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 Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 (“Amendment”) has been entered. Accordingly, the claim rejections under 35 USC 103 are withdrawn; new claim rejections under 35 USC 103 and a new claim objection are set forth below. Claims 22-42 remain pending. Claims 40-42 remain withdrawn. Claims 22-39 are examined herein.
Response to Arguments
Applicant’s arguments regarding the claim rejections under 35 USC 103 (Amendment p. 8-11) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
The “upstream element” and “filter material” thereof recited in claim 22 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 22 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 22 is objected to because it recites “the upstream end of the aerosol-generating article” which was not previously introduced. The Examiner recommends amending the claim to recite “an upstream end of the aerosol-generating article”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 22-33, 35-37, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, previously cited) in view of Cheong (US 2020/0352220 A1).
Regarding claim 22, Stefani discloses a wrapper with a reduced ignition coating useful in heat-but-not-burn sticks (Abstract). The stick is received and heated in an aerosol generating device ([0032], Fig. 1).
The stick includes a column of aerosol-generating material (a “rod” as claimed), a filter (“downstream section”) at a downstream end, and the wrapper (“wrapper”) surrounding the column and treated with the reduced ignition composition ([0020, 0033-34, 0036], Figs. 1-3, Fig. 1 reproduced below showing stick 14, column 22, filter 20, wrapper 26, and device 10). The reduced ignition composition is coated continuously on one side of the base web of the wrapper, which in a particular embodiment means 100% area coverage [0016, 0071]. One of ordinary skill in the art would recognize that the two sides of the base web would form outer and inner surfaces of the wrapper around the column, and thus coating 100% of the one side 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” as claimed.
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 the 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 the 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 from being detached and to prevent aerosol from flowing out the front end of Stefani’s stick into the device (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 by incorporating Cheong’s front-end filter segment 421 upstream of Stefani’s column of aerosol-generating material (resulting in the front-end filter segment 421 forming the upstream end of Stefani’s modified stick), 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 claims 23-24, Stefani discloses applying the reduced ignition coating to 100% of the outer surface of the wrapper, as set forth above [0071]. More specifically, Stefani discloses that the coating can cover greater than about 90%, 95%, 98%, or can cover 100% of the surface area of one side of the base web [0071].
Regarding claim 25, Stefani discloses the base web formed into a wrapper and coated with a reduced ignition composition, as set forth above. The web has a basis weight of 30-100 gsm [0050], and the coating has a basis weight of 1-10 gsm [0073], which yields a weight ratio of approximately 0.01-0.25. However, this is the ratio of the weight of the composition to the overall wrapper weight, not the weight of the “compounds” as claimed. Stefani is silent on the weight of flame retardant compounds within the composition. But Stefani discloses ranges of coating weight, permeability, and diffusivity [0073-77], and from these, one of ordinary skill in the art would recognize that both the amount of overall coating and the amount of flame retardant compounds within the coating are result-effective variables regarding permeability and diffusivity, and would accordingly optimize the amount of flame retardant compounds to be within the claimed range. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 26, the coating has a basis weight of about 0.5-10 gsm [0073], which slightly overlaps the claimed range (particularly due to the use of “about” in both Stefani and claim 26) 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 27, the coating has a basis weight of 1-10 gsm [0073], which entirely lies within the claimed range and therefore renders it obvious.
Regarding claim 28, the coating has a basis weight of 0.5-10 gsm [0073]. However, this is the weight of the composition, not the weight of the “compounds” as claimed. Stefani is silent on the weight of flame retardant compounds within the composition. But Stefani discloses ranges of coating weight, permeability, and diffusivity [0073-77], and from these, one of ordinary skill in the art would recognize that both the amount of overall coating and the amount of flame retardant compounds within the coating are result-effective variables regarding permeability and diffusivity, and would accordingly optimize the amount of flame retardant compounds to be within the claimed range. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 29, Stefani discloses a broad range for the basis weight of the web which is 30-100 gsm [0050], which entirely lies within the range of claim 29 and thus renders it obvious.
Regarding claim 30, the web can have a basis weight of 33-45 gsm [0050], and Stefani discloses exemplary Papers #5-12 with basis weights of 31, 38, or 39 gsm (0086-90], Table 1), each of which renders obvious the claimed range.
