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 .
This office action is in response to applicant’s amendments and remarks filed February February 26, 2026. Claim 1 has been amended. Claims 3-4 have been cancelled. Claims 1-2 and 5-21 are rejected. Claims 22-30 were previously withdrawn.
Election/Restrictions
Claims 22-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected system, pack, method, and article, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 5, 2025.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “hydrophilic coating” must be shown or the feature canceled from the claim. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As written, claim 5 depends from cancelled claim 4. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5-6, 8-9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210153555 A1 (hereinafter GILL).
Regarding claim 1, GILL discloses an aerosol generating article (abstract) for use in a device to heat the aerosol forming material (¶6). GILL discloses a heating assembly (Fig. 10, aerosol generating system 90, ¶103) having a wall that at least partially defines a chamber (Fig. 10, heating compartment 104, ¶104) for receiving said consumable for heating during use of the device (¶41). GILL discloses that the aerosol generating article is substantially cylindrical for insertion into the heating compartment of an induction heating assembly (¶41) this space is formed with walls. GILL further discloses wherein heating said consumable causes deposits of condensate to form on said wall (¶58). GILL discloses that liquid may be formed on the inside of the aerosol generating device when in use (¶58). This is on the walls of the chamber. GILL further discloses the consumable comprising a first section of aerosol generating material (Fig. 10, aerosol forming material 26, ¶75) and a second section of absorbent material (Fig. 10, second tubular member 28, ¶75), wherein the absorbent material is exposed at least partially along a length of said consumable for direct contact with said wall of said chamber to absorb said deposits when the consumable is received in the chamber. GILL discloses that the second tubular material is formed from a sheet of material and that material is substantially impermeable to air and/or vapor (¶58). GILL discloses that the second tubular member is formed of a material which is liquid absorbent to assist with preventing the buildup of liquid inside the device (¶58). GILL discloses that paper is a good example, but that other woven or non-woven fabrics will be suitable (¶58).
GILL teaches in another embodiment with a wrapping material (Fig. 8, outer wrapper 54, ¶98) which is at least partially wrapped around the first section of aerosol generating material and at least partially wrapped around the second section of absorbent material. GILL discloses that the outer wrapper 54 circumscribes the article components to secure them in position (¶98). As shown in Fig. 8, the wrapper at least partially is wrapped around the second section and in the illustration in Fig. 8, the wrapper completely wraps the second section. A person of ordinary skill in the art would obviously circumscribe the wrapper with an outer wrapper to secure the position of the segments.
GILL further teaches wherein the wrapping material partially extends over the second section of absorbent material. This is considered to be a rearrangement of parts. Courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. GILL further teaches that the wrapper may include free edges for holding the article together (¶26-¶27). GILL teaches that this is done to ensure to avoid undesirable flavor compounds (¶26-27). Additionally, GILL teaches inner and outer wrappers that are permeable and may circumscribe the components and may circumscribe only the interface of any of the components (¶54). Regarding the limitation so as to form an exposed section of absorbent material, this is considered to be a recitation of intended use. 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.
Regarding claim 2, GILL discloses the consumable according to claim 1. GILL further discloses wherein the consumable comprises a mouth end (Fig. 10, air-permeable plug 50, ¶93) and a distal end (See annotated Fig. 10 below) , wherein the mouth end is configured to protrude from an aerosol provision device (as shown in Fig. 10) and the distal end is configured to be inserted furthest into a chamber of an aerosol provision device, at least the distal end comprising the second section of absorbent material. As shown in Fig. 10, the distal end is also wrapped by the second section of absorbent material. GILL further discloses the absorbent material extending from the distal end of the consumable towards the mouth end (as shown in Fig. 10).
Regarding claim 5, GILL discloses the consumable according to claim 4. GILL further teaches the wrapping material partially extends along the full length of the second section of absorbent material. GILL discloses that the outer wrapper 54 circumscribes the article components to secure them in position (¶98). As shown in Fig. 8, the wrapper at least partially is wrapped around the second section and in the illustration in Fig. 8, the wrapper completely wraps the second section.
