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 18 and supporting remarks filed on 06/12/2026 (“Amendment”) have been entered. Accordingly, the objection to claim 18 and the claim rejections under 35 USC 103 are withdrawn. A new objection to claim 22 and new rejections under 35 USC 103 are set forth below. Claim 27 is indicated allowable. Claims 18-34 remain pending. Claims 21 and 32-34 remain withdrawn. Claims 18-20 and 22-31 are examined herein.
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 18 and 27 under 35 USC 103 (Amendment p. 8-12) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn and claim 27 is indicated allowable. However, upon further consideration, a new ground of rejection is made for claim 18 in view of Stefani, Cheong, and Renaud as set forth below.
Claim Interpretation
The “upstream element” and “filter material” thereof recited in claim 18 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 18 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 “an aerosol former”, which should refer back to “the aerosol-former” introduced in claim 18.
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 18-20, 24, and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, of record) in view of Renaud (US 2012/0006343 A1, of record) and Cheong (US 2020/0352220 A1, of record).
Regarding claim 18, Stefani is directed to a paper well suited for use as a wrapper in heat but not burn sticks (Abstract). The stick 14 (“aerosol-generating article”) is received and heated in an aerosol generating device 10 ([0028], Fig. 1).
The stick 14 includes a column of aerosol-generating material 22 (“rod of aerosol-generating substrate”), which may include a humectant such as glycerol (which reads on an “aerosol former”; see Applicant’s specification p. 16-17) in an amount greater than about 10 wt% [0030, 0035]. The aerosol-generating material 22 may be homogenized tobacco [0034].
The stick 14 may include a filter 20 or mouthpiece 20 (“downstream section”) [0029], which is downstream of the column of aerosol-generating material 22 as shown in Figs. 1-3.
The wrapper 26 (“wrapper”) surrounds the column of aerosol-generating material 22 [0032].
A reduced ignition composition is applied to the wrapper 26 [0009, 0069] (which reads on “wherein the wrapper comprises a flame retardant composition comprising one or more flame retardant compounds”).
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” and “wherein a density of the aerosol-generating substrate is greater than about 300 milligrams per cubic centimeter”.
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”) (see also Abstract disclosing the “front-end filter segment arranged at an upstream end”). 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 homogenized tobacco aerosol-generating substrate 22 located at an upstream end from being detached and to prevent aerosol from flowing out the front end thereof (compare Cheong Fig. 5 with Stefani Fig. 1).
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Renaud is directed to an aerosol-generating substrate for smoking articles which includes strands of homogenized tobacco material (Title, Abstract). The density of the homogenized tobacco material determines the packing efficiency and mass-to-surface ratio of its strands [0040-42], which affects their heating performance and resistance to combustion [0034-36], and the density is preferably about 1100-1500 mg/cm³ [0044] (which reads on “wherein a density of the aerosol-generating substrate is greater than about 300 milligrams per cubic centimeter”). One of ordinary skill in the art would be motivated to similarly provide Stefani’s homogenized tobacco aerosol-generating material 22 with a density of about 1100-1500 mg/cm³, in order to improve the heating performance and resistance to combustion, and because Stefani is silent on the density of its homogenized tobacco.
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 (1) by incorporating Cheong’s front-end filter segment 421 upstream of Stefani’s homogenized tobacco aerosol-generating material 22 (such that the front-end filter segment 421 defines the upstream end of the stick 14), and (2) providing Stefani’s homogenized tobacco aerosol-generating material 22 with a density of about 1100-1500 mg/cm³ as taught by Renaud, because Stefani, Cheong, and Renaud are directed to aerosol-generating articles, Cheong teaches that this prevents interior components from falling or leaking out and prevents aerosol from flowing out the front end into an electronic device, Renaud teaches the preferred range of density in order to improve the heating performance and resistance to combustion, and this would involve 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 claims 19-20, modified Stefani discloses the homogenized tobacco aerosol-generating material 22 with a density of about 1100-1500 mg/cm³ as set forth above (which reads on “greater than about 350 milligrams per cubic centimeter” per claim 19 and “greater than about 400 milligrams per cubic centimeter” per claim 20).
Regarding claim 24, Stefani discloses that a base web of the wrapper 26 is coated on one or both sides with the reduced ignition composition (Abstract, [0009-10]), which reads on the claim language.
Regarding claim 30, the length of Stefani’s stick 14 can generally be from about 1 cm to about 25 cm [0040] (which overlaps the claimed range of “less than about 70 millimeters” and therefore renders it obvious).
Regarding claim 31, Stefani discloses the base web which is made from cellulosic fibers (Abstract). Stefani does not disclose that the wrapper comprises metal, which reads on the claim language.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, of record) in view of Renaud (US 2012/0006343 A1, of record) and Cheong (US 2020/0352220 A1, of record) as applied to claim 18, further in view of Engqvist (US 2021/0059307 A1).
Stefani discloses that the aerosol-generating material 22 may be homogenized tobacco (“an alkaloid compound”, see Applicant’s specification at p. 19 explaining that nicotine is an alkaloid compound) as set forth above [0034]. Stefani discloses that the column of aerosol-generating material 22 may include a humectant such as glycerol (“aerosol former”) as set forth above [0030, 0035], but fails to disclose that the column of aerosol-generating material 22 “comprises a gel composition, the gel composition comprising at least one gelling agent”. Stefani discloses that the tobacco material can also be combined with other tobacco types and non-tobacco materials [0034-35].