Regarding claim 31, Stefani discloses applying the reduced ignition coating to the outer surface of the wrapper, as set forth above [0071].
Regarding claim 32, 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 [0058-59] (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 [0052]. 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 33, Stefani discloses that the reduced ignition composition may include about 3-8% calcium carbonate particles [0067].
Regarding claim 35, Stefani does not disclose that the wrapper comprises metal.
Regarding claim 36, Stefani’s stick has a total length of 10-250 mm [0040]. 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 of rod length and renders it obvious. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Stefani discloses that the column 22 of aerosol generating material can be one or more tobacco materials [0034] (which reads on “wherein the rod of aerosol-generating substrate has…an aerosol former content of at least about 10 percent on a dry weight basis”).
Regarding claim 37, Stefani discloses a gathered sheet of aerosol generating material [0004], which may be homogenized tobacco [0034].
Regarding claim 39, Stefani discloses a combustion test, wherein the disclosed stick is capable of self-extinguishing in one minute or less [0080-84]. However, Stefani’s combustion test differs from the claimed limitation and thus Stefani fails to disclose that the stick does not ignite “when the aerosol-generating article is heated at 500 degrees Celsius using a resistively heated coil for at least 5 seconds” as claimed. But the claimed limitation is considered to be a mere property of a chemical composition which is inherent in the same prior art composition. See MPEP 2112.01(II); see also in re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Stefani discloses the aerosol-generating article according to claim 22, and thus Stefani’s article would inherently not ignite when “heated at 500 degrees Celsius using a resistively heated coil for at least 5 seconds” as claimed.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1) in view of Cheong (US 2020/0352220 A1) as applied to claim 22, further in view of Adams (EP 0231664 B1, previously cited).
Modified Stefani discloses the aerosol-generating article according to claim 22 as set forth above. Stefani discloses that the reduced ignition composition can include various forms of cellulose [0012], but fails to disclose “cellulose modified with at least one C10 or higher fatty acid, tall oil fatty acid (TOFA), phosphorylated linseed oil, phosphorylated downstream corn oil” as claimed.
Adams is directed to smoking rod wrappers and compositions for their production (Title). The wrapper has apertures blocked by a blocking material, which partially melts to unblock the apertures to give adequate ventilation (p. 3 l. 54-p.4 l. 5). Palmitic acid is a preferred material to achieve the desired melting point (p. 4 l. 10-17) (Applicant’s specification at p. 42 lists palmitic acid as a C10 or higher fatty acid). One of ordinary skill in the art would recognize that palmitic acid could predictably be blended into Stefani’s reduced ignition composition to provide melt point and permeability controls. 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).
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 palmitic acid into the reduced ignition composition, because both Stefani and Adams are directed to burn-controlling compositions for smokeable wrappers, Adams teaches that palmitic acid provides adequate melting point and permeability, 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).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1) in view of Cheong (US 2020/0352220 A1) as applied to claim 22, further in view of Malgat (WO 2017/153443 A1, previously cited).
Stefani discloses the wrapper surrounding the column of aerosol-generating material 22 as set forth above [0036]. However, Stefani fails to disclose “wherein the rod of aerosol-generating substrate further comprises a susceptor element arranged within the aerosol-generating substrate.”
Malgat discloses 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 tobacco rod 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 wrapper within the column of aerosol-generating material, 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).
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.
Claims 22-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 21-28, and 31 of copending Application No. 17/998,764 (reference application) in view of Stefani (US 2021/0307381 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims in view of Stefani render the instant claims obvious.
Regarding claim 22, reference claim 18 recites an aerosol-generating article for producing an inhalable aerosol upon heating, the aerosol-generating article comprising: a rod of aerosol-generating substrate (which reads on the claimed “rod”), a downstream section at a location downstream of the rod of aerosol-generating substrate; 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 the upstream end of the aerosol-generating article; and a wrapper circumscribing at least the rod of aerosol-generating substrate. Reference claim 24 further recites that the wrapper comprises a wrapping base material (which together reads on the claimed “wrapper”). Reference claim 18 recites that the wrapper comprises a flame retardant composition comprising one or more flame retardant compounds, and reference claim 24 recites a wrapper layer comprising the flame retardant composition (which reads on “wherein at least a treated portion of the wrapper…” as claimed). The reference claims fail to specify the area coverage of the flame retardant compounds and thus fail to disclose “wherein the treated portion extends over at least about 90 percent of an outer surface area of the rod of aerosol-generating substrate”. Since the reference claims are silent on the amount of flame retardant compounds, one of ordinary skill in the art seeking to implement the disclosure of the reference claims would look to the prior art for guidance on such amounts.
