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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/16/2026 (“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 Accordingly, the claim rejections under 35 USC 103 are withdrawn; new claim rejections under 35 USC 103 and a new claim objection are set forth below.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 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 Claims 21 and 32-34 remain withdrawn.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 regarding the claim rejections under 35 USC 103 (Amendment p. 7-11) 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. Specifically, Applicant argues that Nordskog’s catalyst segment does not read on the “upstream element” as recited in newly amended claim 18, and argues that modifying the catalyst segment to extend to the upstream end (by removing the heat-generating segment) would render the article unsuitable for its intended purpose (Amendment p. 9-10). The new rejection set forth below no longer cites Nordskog’s catalyst segment for the “upstream element”, but rather cites Cheong for this feature, and the modification set forth below does not remove Nordskog’s heat-generating segment nor otherwise render Nordskog unsuitable for its intended purpose.
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 18 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
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, 22, 24, and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US 2017/0238607 A1, previously cited) in view of Stefani (US 2021/0307381 A1, previously cited) and Cheong (US 2020/0352220 A1).
Regarding claim 18, Nordskog discloses a smoking article which includes a heat generation segment, a catalyst segment, an aerosol-generation segment, a mouth end, and an aerogel (Abstract):
The cylindrical aerosol-generating segment 51 (a “rod” as claimed) includes a substrate material 55 and an aerosol-forming agent ([0065], Fig. 1, reproduced below), which may include about 20-30 wt% glycerol [0065, 0069] (“aerosol-former”; see Applicant’s specification at p. 17 listing glycerol as a suitable aerosol-former);
The mouth end 18 (“downstream section”) is located downstream of the aerosol-generating segment 51 ([0056], Fig. 1);
A wrapping material 58 (“wrapper”) circumscribes the aerosol-generating segment 51 [0066];
The substrate material 55 and the aerosol-forming agent are packed into the aerosol-generating segment 51 at a density of about 100-400 mg/cm3 [0077], which 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). Additionally, in some embodiments, the substrate material 55 includes the aerogel [0066], which has a bulk density of about 0.01-0.5 g/cm3 (i.e., about 10-500 mg/cm3) [0023], which similarly overlaps the claimed range.
The wrapping material 58 may surround a burn retardant in addition to the substrate material 55 and aerosol-forming agent [0067]. The burn retardant may include diammonium phosphate or another salt, or various organophosphate compounds [0069, 0088]. However, the burn retardant is not disclosed as being incorporated into the wrapping material 58 itself, and thus Nordskog fails to disclose “wherein the wrapper comprises a flame retardant composition comprising one or more flame retardant compounds.”
Nordskog further fails to disclose the claimed “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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Stefani is directed to a non-combustible wrapper for use in heat but not burn applications (Title). The wrapping paper includes a base web with a coating formed from a reduced ignition composition (Abstract). The base web is coated on one or both sides [0009-10]. The base web may also be treated to incorporate burn control agents, for example a salt of a phosphoric acid [0051-52]. One of ordinary skill in the art would recognize that Stefani’s burn control agent is similar in chemical composition to Nordskog’s burn retardant, and thus Nordskog’s burn retardant could predictably be incorporated into the wrapping material 58 by a treatment (which reads on a “layer…on a surface of the wrapping base material”). One of ordinary skill would further recognize that this would advantageously provide burn retardation properties to the wrapping material 58 itself.
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 Nordskog’s heat generation segment 35 located at an upstream end from being detached (compare Cheong Fig. 5 with Nordskog Fig. 1, [0056]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Nordskog by treating the wrapping material 58 to incorporate the burn retardant into the wrapping material 58, because both Nordskog and Stefani are directed to aerosol-generating articles, and this involves combining prior art elements according to known methods to yield the predictable result of a wrapping material 58 with burn retardant properties. It would be further obvious to modify Nordskog by incorporating Cheong’s front-end filter segment 421 upstream of Nordskog’s heat generation segment 35 (such that the front-end filter segment 421 defines the upstream end of the article 10), because both Nordskog and Cheong are directed to aerosol-generating articles, Cheong teaches that this prevents interior components from falling or leaking out, 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 claim 19, as set forth immediately above, Nordskog’s substrate material 55 and the aerosol-forming agent are together packed into the aerosol-generating segment 51 at a density of about 100-400 mg/cm3 [0077], and the substrate material 55 may include an aerogel with density of about 10-500 mg/cm3 [0023, 0066], both of which overlap the claimed range.
