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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/13/2025 has been entered.
Response to Arguments
Applicant's arguments filed 11 have been fully considered.
Applicant argues Moloney and Rogan fails to disclose that “the pattern is repeated in a longitudinal direction at least two times” and that “the entire information code of the pattern is readable during an insertion of the consumable into the aerosol generation device and the pattern remains unaltered after the insertion,” as recited in amended claim 1.
Upon reconsideration of the arguments and amendments, Examiner agrees that Moloney does not expressly disclose that the pattern is repeated in a longitudinal direction at least two times, as now recited in amended claim 1. Accordingly, the 35 U.S.C. § 102(a)(1) rejection based on Moloney has been withdrawn.
Similarly, the 35 U.S.C. § 102(a)(1)/(a)(2) rejection based on Rogan has been withdrawn. Therefore, Applicant’s arguments directed to Rogan are moot and will not be further addressed.
Notwithstanding the above, Applicant’s amendment introducing the limitation that “the pattern remains unaltered after the insertion” raises a 35 U.S.C. § 112(a) issue.
While the specification describes that the pattern is readable during insertion, that the pattern may be repeated longitudinally or circumferentially, and that redundancy improves detection reliability, the originally filed disclosure does not expressly describe that the pattern remains unaltered as a result of insertion of the consumable into the aerosol generation device. To the contrary, the specification contemplates that patterns may be damaged or not recognized, and relies on repetition to ensure successful detection, rather than preservation of the physical state of the pattern.
Accordingly, the newly added limitation that the pattern “remains unaltered after insertion” is not supported by the originally filed specification, and therefore constitutes new matter, in violation of 35 U.S.C. § 112(a).
Although Moloney does not anticipate amended claim 1, Examiner notes that Moloney remains highly relevant to the claimed subject matter. As set forth in the §103 rejection below, Moloney teaches a consumable for use in an aerosol generation device having an information-bearing pattern disposed on a wrapper, oriented along the insertion direction, and readable during insertion by a sensor.
Examiner maintains that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pattern arrangement taught by Moloney to include repetition in the longitudinal direction, as claimed, in order to improve reliability of reading the information code during insertion. Such modification represents a predictable design choice yielding predictable results, consistent with KSR and MPEP § 2143.
Accordingly, while Moloney is no longer relied upon as a §102 reference, it remains a proper primary reference for purposes of obviousness.
For the reasons set forth above:
The §102 rejections based on Moloney and Rogan have been withdrawn
Arguments directed to Rogan are moot
The amendment introducing “unaltered after insertion” introduces new matter
The claims nevertheless remain unpatentable under 35 U.S.C. § 103, as set forth above
Applicant’s arguments are therefore not persuasive.
Election/Restrictions
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-8, 10-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, in part, “wherein the pattern remains unaltered after the insertion.” However, the originally filed specification does not reasonably convey to one of ordinary skill in the art that the inventors were in possession of a consumable in which the information code or pattern remains unaltered as a result of insertion of the consumable into the aerosol generation device.
While the specification extensively describes that the pattern is readable during insertion, dynamically detected during relative movement between the consumable and a detector, and may be repeated longitudinally and/or circumferentially to improve detection reliability (see, e.g., pages 3–4 and 8–12), the specification does not expressly describe that the pattern is resistant to deformation, abrasion, compression, or other alteration caused by insertion of the consumable into the device.
To the contrary, the specification contemplates embodiments in which repeated patterns are provided to ensure successful detection even if one pattern is damaged or not recognized, indicating that alteration or damage of a pattern is possible (see, e.g., page 4). The disclosure therefore focuses on redundancy and detectability, rather than preservation of the pattern’s physical state after insertion.
Accordingly, the specification fails to provide adequate written description support for the limitation that “the pattern remains unaltered after insertion,” as now recited in claim 1.
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.
Claim(s) 1-4 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney et al. (WO2019185747) using (US20210015161) as a citing reference.
Regarding claim 1 and 8, Moloney teaches a consumable article (102) for use in an aerosol generation device, the article comprising an aerosolizable medium and an indicia (126) provided in association with the article (see, e.g., ¶¶[0027]–[0029], [0041]). Moloney further teaches that the indicia represents encoded information indicative of a parameter of the article, such as authenticity or a heating profile (¶¶[0041]–[0043]).
Moloney discloses that the indicia is disposed on an outer surface of the article, and that the article is inserted along a longitudinal axis into a chamber of the aerosol generation device (¶¶[0028]–[0029], [0060]). Accordingly, the indicia is disposed on the consumable along a direction corresponding to an insertion or removal direction of the consumable into or from the aerosol generation device.
As shown in Fig. 4 and Fig. 10 of Moloney, the indicia (126, 426) is formed of a plurality of marker elements in the form of lines (¶¶[0043], [0070]–[0071]). In the embodiment of Fig. 10, the marker elements extend substantially along the longitudinal axis of the article, such that the pattern is oriented in the insertion direction of the consumable (¶¶[0070]–[0071]).
Moloney further teaches that the indicia is read by an optical sensor during insertion of the article, including embodiments in which the article slides past and contacts the optical sensor during insertion, thereby permitting sensing of the indicia while the article is being inserted (¶¶[0057]–[0059]).