Stefani is directed to a non-combustible wrapper for use in heat not burn applications (Title). The wrapper is treated with a reduced ignition composition coated continuously on one side of the base web of the wrapper, which in a particular embodiment means 100% area coverage [0016, 0071]. The coating generally covers greater than 40% and up to 100% of the surface area of one side of the base web, and the amount of coating can vary depending upon the particular application [0016, 0071]. One of ordinary skill in the art would recognize that the two sides of the base web would form outer and inner surfaces of the wrapper around the column, and thus coating 40-100% of the one side overlaps “wherein the treated portion extends over at least about 90 percent of an outer surface area of the rod of aerosol-generating substrate” as claimed. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims by coating the flame retardant compounds over 90-100% of the outer surface area, because both the reference claims and Stefani are directed to wrappers for aerosol-generating articles, the reference claims are silent on the amount of flame retardant compounds to apply whereas Stefani teaches selecting the coating amount within a range of 40-100% based on the particular application (which overlaps the claimed range), and this involves combining prior art elements according to known methods to yield predictable results. 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 23, the reference claims fail to disclose “wherein a length of the treated portion is at least about 90 percent of a length of the rod of aerosol-generating substrate”.
Stefani discloses an area coating of 40-100% as set forth above. One of ordinary skill in the art would expect Stefani’s coating to be applied evenly across its length (Stefani does not specify any difference between area and length coating coverage), and thus the disclosure of 40-100% area coverage similarly overlaps the claimed 90% length coverage. Furthermore, Stefani’s disclosure of 100% area coverage would necessarily include 100% length coverage. Thus, the modified reference claims as set forth above read on claim 23.
Regarding claim 24, the reference claims fail to disclose “wherein the treated portion extends over the entirety of the outer surface area of the rod of aerosol-generating substrate”.
Stefani discloses the coating covering 40-100% of one side of the base web, as set forth above. More specifically, Stefani discloses that the coating can cover greater than about 90%, 95%, 98%, or can cover 100% of the surface area of one side of the base web [0071].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims by applying the flame retardant compounds to 100% of the outer surface area of the rod, for the same reasons as set forth above in the discussion of claim 22.
Regarding claim 25, the reference claims fail to disclose “wherein a ratio of total weight of the one or more flame retardant compounds to an overall basis weight of the wrapper is at least about 0.02” as claimed.
Stefani discloses the base web formed into a wrapper and coated with a reduced ignition composition, as set forth above. The web has a basis weight of 30-100 gsm [0050], and the coating has a basis weight of 1-10 gsm [0073], which yields a weight ratio of approximately 0.01-0.25. However, this is the ratio of the weight of the composition to the overall wrapper weight, not the weight of the “compounds” as claimed. Stefani is silent on the weight of flame retardant compounds within the composition. But Stefani discloses ranges of coating weight, permeability, and diffusivity [0073-77], and from these, one of ordinary skill in the art would recognize that both the amount of overall coating and the amount of flame retardant compounds within the coating are result-effective variables regarding permeability and diffusivity, and would accordingly optimize the amount of flame retardant compounds to be within the claimed range. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so that a ratio of total weight of the one or more flame retardant compounds to an overall basis weight of the wrapper is at least about 0.02, for the same reasons as discussed above in the discussion of claim 22, and further because this is routine optimization.
Regarding claim 26, the reference claims fail to disclose “wherein the treated portion comprises at least about 10 grams of the flame retardant composition per square meter of surface area of the treated portion”.
Stefani teaches providing the coating to have a basis weight of about 0.5-10 gsm [0073], which slightly overlaps the claimed range (particularly due to the use of “about” in both Stefani and claim 26) and therefore renders it obvious. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so the flame retardant composition is applied in an amount of at least about 10 grams per square meter, for the same reasons as discussed above in the discussion of claim 22.
