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
This office action is in response to the Applicants’ arguments/remarks filed 2/04/2026.
No claims are amended
Claims 19, and 31-37 are currently amended.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 19, 21-24, and 28-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beeson (US 20170055576 A1).
Regarding Claim 19, Beeson discloses an article for use in a non-combustible aerosol provision system (intended use, rod can be used in a non-combustible aerosol provision system), the article comprising
an aerosol-generating component comprising a rod of aerosol- generating material (aerosol generating segment 61, [0073]), wherein
said rod of aerosol-generating material has a length of less than 30 mm (aerosol generating segment can have a length between 10mm – 25mm, [0073]) and
is wrapped in a first wrapping material (see annotated FIG 1 below), and wherein
said rod of aerosol-generating material is wrapped in an outer wrapping material which extends at least partially over the rod of aerosol-generating material (see annotated FIG 1 below).
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Regarding Claim 21, Beeson discloses the claim limitations as set forth above. Additionally Beeson discloses the rod of aerosol generating material comprises a plurality strips of aerosol-generating material ([0047]-[0048] aerosol generating material comprises strips of aerosol generating material).
Regarding Claim 22, Beeson discloses the claim limitations as set forth above. Additionally, Beeson discloses said first wrapping material comprises a moisture impermeable first wrapping material (e.g., foil is moisture impermeable, see [0030]-[0031], aluminum foil [0037], prevents leeching of glycerin, aluminum foil being moisture impermeable is consistent with Applicants moisture impermeable aluminum foil wrap in instant claim 23 and instant specification page 16 lines 8-9).
Regarding Claim 23, Beeson discloses the claim limitations as set forth above. Additionally, Beeson discloses said moisture impermeable first wrapping material is an aluminum foil wrapper (aluminum foil wrapper, [0037], [0030]-[0031]).
Regarding Claim 24, Beeson discloses the claim limitations as set forth above. Additionally, Beeson discloses said first wrapping material has a basis weight greater than about 40 gsm, or greater than about 45 gsm, or greater than about 50 gsm. (see [0039] and [0064]) Beeson discloses the first wrapping material has a basis weight of between about 60 and 100 gsm, which falls within the ranges required by the claim).
Regarding Claim 28, Beeson discloses said outer wrapping material comprises tipping paper (see [0067]-[0068]).
Regarding Claim 29, Beeson discloses the article is at least 46 mm in length ([0073], 85mm anticipates the claimed range of at least 46 mm.)
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) in view of Dincer (US20140299142A1).
Regarding Claim 25, Beeson discloses the claim limitations as set forth above. Additionally, Beeson discloses the ends of the different wrapping materials overlap ( see [0039], but is silent to an exact suitable extent/distance the outer wrapping material should overlap with the first wrapping material. Thus in silence Beeson fails to disclose said outer wrapping material overlaps the first wrapping material by a maximum of 10 mm, or a maximum of 8 mm or a maximum of 6 mm.
However, Dincer teaches a similar smoking article with different wrapping materials that overlap and teaches suitable overlap distances of wrapping materials is approximately 6mm. This teaching overlaps with the claimed limitation of said outer wrapping material overlaps the first wrapping material by a maximum of 10 mm, or a maximum of 8 mm or a maximum of 6 mm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify overlap of the wrapping materials to have an overlap of approximately 6mm as taught by Dincer, because both Beeson and Dincer are directed to smoking articles comprising overlapping wrappers, Beeson is silent in regards to suitable overlap distances between the overlapping wrappers and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable overlap distances for a similar smoking article. Dincer teaches known overlap for overlapping wrappers, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) in view of Sanna (US 20170332694 A1)
Regarding Claim 26, Beeson teaches the claim limitations as set forth above. However, Beeson is silent to suitable thicknesses for the outer wrapping material and therefore fails to explicitly disclose said outer wrapping material has a thickness of at least 20 microns, or at least 25 microns, or at least 30 microns.
However, Sanna teaches similar smoking articles and wrappers used in the manufacture thereof and teaches suitable thicknesses for wrappers for smoking articles can have a thickness of between 20 microns and 250 microns.
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the outer wrapping material of Beeson, to have a thickness of between 20 microns and 250 microns as taught by Sanna, because both Beeson and Sanna are directed to smoking articles comprising wrapping material, Beeson is silent in regards to suitable thicknesses for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for wrappers in a similar article, Sanna teaches known thicknesses for a similar wrapper for a similar article and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. A thickness of 20 microns to 250 microns as taught by Sanna overlaps with the claimed range of at least 20 microns, or at least 25 microns, or at least 30 microns. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) in view of Besso (US 20180271143 A1)
Regarding Claim 27, Beeson teaches the claim limitations as set forth above. However, Beeson is silent to the basis weight of the outer wrapping material and therefore fails to explicitly disclose the outer wrapping material has a basis weight of about 20 gsm, or about 25 gsm, or about 30 gsm.
