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
The Amendments to the claims are entered. Claims 1-5, and 7-25 remain pending. Claims 2, 5, 13-19, and 24-25 are withdrawn. Claim 6 was cancelled. Claims 1, 10, and 12 are amended. The amendment to the claim 10 overcomes the objection to this claim, and thus the objection is withdrawn. The amendments to the claims do not overcome the 35 USC 112(b) rejections for indefiniteness, these rejections are repeated below with emphasis.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 4 recites the broad recitation “greater than about 40,” and the claim also recites “greater than about 45” and “greater than about 50” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 11 recites the broad recitation “at least about 9,” and the claim also recites “at least about 10” and “at least about 11” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Appropriate correction is required.
Response to Arguments
Applicant’s arguments, see Remarks pg 9 first full paragraph, filed 09/16/2025, with respect to the rejection(s) of claim(s) 1, 3, 7, 9, 20 and 23 under 35 USC 102 have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ferrie et al. (WO 2020/089056 A1) in further view of Lisan et al. (US 2016/0106147 A1). As pointed out by Applicant, Ferrie does not disclose or reasonably suggest a particular density of the cellulose acetate tow forming the cooling section element. But, inherently the cellulose acetate tow forming the cooling section must have some density value. In attempting to practice the invention of Ferrie, with reliability, one of ordinary skill in the art would see to specify process parameters for the article such as density, to ensure a consistent product and manufacturing process. One of ordinary skill in the art would look to the prior art for an applicable density range that other hollow cellulose elements have used, to determine what density range to use in the cellulose acetate hollow tube of Ferrie. Lissan discloses a hollow cellulose acetate tube for use in a smoking article and specifies a density of between 0.25 and 0.41 g/cc, ([0008]).
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.
Claim(s) 1, 3, 7, 9, 20, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089056 A1), and further in view of Lisan et al. (US 2016/0106147 A1).
Regarding claim 1, Ferrie discloses an article for use in a non-combustible aerosol provision system, ([pg 3 lines 18-19]), the article comprising an aerosol-generating section, ([pg 3 lines 20-22]), comprising a plurality of strands and/or strips of aerosol- generating material, ([pg 4 line 3], [pg 4 line 19], [pg 4 lines 25-29]), said aerosol-generating section being circumscribed by a moisture impermeable wrapper, ([pg 7 lines 24-25]); and a cooling section directly adjacent to said aerosol-generating section, the cooling section comprising a hollow channel having an internal diameter of between about 1 mm and about 4 mm, ([pg 9 line 5], [pg 9 lines16-18]). Ferrie further discloses the cooling section comprises fibrous tow, which may be cellulose acetate ([pg 9 lines 7-8],[pg 12 lines 17-19]). While the cellulose acetate forming the cooling section must have some density inherently, Ferrie does not disclose a particular density or range of densities that would produce an acceptable cooling section.
Lisan teaches smoke filters and filter elements, ([0001]), and is thus within the inventor’s field of endeavor. Lisan teaches a filter element comprising a channel, a bore, ([0007]), where the filtering material is preferably cellulose acetate tow and where the cellulose acetate wall density is in the range of 0.25 and 0.41 g/cc, ([0008]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ferrie according to the teachings of Lisan, and used the cellulose acetate wall density in the range of 0.25-0.41 g/cc. The cellulose acetate wall of the cooling section in Ferrie must inherently have some density. One of ordinary skill in the art would recognize that to produce a consistent product that the process parameters should be regulated within parameters, and absent a disclosure within Ferrie specifying what density of the cellulose acetate to use, would have found it obvious to look to the teachings of Lisan, which produce a similar cellulose acetate tubular element, to determine what density range of cellulose acetate to use in manufacturing the article of Ferrie. One of ordinary skill in the art would have had a reasonable expectation of success in using the process parameters from Lisan in manufacturing the article of Ferrie, because the materials of construction and dimensions of the cooling elements are similar, ([0015]-[-0016]), and have been motivated to do so because of a reasonable belief that the specific density range chosen contributes to the visual appeal of the element, ([0017]).
Regarding claim 3, modified Ferrie discloses the article of claim 1. Ferrie further discloses that the moisture impermeable wrapper comprises a metallic layer, and wherein the metallic layer is formed from aluminum, ([pg 7 lines 24-25], [pg 8 lines 11-12]).
Regarding claim 6, modified Ferrie discloses the article of claim 1
Regarding claim 7, modified Ferrie discloses the article of claim 1. Ferrie further discloses the aerosol generating section has a length of around 12 or 13 mm, ([pg 6 lines 22-23]).
Regarding claim 9, modified Ferrie discloses the article of claim 1. Ferrie further discloses the aerosol generating substrate comprises a reconstituted tobacco material, ([pg 4 lines 25-27]).
Regarding claim 10, modified Ferrie discloses the article of claim 1. Ferrie further discloses the reconstituted tobacco material comprises additives including humectants which are provided as vapor generators, suggesting that glycerol is a suitable humectant, and suggesting a preferred range of 1 to 40%, ([pg 5 lines 11-21]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected glycerol as the humectant in a range of 10-25% because Ferrie suggests including a humectant, suggests glycerol as a suitable humectant, and the range 10-25% falls within the range suggested by Ferrie.
Regarding claim 20, modified Ferrie discloses the article of claim 1. Ferrie further discloses the aerosol generating substrate comprises gathered strips formed from a homogenized tobacco sheet (reconstituted tobacco), ([pg 4 lines 28-29]).