Regarding claim 27, the reference claims fail to disclose “wherein the treated portion comprises less than or equal to about 35 grams of the flame retardant composition per square meter of surface area of the treated portion”
Stefani teaches providing the coating to have a basis weight of 1-10 gsm [0073], which entirely lies within the claimed range.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so the flame retardant composition is applied in an amount of less than about 35 grams per square meter, for the same reasons as discussed above in the discussion of claim 22.
Regarding claim 28, the reference claims fail to disclose “wherein the treated portion comprises at least about 0.1 grams of the flame retardant compound or compounds per square meter of surface area of the treated portion”.
Stefani’s coating has a basis weight of 0.5-10 gsm [0073]. However, this is the weight of the composition, not the weight of the “compounds” as claimed. Stefani is silent on the weight of flame retardant compounds within the composition. But Stefani discloses ranges of coating weight, permeability, and diffusivity [0073-77], and from these, one of ordinary skill in the art would recognize that both the amount of overall coating and the amount of flame retardant compounds within the coating are result-effective variables regarding permeability and diffusivity, and would accordingly optimize the amount of flame retardant compounds to be within the claimed range. See MPEP 2144.05(II); see also in re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so that the flame retardant compounds are applied in an amount of at least about 0.1 grams per square meter, for the same reasons as discussed above in the discussion of claim 22, and further because this is routine optimization.
Regarding claim 29, the reference claims fail to disclose “wherein the basis weight of the wrapping base material is at least about 20 grams per square meter”.
Stefani discloses a broad range for the basis weight of the web which is 30-100 gsm [0050], which entirely lies within the range of claim 29 and thus renders it obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so that the basis weight of the wrapping base material is at least about 20 grams per square meter, for the same reasons as discussed above in the discussion of claim 22, and further because the reference claims are silent on the weight of the wrapping base material and thus one of ordinary skill in the art would look to the prior art for such detail.
Regarding claim 30, the reference claims fail to disclose “wherein the basis weight of the wrapping base material is less than or equal to about 40 grams per square meter”.
Stefani discloses a broad range for the basis weight of the web which is 30-100 gsm [0050], which overlaps the range of claim 30 and thus renders it obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the reference claims so that the basis weight of the wrapping base material is less than or equal to about 40 grams per square meter, for the same reasons as discussed above in the discussion of claim 22, and further because the reference claims are silent on the weight of the wrapping base material and thus one of ordinary skill in the art would look to the prior art for such detail.
Regarding claim 31, reference claim 24 recites wherein the wrapper further comprises a layer comprising the flame retardant composition provided on a surface of the wrapping base material facing the aerosol-generating substrate, a surface of the wrapping base material facing away from the aerosol-generating substrate, or both, which reads on claim 31.
Regarding claim 32, reference claim 25 recites the same limitations.
Regarding claim 33, reference claim 26 recites the same limitations.
Regarding claim 34, reference claim 27 recites the same limitations.
Regarding claim 35, reference claim 31 recites the same limitations.
Regarding claim 36, reference claim 28 recites the substrate having a length of less than about 40 millimeters, and reference claim 18 recites the substrate having an aerosol former content of at least about 10 percent on a dry weight basis.
Regarding claim 37, reference claim 21 recites wherein the rod of aerosol-generating substrate comprises a gathered sheet of homogenised tobacco material, and reference claim 22 recites a gel composition, the gel composition comprising at least one gelling agent, at least one of an alkaloid compound and a cannabinoid compound, and an aerosol former.
Regarding claim 38, reference claim 23 recites the same limitations.
Regarding claim 39, the claimed limitation is considered to be a mere property of a chemical composition which is inherent in the same prior art composition. See MPEP 2112.01(II); see also in re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The modified reference claims disclose the aerosol-generating article according to claim 22 as set forth above, and thus the reference article would inherently not ignite when “heated at 500 degrees Celsius using a resistively heated coil for at least 5 seconds” as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hwang (US 2021/0000175 A1) discloses a cigarette and aerosol generation device for cigarette (Title) which is considered particularly relevant to the “upstream element” of claim 22. Hwang discloses a front-end plug 33 adjacent to a front end of a tobacco rod 31 ([0028-30], Figs. 1-3), the front-end plug 33 being formed of cellulose acetate [0056]. The front-end plug 33 may prevent the tobacco rod 31 from falling off, prevent aerosol from flowing into an electronic apparatus 1 [0030], and may have porosity configured to cool airflow and thus increase nicotine transfer [0055].
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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747