However, Besso teaches the outer wrapping material has a basis weight of less than about 50 gsm and more than about 20 gsm [0053] which overlaps with the claimed ranges of about 20 gsm, or about 25 gsm, or about 30 gsm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the outer wrapping material of Beeson to have a thickness of less than about 50 gsm to more than about 20 gsm as taught by Besso, because both Beeson and Besso are directed to smoking articles with outer wrappers, Beeson is silent in regards to suitable thicknesses of outer wrappers for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for wrappers for a similar smoking article. Besso teaches known thicknesses for wrappers for smoking articles and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claims 30 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) .
Regarding Claim 30, Beeson teaches the rod of aerosol-generating material can have a length of less than about 20 mm, less than about 18 mm, less than about 15 mm and less than about 13 mm (Beeson teaches the rod of aerosol generating material has a length of from about 10-25mm, which overlaps with all of the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 35, modified Beeson teaches the claim limitations as set forth above. Additionally, Beeson teaches substantially all of the aerosol generating material is formed from sheet material which is folded and/or slit longitudinally to form the rod of aerosol generating material.
Specifically, in paragraph [0058] Beeson discloses the aerosol generating material includes reconstituted tobacco sheets are shredded in a plurality of longitudinally extending strands to form the rod of aerosol generating material. Therefore, it would be obvious to a person of ordinary skill in the art that substantially all of the aerosol generating material is formed from sheet material which is folded and/or slit longitudinally to form the rod of aerosol generating material.
Claims 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) in view of Thomas (US-8424538) and Yanchev (US20200068950 A1)
Regarding Claim 31, modified Beeson teaches the article as set forth above however, Beeson is silent to its intended use in a non- combustible aerosol provision device comprising an aerosol generator for insertion into the aerosol generating material/consumable. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. It would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the aerosol generating consumable of Beeson is capable of being used in a non-combustible aerosol provisioning system.
(e.g., an aerosol generator such as a heating blade could be inserted into the aerosol generating material/consumable for aerosol generation. Additionally, Beeson makes reference to suitable heat generation segments in [0028] that are incorporated by reference, including Thomas (8424538) which teaches suitable heating segments that include aerosol generators and teaches these heating segments can be electronic heating sources. However, Thomas fails to explicitly disclose specific suitable electronic heating elements and their configurations. Thomas teaches electronic heating sources avoid the disadvantages of delivering considerable quantities of incomplete combustion and pyrolysis products (column 1 lines 51-61).
Therefore, it would be obvious to a person of ordinary skill in the art to modify the heating segment of Beeson with the referenced incorporations including the teachings of Thomas. Additionally, a person of ordinary skill in the art would be motivated to modify the heating source of Beeson in order to avoid the disadvantages of delivering considerable quantities of incomplete combustion and pyrolysis which are delivered with combustion.
Therefore, it would be obvious to a person of ordinary skill in the art to modify the smoking device of Beeson with a heating segment that is electronic as directed by Beeson, however Thomas is silent to the electronic heating source having a specific structure and more specifically being inserted into the aerosol generating material. Therefore, a person of ordinary skill in the art would be motivated to look to the related art for suitable structures for an electronic heating source.
Yanchev teaches electronic heating sources 412 and 414 that includes an aerosol generator for insertion into the aerosol generating material and specifically includes heating blade 412 that is suitable for inserting in to the heat generating material as taught by Beeson. (e.g., see FIG 4 and [0035], Yanchev teaches a heating source that includes a heating blade 412 that is inserted into the heat generating material for aerosol generation.)
Yanchev also teaches the heating source which includes a plurality of heating components (e.g., 412/414, see [0036] and FIG 4) and ensures uniform heating distribution profile across the smoking article [0013].
Therefore, it would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the electronic heating source of modified Beeson with the heating source of Yanchev in order to ensure a more uniform heat distribution profile across the smoking article.
Regarding Claim 32, modified Beeson teaches the claim limitations as set forth above.
Additionally, Yanchev teaches the article is configured to receive at least a portion of the aerosol generator (see FIG 4, the article is received in the aerosol generator).
Regarding Claim 33, modified Beeson teaches the claim limitations as set forth above.
Additionally, Yanchev teaches the article is configured such that, in use, when the aerosol generator is received by the article, the aerosol generator is in direct contact with at least a portion of the aerosol generating material (See FIG 4, the aerosol generator which includes the heating blade 412 is in direct contact with at least a portion of the aerosol generating material which is in the tobacco rod pieced by 412 as illustrated).