Regarding claim 20, as set forth above, the substrate material 55 may be an aerogel with density of about 10-500 mg/cm3 [0023, 0066], which overlaps the claimed range. Additionally, the substrate material 55 and the aerosol-forming agent are together packed into the aerosol-generating segment 51 at a density of about 100-400 mg/cm3 [0077], which slightly overlaps the claimed range.
Regarding claim 22, the aerosol-generating segment 51 includes the substrate material 55 which may comprise an aerogel composition [0066]. The aerogel includes a gelling agent, tobacco, and an aerosol-forming material [0027, 0048, 0067] (tobacco contains nicotine which is an alkaloid compound).
Regarding claim 24, modified Nordskog discloses the wrapping material 58 treated with the burn retardant, as set forth above. However, modified Nordskog fails to explicitly disclose that the burn retardant is provided as a layer “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.”
Stefani discloses that the base web is coated on one or both sides with the reduced ignition composition (Abstract, [0009-10]).
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 Nordskog by coating the burn retardant onto one or both sides of the wrapping material 58 as taught by Stefani, for the same reasons as discussed above with regard to claim 18.
Regarding claims 28-29, the substrate material 55 in certain embodiments may be about 11-21 mm in length [0067], which entirely lies within the claimed ranges.
Regarding claim 30, the overall dimensions of the smoking article 10 can vary [0076]. Typical articles 10 have an overall length of about 70-130 mm [0076], which slightly overlaps the claimed range (in particular, the use of “about” in both Nordskog and claim 30 ensures an overlap) and therefore renders it obvious.
Regarding claim 31, Nordskog discloses a metal inner surface of the wrapping material 58 [0068], and thus fails to disclose “wherein the wrapper does not comprise metal.”
Stefani discloses the base web which is made from cellulosic fibers (Abstract). Stefani does not disclose that the wrapper comprises metal. Stefani explains that this wrapper is useful for constructing heat but not burn sticks, which are heated at a temperature of about 200-450 °C, in contrast to typical combustion articles which are heated at higher temperatures [0002-8]. One of ordinary skill in the art would recognize that Nordskog’s smoking article 10 could be repurposed as a heat but not burn stick by applying Stefani’s wrapper, which would predictably allow for lower heating without significant combustion.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Nordskog by replacing the wrapping material 58 with Stefani’s non-combustible wrapper including a base web made from cellulosic fibers, because Stefani discloses that this wrapper is useful for preventing combustion in heat not burn sticks, one of ordinary skill in the art would recognize that Nordskog’s article could be repurposed into a heat not burn stick, and this involves a simple substitution of one known element for another to obtain 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 Nordskog (US 2017/0238607 A1) in view of Stefani (US 2021/0307381 A1) and Cheong (US 2020/0352220 A1) as applied to claim 18, further in view of Malgat (WO 2017/153443 A1, previously cited).
Nordskog discloses the wrapping material 58 circumscribing the aerosol-generating segment 51 which includes the substrate material 55 and the aerosol-forming agent, as set forth above. However, Nordskog fails to disclose “wherein the rod of aerosol-generating substrate 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 Nordskog’s article 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 further modify Nordskog by incorporating a susceptor into the wrapping material 58 within the substrate material 55 and the aerosol-forming agent, because both Nordskog 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).
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US 2017/0238607 A1) in view of Stefani (US 2021/0307381 A1) and Cheong (US 2020/0352220 A1) as applied to claim 18, further in view of Westin (WO 2017/135862 A1, previously cited).
Nordskog discloses the burn retardant as set forth above, which may include organophosphate compounds, organic or metallic nanoparticles, and acidic salts [0088]. However, Nordskog 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 Nordskog’s burn retardant, and thus Nordskog’s burn retardant 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 Nordskog by including Westin’s polymer composition in Nordskog’s burn retardant, 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).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US 2017/0238607 A1) in view of Stefani (US 2021/0307381 A1) and Cheong (US 2020/0352220 A1) as applied to claim 18, further in view of Adams (EP 0231664 B1, previously cited).
Nordskog discloses the burn retardant as set forth above, which may include organophosphate compounds, organic or metallic nanoparticles, and acidic salts [0088], but fails to disclose “wherein the flame retardant composition comprises cellulose modified with at least one C10 or higher fatty acid, tall oil fatty acid (TOFA), phosphorylated linseed oil, phosphorylated downstream corn oil.”
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 Nordskog’s burn retardant to provide melt point and permeability controls.
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 Nordskog by incorporating palmitic acid into the burn retardant, because both Nordskog and Adams are directed to smoking rods, 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.
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 18. 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