Engqvist is directed to evaporation devices containing plant material for delivering aerosol to a user (Title, Abstract), which is in the same field of endeavor as the claimed invention. The plant material may be incorporated into a carrier material and surrounded by a gel [0017, 0154, 0171], and the carrier material may include gelating agents [0171] (which reads on a “gel composition comprising at least one gelling agent”). The carrier material advantageously delivers controlled quantities of aerosol to a user [0001, 0005-15]. One of ordinary skill in the art would recognize that Stefani’s column of aerosol-generating material 22 could similarly be arranged with a carrier material surrounded by a gel, which reads on the claim language.
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 by arranging Stefani’s column of aerosol-generating material 22 with a carrier material surrounded by a gel as taught by Engqvist, because Stefani and Engqvist are both in the same field of endeavor as the claimed invention, Stefani teaches including other non-tobacco materials and Engvist teaches arranged tobacco in a carrier material surrounded by a gel to control its dosage, and this would involve 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).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, of record) in view of Renaud (US 2012/0006343 A1, of record) and Cheong (US 2020/0352220 A1, of record) as applied to claim 18, further in view of Malgat (WO 2017/153443 A1, of record).
Stefani discloses a heating device 16 which can comprise any suitable heating device for producing an aerosol and may be inside the aerosol generating material [0032]. However, Stefani fails to disclose that the column of aerosol-generating material 22 “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 column of aerosol-generating material 22 to provide inductive heating functionality.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Stefani by configuring its heating device 16 as a susceptor inserted into the column of aerosol-generating material 22 as taught by Malgat, because both Stefani and Malgat are in the same field of endeavor as the claimed invention, Malgat teaches that the susceptor allows for inductive heating with 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).
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, of record) in view of Renaud (US 2012/0006343 A1, of record) and Cheong (US 2020/0352220 A1, of record) as applied to claim 18, further in view of Westin (WO 2017/135862 A1, of record).
Stefani discloses the reduced ignition composition as set forth above, but fails to disclose “wherein the flame retardant composition further comprises a polymer and a mixed salt based on at least one mono, di- and/or tri-carboxylic acid, at least one polyphosphoric, pyrophosphoric, and/or phosphoric acid, and a hydroxide or a salt of an alkali or an alkaline earth metal, where the at least one mono, di- and/or tri-carboxylic acid and the hydroxide or salt form a carboxylate and the at least one polyphosphoric, pyrophosphoric, and/or phosphoric acid and the hydroxide or salt form a phosphate” per claim 25 and “wherein the flame retardant composition further comprises a carbonate of an alkali or an alkaline earth metal” per claim 26.
Westin is directed to a polymer composition comprising a fire suppressant (Title), which is reasonably pertinent to the problem faced by the inventors of the instant application (i.e., flame retardation). The composition includes a polymer and a fire suppressant in form of a mixed salt based on a) at least one mono-, di- and/or tri-carboxylic acid, b) at least one polyphosphoric, pyrophosphoric and/or phosphoric acid, c) a hydroxide or a salt of an alkali or an alkaline earth metal, where a) and c) form a carboxylate and b) and c) form a phosphate and optionally d) a carbonate of an alkali or an alkaline earth metal (Abstract). This composition suppresses both fire and smoke, may efficiently and evenly be incorporated into polymer resins, and maintains its physical properties (p. 3, 3rd paragraph). One of ordinary skill in the art would recognize that Westin’s fire suppressant performs a similar function as Stefani’s reduced ignition composition, and thus Stefani’s reduced ignition composition could predictably incorporate Westin’s chemical composition to provide fire suppression characteristics.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Stefani by including Westin’s polymer composition in Stefani’s reduced ignition composition, because Westin’s fire suppressant is reasonably pertinent to the problem faced by the instant inventors, Westin teaches that the composition provides sufficient smoke and fire suppression while being easy to form and maintaining its desirable properties, 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).
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Stefani (US 2021/0307381 A1, of record) in view of Renaud (US 2012/0006343 A1, of record) and Cheong (US 2020/0352220 A1, of record) as applied to claim 18, further in view of Nordskog (US 2017/0238607 A1, of record).
Stefani is silent on the length of the column of aerosol-generating material 22, and thus fails to disclose the column 22 has a length of “less than about 40 millimeters” per claim 28 and “at least about 10 millimeters” per claim 29. Stefani discloses that the length of the stick 14 can generally be from about 1 cm to about 25 cm [0040]. Stefani discloses that its stick 14 provides a similar experience to a user as a conventional cigarette [0004] and one of ordinary skill in the art would expect the stick 14 to have similar size and shape to a conventional cigarette (see [0002-5], Figs. 1-3).
Nordskog is directed to a smoking article with an aerosol-generation segment (Title, Abstract), which is in the same field of endeavor as the claimed invention. The smoking article 10 includes a substrate material 55 which is consumed by a smoker [0065-67, 0094], and the substrate material 55 may have a length of about 11-21 mm (which reads on “less than about 40 millimeters” per claim 28 and “at least about 10 millimeters” per claim 29). The smoking article 10 may be a cigarette (claim 22). Nordskog also discloses the overall dimensions of the smoking article 10 may be about 70-130 mm [0076], which is similar to Stefani’s range of about 1-25 cm. Thus, one of ordinary skill in the art would expect Stefani’s column of aerosol-generating material 22 to be similarly sized to Nordskog’s substrate material 55 (and/or would be motivated to modify Stefani as such).
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 column of aerosol-generating material 22 to have a length of about 11-21 mm as taught by Nordskog, because both Stefani and Nordskog are in the same field of endeavor as the claimed invention, Nordskog discloses a cigarette which is similarly sized as Stefani’s stick, and this would involve 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).
Allowable Subject Matter
Claim 27 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 27. Stefani (US 2021/0307381 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 [0058], 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. 11-12).
Conclusion
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
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
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