DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/2026 has been entered.
Status of the Claims
Claims 1-5 and 8-11 are pending. Claim 1 has been amended.
Response to Arguments
Applicant’s arguments with respect to claims 1-5 and 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 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 1-5 and 8-1 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.
Regarding claim 1, it is unclear to one of ordinary skill in the art what limitations are implied the phrase “a multi-layer structure in which two or more layers are laminated”. Specifically, it is unclear to one of ordinary skill in the art if this is referring to the process by which individual layers of the two or more layers are formed or if it is referring to the manner of combining the two or more layers after they have been formed. Further, is it unclear if this lamination requires chemical bonding or compaction of the individual layers or combined layers. Looking to the broader disclosure for clarification, the multi-layer structure is simply described as a structure in which “two or more layers are layered” (Specification filed 12/8/2022, Page 4, Line 20, and Page 21, Lines 17-18), which could encompass any of these interpretations. For the purpose of this Office action, the limitation “a multi-layer structure in which two or more layers are laminated” is interpreted as allowing for any of these possibilities.
Claims 2-5 and 8-11 are indefinite due to their dependence from claim 1.
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 1-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (US 2022/0183348 A1) in view of Rojo-Calderon et al. (US 2018/0295885 A1).
Regarding claim 1, Selby discloses a tobacco rod (“HNB cigarette 10”, Fig. 19), comprising:
a first filter segment (“first filter 120a”, Fig. 19, ¶ 0056, the examiner notes that Fig. 19 is mislabeled and that one of the two 120b’s should be 120a based on the accompanying text in ¶ 0056);
a second filter segment (“second filter 120b”, Fig. 19, ¶ 0056) that is located upstream of the first filter segment (¶ 0056); and
a cavity segment (cavity containing “tobacco section 20”, Fig. 19, ¶ 0056) that is formed by the first filter segment and the second filter segment (Fig. 19),
wherein the cavity segment is filled with a tobacco section (“tobacco section 20”, Fig. 19, ¶ 0056).
However, Selby does not explicitly disclose that the tobacco section is a tobacco granule that includes tobacco fine particles, and susceptor fine particles heated by a variable magnetic field therein,
a particle diameter of the tobacco fine particles is 20 to 40 μm,
a particle diameter of the susceptor fine particles is 20 to 40 μm,
a diameter of the tobacco granule is 0.4 mm to 1.2 mm,
the cavity segment includes a composite granule structure in which two or more tobacco granules are aggregated, and
wherein the composite granule structure is a multi-laver structure in which two or more layers are laminated.
Rojo-Calderon, in the same field of endeavor, teaches a tobacco rod (“aerosol-generating article (9)”, abstract, Fig. 1) comprising:
a cavity segment (“cavity of a casing of an aerosol-generating article”, ¶ 0093) that is filled with a tobacco granule (“particles 1 comprising susceptor material and aerosol-forming substrate”, Fig. 1, ¶ 0109, where “Aerosol-forming substrate may be a tobacco containing aerosol-forming substrate.”, ¶ 0066),
the tobacco granule includes tobacco fine particles (“tobacco particles” in the form of a “tobacco dust”, ¶ 0067-0068), and susceptor fine particles (“several particles form a susceptor core”, ¶ 0063) heated by a variable magnetic field therein (¶ 0049),
a particle diameter of the tobacco fine particles is 30 to 80 μm (“30 micrometers to 80 micrometers”, ¶ 0068),
a diameter of the tobacco granule is 0.5 mm to 4 mm (“between 0.5 millimeter and 4 millimeter”, ¶ 0133),
the cavity segment includes a composite granule structure (“pellet 3 formed of a compacted plurality of particles 1”, Fig. 1, ¶ 0109) in which two or more tobacco granules are aggregated, and
wherein the composite granule structure is a multi-layer structure in which two or more layers are laminated (“compacted”, Fig. 1, ¶ 0109).