Regarding claim 6, GILL discloses the consumable according to claim 5. GILL further teaches the wrapping material extends partially along the second section of the absorbent material from its proximal end towards the distal end of the second section of absorbent material. This is considered to be a rearrangement of parts. Courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. GILL further teaches that the wrapper may include free edges for holding the article together (¶26-¶27). Additionally, GILL teaches inner and outer wrappers that are permeable and may circumscribe the components and may circumscribe only the interface of any of the components (¶54). GILL further discloses that the components may be cut into different lengths (¶57).
Regarding claim 8, GILL discloses the consumable according to claim 1. GILL further teaches the exposed section of absorbent material is configured to abut a wall of an aerosol provision device, during use. As explained above, GILL discloses an absorbent material to abut the wall of an aerosol provision device. Arranging the exposed section where the wrapping is at the meeting of components is considered to be a rearrangement of parts that would be obvious to one of ordinary skill in the art for positioning the components and absorbing condensate. Further, 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.
Regarding claim 9, GILL discloses the consumable according to claim 8. GILL further teaches the exposed section of absorbent material comprises a wicking material configured to abut a wall of an aerosol provision device, during use, and a core portion formed of absorbent material. GILL discloses that the second tubular material is formed from a sheet of material and that material is substantially impermeable to air and/or vapor (¶58). GILL discloses that the second tubular member is formed of a material which is liquid absorbent to assist with preventing the buildup of liquid inside the device (¶58). GILL discloses that paper is a good example, but that other woven or non-woven fabrics will be suitable (¶58).
Regarding claim 13, GILL discloses the consumable according to claim 1. GILL further teaches the second section of absorbent material comprises a wrapping material (Fig. 10, first tubular member 24) configured to be wrapped around the first section of aerosol generating material. As shown in Figs. 3-5 the first tubular member is wrapped about the aerosol generating material. GILL further discloses that the wrappers may be manufactured in combination for simplification (¶31).
Claims 7, 10-11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over GILL in view of US 20150027476 A1 (hereinafter GAMBS).
Regarding claim 7, GILL discloses the consumable according to claim 1. GILL does not disclose the wrapping material comprises a cut-out section over the second section of absorbent material.
GAMBS teaches a smoking article with multiple segments surrounded by a wrapper (abstract). GAMBS teaches that the wrapper is provided with a ventilation zone comprising a row of perforations (Fig. 2, ¶54). GAMBS teaches that the filter is sorbent (¶40). GAMBS teaches that the perforations are positioned on the filter which is considered to be a second section of absorbent material since there is a first section sorbent layer 20 (¶54). GAMBS teaches that the perforations are provided to admit air into the article that is then passed to the sorbent layer (¶55).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the wrapping material comprises a cut-out section over the second section of absorbent material as taught in GAMBS. A person of ordinary skill in the art would obviously provide cut outs in the wrapper over the absorbent material. Doing so would permit fluid flow, air or liquid, into the smoking article or sorption or delivery to the user (GAMBS ¶40, ¶54-¶55).
Regarding claim 10, GILL discloses the consumable according to claim 1. GILL does not disclose the second section of absorbent material comprises at least one absorbent particle.
GAMBS teaches a smoking article with multiple segments surrounded by a wrapper (abstract). GAMBS teaches that the filter is sorbent (¶40). GAMBS teaches that the filter may include particles of a sorbent of cellulosic material (¶41). GAMBS further teaches that the sorbent layer may comprise activated carbon to reduce smoke constituents (¶5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the second section of absorbent material comprises at least one absorbent particle as taught in GAMBS. A person of ordinary skill in the art would obviously provide a sorbent material in the form of a particle in a smoking article. Doing so would absorb unwanted constituents for smoking (GAMBS ¶5).
