) [0036]. However, Stefani is silent on the length of the substrate within and fails to explicitly disclose “wherein the rod of aerosol-generating substrate has a length of less than about 40 millimeters”. But when the total stick length is 10-40 mm, the length of the rod portion must be less than or equal to 40 mm. Thus, Stefani’s disclosure overlaps the claimed range and therefore renders it obvious. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 32, Stefani discloses a gathered sheet of aerosol generating material [0004], which may be homogenized tobacco [0030].
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Stefani (WO 2021/205368 A1, of record) in view of Cheong (US 2020/0352220 A1, of record) as applied to claim 19, further in view of Malgat (WO 2017/153443 A1, of record).
Stefani discloses the wrapper 26 surrounding the column of aerosol-generating material 22 as set forth above [0032]. However, Stefani fails to disclose “wherein the rod of aerosol-generating substrate further comprises a susceptor element arranged within the aerosol-generating substrate.”
Malgat is directed to an aerosol-generating article comprising an aerosol-forming substrate and an elongate susceptor within the substrate (Abstract). Such arrangements are known means for heating the substrate when the article is inserted into an electrically operated aerosol generating device (p. 1 l. 8-29). One of ordinary skill in the art would recognize that a susceptor could predictably be inserted into Stefani’s column of aerosol-generating material 22 to provide heating functionality with an aerosol generating device.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Stefani by incorporating a susceptor into the column of aerosol-generating material 22, because both Stefani and Malgat are directed to aerosol-generating articles, Malgat teaches that this allows heating via an electrically operated aerosol generating device, and this involves the use of a known technique to improve a similar device in the same way. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claim 29 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach or suggest “wherein the flame retardant composition comprises cellulose modified with at least one of a C10 or higher fatty acid, a tall oil fatty acid (TOFA), a phosphorylated linseed oil, and a phosphorylated downstream corn oil” as recited in claim 29. Stefani (WO 2021/205368 A1, of record) and Adams (EP 0231664 B1, of record) are the closest art of record.
Stefani teaches that the reduced ignition composition can comprise cellulose or cellulose derivatives such as CMC or ethyl cellulose [0054], but fails to disclose “cellulose modified with at least one of a C10 or higher fatty acid, a tall oil fatty acid (TOFA), a phosphorylated linseed oil, and a phosphorylated downstream corn oil” as claimed.
Adams teaches palmitic acid (“a C10 or higher fatty acid” per Applicant’s specification at p. 42) for use as a blocking material which partially melts to unblock an aperture and control ventilation (p. 3 l. 54-p. 4 l. 17), and Adams teaches including low amounts of cellulose materials as well (p. 4 l. 26-36, p. 6 l. 44-46). However, Adams fails to specifically teach or suggest “cellulose modified with…a C10 or higher fatty acid” as claimed (emphasis added; see Amendment p. 11).
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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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.
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/MICHAEL PATRICK MULLEN/
Examiner, Art Unit 1747
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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