Rojo-Calderon teaches several benefits of the tobacco granule in that it improves heat transfer while reducing waste of both materials and energy (¶ 0005) as well as a benefit of the composite granule structure in that it provides mechanical stability (¶ 0011). Rojo-Calderon further teaches that the composite granule structure can be used in place of a tobacco section of a tobacco rod (“A pellet may, for example, replace a tobacco plug in a tobacco stick used in electronic heating devices.”, ¶ 0013). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have replaced the tobacco section taught by Selby with the composite granule structure taught by Rojo-Calderon, with the dimensions taught by Rojo-Calderon, in order to obtain these benefits. Since the tobacco fine particle diameter range 30 to 80 μm overlaps the claimed range of 20 to 40 μm, a prima facie case of obviousness exists (MPEP § 2144.05(I)). Since the tobacco granule diameter range 0.5 mm to 4 mm overlaps the claimed range of 0.4 mm to 1.2 mm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
With regard to the limitation, “a particle diameter of the susceptor fine particles is 20 to 40 μm”, Rojo-Calderon teaches that the susceptor core diameter may be between 0.2 mm and 2.4 mm (¶ 0059) and that the susceptor core comprises one or several particles (¶ 0063). Therefore, one of ordinary skill in the art would have understood that the particle diameter of the susceptor fine particles of Rojo-Calderon may be 0.2 mm to 2.4 mm (in the case of one particle) or less (in the case of several particles; e.g., if 5 susceptor fine particles were combined to form a susceptor core with a total diameter of 0.2 mm, the particle diameters of the susceptor fine particles would be 40 μm). Since the range 2.4 mm or less overlaps the claimed range of 20 to 40 μm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 2, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Rojo-Calderon further teaches wherein the tobacco granule is in a form of a core-shell (“granules formed by the susceptor core 10 coated with one or two aerosol-forming substrate coatings 20,21 form particles 1”, Fig. 8b, ¶ 0128) in which the susceptor fine particles are aggregated and located in a core which is an inner center thereof (“susceptor core 10”, Fig. 8b, ¶ 0128) and the tobacco fine particles are aggregated and located in a form of a shell surrounding the core (“aerosol-forming substrate coating 20”, Fig. 8b, ¶ 0128).
Regarding claim 3, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Rojo-Calderon further teaches wherein the tobacco granule has a form in which the tobacco fine particles and the susceptor fine particles are randomly mixed and aggregated (as seen in Fig. 1 of Rojo-Calderon, the pellets 3 which are formed of the tobacco fine particles and susceptor fine particles are randomly mixed in the sense that there is no defined order to the placement of individual pellets and they are aggregated).
Regarding claim 4, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Rojo-Calderon also teaches wherein the tobacco granule further comprises moisture (“moisture”, ¶ 0066, 0070).
Regarding claim 5, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 4, as stated above. Rojo-Calderon does not explicitly disclose wherein the tobacco granule comprises, based on the total weight of the tobacco granule, 20 to 40 wt% of susceptor fine particles. However, Rojo-Calderon teaches that the susceptor fine particles facilitate heating of the tobacco granule (¶ 0005). The efficacy of the susceptor fine particles for this result depends on the amount of susceptor fine particles included in the tobacco granule. If too small of an amount of susceptor fine particles are included in the tobacco granule, the tobacco granule will not be properly heated. If too large of an amount of susceptor fine particles are included in the tobacco granule, there will not be sufficient room in the tobacco granule for the tobacco fine particles and moisture that are to be heated by the by the susceptor fine particles. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the amount of susceptor fine particles in the tobacco granule such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Rojo-Calderon also does not explicitly disclose wherein the tobacco granule comprises, based on the total weight of the tobacco granule, 50 to 70 wt% of tobacco fine particles. However, Rojo-Calderon teaches that the tobacco fine particles provide substances, such as nicotine and flavouring, to be volatilized into the aerosol and delivered to the consumer (¶ 0070). The efficacy of the tobacco fine particles for this result depends on the amount of tobacco fine particles included in the tobacco granule. If too small of an amount of tobacco fine particles are included in the tobacco granule, the tobacco granule will not provide a sufficient dose of nicotine or amount of flavour. If too large of an amount of tobacco fine particles are included in the tobacco granule, there will not be sufficient room in the tobacco granule for the susceptor fine particles that are to heat the tobacco fine particles to form the aerosol. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the amount of susceptor fine particles in the tobacco granule such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Rojo-Calderon also does not explicitly disclose wherein the tobacco granule comprises, based on the total weight of the tobacco granule, 5 to 15 wt% of moisture. However, Rojo-Calderon teaches that the tobacco product should have a desirable level of moisture (¶ 0070). The efficacy of the moisture for this result depends on the amount of moisture included in the tobacco granule. If too small of an amount of moisture is included in the tobacco granule, then the tobacco granule will be too dry. If too large of an amount of moisture is included in the tobacco granule, there will not be sufficient room in the tobacco granule for the tobacco fine particles that are to provide the nicotine and flavour or for the susceptor fine particles that are to heat the tobacco fine particles to form the aerosol. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the amount of susceptor fine particles in the tobacco granule such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 8, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Selby further teaches wherein each of the first filter segment and the second filter segment comprises a paper material (“cigarette paper, tipping paper, or other suitable materials 180”, Fig. 38A, ¶ 0075).