Regarding claim 11, modified GILL discloses the consumable according to claim 10. GILL does not disclose the at least one absorbent particle is embedded in the absorbent material.
GAMBS teaches a smoking article with multiple segments surrounded by a wrapper (abstract). GAMBS teaches that the filter is sorbent (¶40). GAMBS teaches that the filter may include particles of a sorbent of cellulosic material (¶41). This is considered to read upon applicant’s recitation of embedded insomuch as the filter includes these particles. GAMBS further teaches that the sorbent layer may comprise activated carbon to reduce smoke constituents (¶5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the at least one absorbent particle is embedded in the absorbent material as taught in GAMBS. A person of ordinary skill in the art would obviously provide a sorbent material in the form of a particle in a smoking article. Doing so would absorb unwanted constituents for smoking (GAMBS ¶5).
Regarding claim 15, modified GILL discloses the consumable according to claim 10. GILL does not disclose the absorbent particle may comprises at least one of putty, charcoal, clay, and Sepiolite.
GAMBS teaches a smoking article with multiple segments surrounded by a wrapper (abstract). GAMBS teaches that the filter is sorbent (¶40). GAMBS further teaches that the sorbent material can be made of carbon, zeolites, sepiolites, alumina, molecular sieves and combinations thereof, but it is not limited to those materials (¶26).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the absorbent particle may comprises at least one of putty, charcoal, clay, and Sepiolite as taught in GAMBS. A person of ordinary skill in the art would obviously provide a sorbent material made from the readily available list of materials taught in GAMBS. Doing so would absorb unwanted constituents for smoking (GAMBS ¶5).
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over GILL and GAMBS and in further view of US 20070295347 A1 (hereinafter PAINE).
Regarding claim 12, modified GILL discloses the consumable according to claim 10. GILL does not disclose the second section of absorbent material comprises the wrapping material carrying the at least one absorbent particle, the second section of absorbent material being wrapped at least partially around the first section of aerosol generating material.
PAINE teaches porous sorbent materials for incorporation in to a cigarette (abstract). PAINE teaches particles, are incorporated in or on a support such as a liner, plug wrap, or tipping paper (¶6). PAINE teaches several embodiments where the paper is over the filter portion (¶82), or is included in the filter paper (¶84).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the second section of absorbent material comprises the wrapping material carrying the at least one absorbent particle, the second section of absorbent material being wrapped at least partially around the first section of aerosol generating material as taught in PAINE. A person of ordinary skill in the art would obviously provide wrapping material comprising an absorbent particle. Doing so would absorb unwanted constituents for smoking (GAMBS ¶5) in the medium of a particle in a paper (PAINE ¶82-¶84). The recitation regarding the positioning is considered to be a rearrangement of parts. Courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. A person of ordinary skill in the art would obviously rearrange wrappings and include sorbent particles in different portions with predictable results.
Regarding claim 14, GILL discloses the consumable according to claim 13. GILL does not disclose the wrapping material comprises at least one absorbent particle embedded in the wrapping material.
PAINE teaches porous sorbent materials for incorporation in to a cigarette (abstract). PAINE teaches particles, are incorporated in or on a support such as a liner, plug wrap, or tipping paper (¶6). PAINE teaches several embodiments where the paper is over the filter portion (¶82), or is included in the filter paper (¶84). This is considered to read on embedded.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide t the wrapping material comprises at least one absorbent particle embedded in the wrapping material as taught in PAINE. A person of ordinary skill in the art would obviously provide. Doing so would absorb unwanted constituents for smoking (GAMBS ¶5) in the medium of a particle in a paper (PAINE ¶82-¶84).
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over GILL in view of US 20150173415 A1 (hereinafter GWAK).
Regarding claim 16, GILL discloses the consumable according to claim 1. GILL does not disclose a hydrophilic coating configured to absorb condensate from a wall of a chamber of an aerosol provision device.