Regarding Claim 34, modified Beeson teaches the claim limitations as set forth above.
Additionally, Yanchev teaches the article is configured such that, in use, insertion of the aerosol generator into the article increases the packing density of the aerosol generating material (e.g., although not explicitly disclosed, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the aerosol generator which includes the heating blade, is received into the aerosol generating material tobacco rod, that the material displaced by the heating blade portion of the aerosol generator would increase the packing density of the aerosol generating material).
Claims 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Beeson (US 20170055576 A1) in view of Zuchuat (US20180116274A1) and Malgat (US 20160331031 A1).
Regarding Claim 36, modified Beeson teaches the claim limitations as set forth above. Additionally, Beeson teaches the aerosol generating material comprises a sheet or shredded sheet of aerosolizable material comprising tobacco material (cast sheet reconstituted tobacco that is shredded into a plurality of longitudinally extending strands, [0058]),
an aerosol-former material (Beeson teaches reconstituted tobacco which in and of itself is an aerosol former, additionally Beeson teaches tobacco cut filler with or without additional filler, [0048]) and
a binder (see [0042], the aerosol generating material that may include tobacco may comprise 1% binder), wherein
Beeson is silent to the thickness of the sheet.
However, Zuchuat teaches suitable thicknesses for the reconstituted tobacco sheet and teaches the sheet or shredded sheet has a thickness of at least about 100 μm (see [0061], about 0.05 mm to about 1 mm (about 50 μm to about 1000 μm), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the thickness of the reconstituted tobacco sheet to about 0.05 mm to about 1 mm as taught by Zuchuat because both Beeson and Zuchuat are directed to smoking articles comprising reconstituted tobacco sheets, Beeson is silent in regards to suitable thicknesses for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for tobacco sheets in a similar smoking article, Zuchuat teaches known thicknesses for a similar tobacco sheet and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Beeson is silent to the area density of the sheet
Malgat teaches a similar reconstituted tobacco sheet [0019] and teaches a suitable grammage/area density for such sheets of about 100g/m2 to about 300 g/m2 which overlaps with the claimed area density of from about 100 g/m2 to about 250 g/m2 [0059], In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the thickness of the reconstituted tobacco sheet to have an area density of from about 100g/m2 to about 300g/m2 as taught by Malgat because both Beeson and Malgat are directed to smoking articles comprising reconstructed tobacco sheets, Beeson is silent in regards to suitable area densities for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable area densities for tobacco sheets in a similar smoking article. Malgat teaches known area densities for a similar tobacco sheet and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 37, modified Beeson teaches the claim limitations as set forth above. Additionally, Beeson teaches the aerosolizable material comprises a filler. (Beeson teaches tobacco cut filler with or without additional filler, [0048], thus Beeson teaches the aerosolizable material comprises a filler).
Response to Arguments
Applicant's arguments filed 2-4-2026 have been fully considered but they are not persuasive.
Applicant argues on page 7 of response:
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In response to applicant's argument that claim 19 explicitly limits the article for use within a non-combustible aerosol provision system, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. This is not found persuasive because putting “for use in a non-combustible aerosol provision system” in the preamble of a claim does not explicitly limit the article for use as argued. E.g., articles for use in combustible aerosol provision systems can still be used in non-combustible aerosol provision systems. Applicant argues that the article of Beeson is not capable of performing the claimed use within a non-combustible system.
This is additionally not found persuasive because it is known in the art that aerosol generating rods with combustible heat sources can be used as aerosol generating substrates in heated aerosol generating articles as evidenced by Zuber (US 20160295926A1) [0044], heat conducting element in contact with combustible carbon based heat sources and combustible heat sources having other constructions. (See Zuber FIG 4 and FIG 5, see also [0047].
Applicant similarly argues on page 8:
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This is not found persuasive because it is known in the art that aerosol generating rods with combustible heat sources can be used as aerosol generating substrates in heated aerosol generating articles as evidenced by Zuber (US 20160295926A1) [0044], heat conducting element in contact with combustible carbon based heat sources and combustible heat sources having other constructions. (See Zuber FIG 4 and FIG 5, see also [0047].
Additionally, contrary to Applicants assertion it would be not be obvious to remove or omit a carbon fuel tip from the end of a cigarette article if it is intended to be used in a heating device and the fuel tip function is not needed or desired; omission of an element and its function is obvious if the function of the element is not desired, see MPEP 2144.04 (II)(A). Also use of a heating blade is only one type of non-combustible aerosol provision system. Other methods of heating the substrate are known in the art such as resistive heating coils that heat the substrate from the outside.
Applicant lastly argues the dependent claims are allowable for their dependence on claim 19. This is not found persuasive for the reasons above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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