Regarding claim 9, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Rojo-Calderon further discloses wherein the susceptor fine particles comprise aluminum (“aluminum”, ¶ 0050).
Regarding claim 10, Selby in view of Rojo-Calderon teaches the tobacco rod of claim 1, as stated above. Selby further discloses an aerosol generating article (combination of the tobacco rod of claim 1, corresponding to the combination of first filter segment “porous material 110”, tobacco section “substrate 20”, and second filter segment “porous material 110”, Fig. 36B, ¶ 0070; and a filter rod, corresponding to the combination of “cone 130” and “mouthpiece 90” with “optional filter 120”, Fig. 36B, ¶ 0070) used with an aerosol generating apparatus (“Heat-not-burn (HNB) devices”, ¶ 0002) comprising:
the tobacco rod of claim 1 (combination of first filter segment “porous material 110”, tobacco section “substrate 20”, and second filter segment “porous material 110”, Fig. 36B, ¶ 0070); and
a filter rod (combination of “cone 130” and “mouthpiece 90” with “optional filter 120”, Fig. 36B, ¶ 0070) that is located downstream of the tobacco rod (Fig. 36B),
wherein the filter rod includes a cooling segment (“some air will tend to flow in through the external perforations 70 and directly through the cone 130 perforations 70 and mixes with the hot vapor to reduce its temperature”, Fig. 36B, ¶ 0070); and a mouthpiece segment (“mouthpiece 90”, Fig. 36B, ¶ 0070) that is located downstream of the cooling segment (Fig. 36B).
Regarding claim 11, Selby in view of Rojo-Calderon teaches the aerosol generating article of claim 10, as stated above. Selby also discloses using the aerosol-generating article of claim 10 in an aerosol generating apparatus (“Heat-not-burn (HNB) devices”, ¶ 0002-0003), wherein the aerosol generating apparatus may use electromagnetic induction to generate heat (¶ 0022). However, Selby does not explicitly disclose all of the details of the apparatus as claimed.
Rojo-Calderon teaches an aerosol generating apparatus (“aerosol-generating system”, ¶ 0094), comprising:
an aerosol generating article (“aerosol-generating article”, ¶ 0094) with the tobacco granule of claim 10;
an accommodation space (“device cavity”, ¶ 0094) for the aerosol generating article;
a battery (“power source”, ¶ 0094); and
a coil (“one or more induction coils”, ¶ 0094),
wherein the coil surrounds the cavity segment and generates a variable magnetic field by receiving power from the battery to heat the susceptor (¶ 0015, 0049, 0094).
Rojo-Calderon teaches an advantage to heating the tobacco granule in such an inductive heating apparatus in that it allows for optimal heating of the tobacco fine particles with the susceptor fine particles (¶ 0005, 0049). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the aerosol-generating article of claim 10, taught by Selby in view of Rojo-Calderon, in the apparatus taught by Rojo-Calderon, in order to obtain this benefit.
Conclusion
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/C.G.C./Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755