GWAK teaches a low ignition propensity cigarette paper with a coating (abstract). GWAK teaches a coating including a hydrophobic and a hydrophilic starch (¶9). GWAK teaches that the inclusion of the coatings may improve the dryness (¶16). GWAK further teaches that the hydrophilic starch in the mixture may be importation to increase the porosity (¶48). GWAK further teaches that the hydrophilic starch may change the brittle characteristic (¶49, ¶70).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide a hydrophilic coating as taught in GWAK. A person of ordinary skill would obviously provide coatings because doing so would influence the characteristics, such as brittleness, of a material (¶70) and adjust porosity of the paper (¶48) to improve dryness (¶16). Regarding the limitation configured to absorb condensate from a wall of a chamber of an aerosol provision device, this is considered to be an intended use recitation. 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. In this case, the material described in GWAK, and furthermore the materials of the other prior art documents are capable of absorbing condensate from the wall of a chamber with predictable results.
Regarding claims 17-18, modified GILL discloses the consumable according to claim 16. GILL does not disclose the hydrophilic coating at least partially covers the second section of absorbent material nor the hydrophilic coating at least partially covers the wrapping material. However, this is considered to be a rearrangement of parts. Courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. A person of ordinary skill in the art would obviously include coatings in different parts of the consumable with predictable results to absorb liquids.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over GILL in view of US 20180007974 A1 (hereinafter THORENS).
Regarding claims 19 and 21, GILL discloses the consumable according to claim 1. GILL does not disclose an impermeable coating that is a hydrophobic coating.
THORENS teaches a consumable aerosol generating article for use in an electrically operated device (abstract). THORENS teaches that the wrapper may be formed of a sheet of hydrophobic material such as a wax coated paper (¶173). THORENS teaches that the use of a liquid impervious wrapper is for retaining the liquid in the consumable (¶172).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide an impermeable coating that is a hydrophobic coating as taught in THORENS. A person of ordinary skill in the art would obviously use a sheet of hydrophobic material. Doing so would retain liquid within the consumable (THORENS ¶172-¶173).
Regarding claim 20, modified GILL discloses the consumable according to claim 19. GILL does not disclose the impermeable coating covers the distal end of the consumable and is configured to prevent absorbed condensate from leaking out of the consumable.
THORENS teaches a consumable aerosol generating article for use in an electrically operated device (abstract). THORENS teaches that the wrapper may be formed of a sheet of hydrophobic material such as a wax coated paper (¶173). As shown in Fig. 2A, the wrapper 240a covers the distal end. See annotated side by side figures of THORENS and instant application
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified GILL to provide the impermeable coating covers the distal end of the consumable and is configured to prevent absorbed condensate from leaking out of the consumable as taught in THORENS. A person of ordinary skill in the art would obviously provide an impermeable coating covering the distal end. Doing so would prevent liquid from exiting the consumable and entering the electronic smoking device (THORENS ¶172-¶173).
Response to Arguments
Applicant’s arguments, filed February 26, 2026, with respect to the rejection(s) of claims 1-2 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of GIL.
The drawing objection is maintained. Applicant argues that, “the drawings are initially objected to as allegedly not showing the claimed "hydrophilic coating". Applicant respectfully disagrees. The hydrophilic coating is shown in FIG. 11 at reference numeral 44. See corresponding description at page 19, lines 10-60 of the corresponding international publication WO 2022/013546.” However, reference numeral 44 is a “hydrophobic coating” (emphasis added). Hydrophobic (water fearing) and hydrophilic (water loving) are opposites of one another. Therefore the hydrophobic coating cannot be also the hydrophilic coating.
Though applicant has amended claim 1 to include the limitations of now cancelled claims 3-4, those claimed recitations are obvious in light of another embodiment taught in GILL. This is explained above and not repeated here. Applicant has not submitted any remarks to the specific embodiment used to reject previous claims 3-4. The remarks appear to be addressed to some other embodiment of Gill which is not the subject of the rejection of claims 3-4. Therefore, these remarks are not persuasive.
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 STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 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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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766