Regarding claim 23, modified Ferrie discloses the article of claim 1. Although Ferrie discloses that the aerosol cooling element may be formed of a crimped sheet, Ferrie does not disclose that the aerosol generating material is crimped, reasonably suggesting that it is uncrimped.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089056 A1) in view of Lisan et al. (US 2016/0106147 A1) as applied to claim 1 above, and further in view of Gage et al. (US 2020/0128880 A1).
Regarding claim 4, modified Ferrie discloses the article of claim 1. Ferrie further discloses the moisture impermeable wrapper comprises a metallic layer, and wherein the metallic layer is formed from aluminum, ([pg 7 lines 24-25], [pg 8 lines 11-12]). Ferrie does not disclose the basis weight of the wrapper.
Gage teaches a smoking article configured to generate an aerosol in response to heat, ([0008]). Gage teaches using a wrapping material that includes heat conductive properties for conducting heat to and maintaining the heat interaction with the aerosol generating material, ([0069]), further suggesting that a paper foil bilaminant wrapper, with aluminum may be used with a basis weight of between 60 gsm and 100 gsm.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ferrie to have a moisture impermeable wrapper with a gsm in the range taught by Gage. Both wrappers have a similar construction, and one of ordinary skill in the art would have had a reasonable expectation of success using a wrapper of the basis weight taught by Gage, given that Ferrie is silent on what basis weight to use for the wrapper, which reasonably suggests that any basis weight from a similar wrapper would work.
Claim(s) 8, 11, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089056 A1) in view of Lisan et al. (US 2016/0106147 A1) as applied to claim 1 above, and further in view of Deforel et al. (WO 2020/074535 A1).
Regarding claim 8, modified Ferrie discloses the article of claim 1. Although Ferrie further discloses the aerosol generating substrate comprises gathered strips formed from a homogenized tobacco sheet (reconstituted tobacco), ([pg 4 lines 28-29]), Ferrie does not explicitly disclose that the strips are aligned in the longitudinal direction of the aerosol generating section, not that the strips extend along substantially the full length of the aerosol generating section in the longitudinal direction.
Deforel teaches a similar article, ([pg 1 lines 2-5]; Fig 3) comprising homogenized plant material ([pg 8 lines 10-13]), and an aerosol gormer content between 10-25%, ([pg 9 lines 25-27]). Deforel also teaches that the homogenized plant material may be provided in the form of shreds, strands, or strips, ([pg 11 lines 34-35]). Deforel teaches that “[t]he plurality of strands extend substantially longitudinally along the length of the aerosol generating substrate, aligned with the longitudinal axis. Preferably, the plurality of strands are therefore aligned substantially parallel to each other. This provides a relatively uniform, regular structure which facilitates the insertion of an internal heater element into the aerosol generating substrate and optimizes the efficiency of heating.” ([pg 12 lines 24-28]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ferrie according to the teachings of Deforel, to have provided the strips of Ferrie in a longitudinally extending direction across the full length of the aerosol generating section, to have provided a uniform regular structure to optimize the efficiency of heating, as taught by Deforel.
Regarding claim 11, modified Ferrie discloses the article of claim 1. Ferrie further discloses the aerosol generating section has a length of around 12 or 13 mm, ([pg 6 lines 22-23]).
Deforel discloses that the length of the shreds, strands, or strips may be determined by the manufacturing process whereby a rod is cut into shorter plugs and the length of the shreds, strands, or strips, correspond to the length of the plug.
Regarding claim 21, modified Ferrie discloses the article of claim 1. Ferrie further discloses the aerosol generating material may comprise homogenized tobacco, with a grammage greater than or equal to 100 g/m2, ([pg 4 lines 28-31]), and a grammage less than or equal to 250 g/m2, ([pg 5 line 1]). Ferrie further discloses that the aerosol forming material may comprise aerosol formers, fillers, and binders, ([pg 5 lines 9-10]). Ferrie does not disclose the thickness of the sheet.
Deforel teaches a similar sheet areal density range, with a grammage of between 100-300 g/m2, ([pg 10 lines 9-10]). Deforel that the thickness of the sheet may be in a range of 100-600µm, preferably between 150-300 µm, and most preferably between 200-250 µm, ([pg 10 lines 1-3]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Ferrie according to the teachings of Deforel. Ferrie discloses an aerosol generating material in the form of a similar reconstituted tobacco sheet, but does not disclose what thickness to used, and given the similarity of the sheets, Deforel reasonably suggests that a thickness of at least 100 µm would work as a thickness for modified Ferrie.
Regarding claim 22, modified Ferrie discloses the article of claim 21. Ferrie further discloses that the sheet may comprise a filler, ([pg 5 lines 9-10]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089056 A1) in view of Lisan et al. (US 2016/0106147 A1) as applied to claim 1 above, and further in view of Conner et al. (WO 2011/139730 A1).
Regarding claim 12, modified Ferrie discloses the article of claim 1. Ferrie discloses does not disclose the packing density of the aerosol generating material.
Conner teaches a rod shaped smoking article, ([0006]), with a heat generating element and an aerosol generating segment located downstream from the heat generating element, ([0006]). Conner teaches the aerosol generating material filled into the aerosol generating segment at a packing density of about 100 to 400 mg/cm3.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have filled the aerosol generating segment with the aerosol generating material of Ferrie, according to the packing density taught be Conner. One of ordinary skill in the art would have had a reasonable expectation of success in using the packing density of Conner as a reasonable starting point for packing the aerosol generating segment of Ferrie, and because the taught range includes the end point of the claimed range, the claimed range is rendered obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747