Moloney does not disclose that the indicia is altered by insertion of the article; rather, the indicia is sensed and used to control operation of the device, such that the pattern remains unaltered after insertion.
However, Moloney does not expressly disclose that the same pattern is repeated in a longitudinal direction of the consumable at least two times, as recited in amended claim 1.
Moloney discloses multiple marker elements forming a single indicia pattern, and circumferential extension of marker elements to improve readability irrespective of rotational orientation (¶¶[0044], [0071]), but does not describe longitudinally separated repetitions of the same information code.
Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to repeat the same indicia pattern at least two times in the longitudinal direction of the consumable in Moloney in order to improve reliability of reading the entire information code during insertion, particularly where insertion depth, speed, or timing relative to the sensor may vary. Such repetition represents a predictable design modification that merely duplicates known indicia for redundancy, consistent with Moloney’s express emphasis on reliable sensing of indicia during insertion of the article (¶¶[0057]–[0059]).
Accordingly, claim 1 would have been obvious over Moloney.
Claim 8, which further recites that the pattern includes an image, dots, lines, a barcode, or any combination thereof, would likewise have been obvious, as Moloney expressly teaches indicia comprising optical features such as lines, gaps, notches, barcodes, or QR codes (¶¶[0045]).
Regarding claim 2, Moloney teaches a substantially cylindrical shape [0044].
Regarding claim 3, Moloney teaches wherein the consumable has an elongated shape and the insertion or removal direction of the consumable into or from the aerosol generation device is substantially parallel to the longitudinal axis of the consumable [0029].
Regarding claim 4, Moloney teaches wherein the pattern is arranged on the wrapper in a manner that the pattern is readable in the direction which corresponds to the insertion or removal direction of the consumable into or from the aerosol generation device (the indicia 126 is indicative of an encoded parameter associated with the article 102. The indicia 126, once read, may be compared to a look-up table (LUT) storing a correspondence between data associated with the indicia [0043]).
Regarding claim 7, Moloney teaches in fig. 4 and fig. 10 indicia 126 and 426 formed in lines that are repeated on different longitudinal positions (fig. 40).
Regarding claim 10, Moloney teaches wherein the reference unit are circumferentially repeated on the consumable (Providing marker elements that extend all of the way around the perimeter of the article 102 facilitates the sensing of the indicia 126 [0044]).
Claim(s) 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney et al. (WO2019185747) using (US20210015161) as applied to claim 1 above, and further in view of Rose et al. (US 2017/0135394).
Regarding claims 5 and 11, Moloney teaches that the indicia or pattern (126) may be formed in a number of different ways, including features such as lines, gaps, notches, or surface roughness, depending on the particular sensor arrangement (122) of the apparatus (100) with which the article (102) is intended to be used [0045].
Moloney further teaches that such indicia may extend in the longitudinal direction of the consumable and may be arranged circumferentially to improve detectability irrespective of rotational orientation.
However, Moloney does not expressly teach that the pattern is readable on at least two longitudinal regions in the longitudinal direction which are spaced from each other by at least 10° in the circumferential direction, nor does Moloney expressly teach that repeated patterns extend in the longitudinal direction of the consumable over a longitudinal dimension representing at least 20% of the total longitudinal dimension of the consumable, as recited in claims 5 and 11.
Rose is reasonably pertinent to the problem addressed by Moloney, namely, the arrangement and placement of pattern elements on a consumable wrapper to achieve predictable spatial distribution and functional performance.
Rose addresses how pattern elements may be positioned on a cigarette wrapper with defined circumferential spacing, longitudinal placement, and longitudinal extent, and thus would have logically commended itself to the attention of one of ordinary skill in the art seeking to modify the pattern arrangement taught by Moloney.
Rose discloses a patterned cigarette wrapper wherein the wrapper (123) includes a plurality of spaced-apart circumferential rows (131a, 131b, 131c, 131d), each row comprising one or more patch elements (126) of add-on material [0029]. These rows are disposed at different longitudinal positions along the tobacco rod, thereby providing multiple longitudinal regions in which pattern elements are present.
Rose further discloses that the patches of each circumferential row are circumferentially offset from the patches of adjacent rows, such that the patches are offset from one another relative to the longitudinal axis (134) of the tobacco rod by an angle in the range of about 40° to about 75° [0100]. Such disclosure teaches pattern regions that are circumferentially spaced from one another by an angular separation exceeding 10°, as required by claim 5.
Additionally, Rose discloses that the rows (131) and their corresponding patch elements have a length measured along the tobacco rod, and that the rows are arranged with a longitudinal pitch length of about 25% of the nominal length of the tobacco rod, with multiple rows provided along the length of the rod [0106]. This disclosure corresponds to repeated patterns extending along the consumable over a longitudinal dimension representing at least 20% of the total longitudinal dimension, as recited in claim 11.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wrapper of Moloney in view of Rose so as to provide the indicia pattern in multiple longitudinal regions spaced circumferentially from one another and to have the repeated patterns extend over a longitudinal dimension of at least 20% of the consumable length, as claimed. Applying such a known wrapper patterning technique to a known consumable article represents the application of a known technique to a known device ready for improvement to yield predictable results, consistent with MPEP § 2143(I)(D).
Accordingly, claims 5 and 11 would have been obvious over Moloney in view of Rose.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on (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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/JENNIFER A KESSIE/Examiner, Art Unit 1747