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 request for continued examination filed March 26,2026. Claims 1 and 19 have been amended. Claims 4, 9, 18, and 20 have been cancelled. Claims 1-3, 5-8, 10-17, 19, and 21 are pending and stand rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 26, 20026 has been entered.
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 1-3, 5-8, 10-13, 16-17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 20140345634 A1 (hereinafter ZUBER) in view of US 20220007710 A1 (hereinafter CAMPITELLI).
Regarding claim 1, ZUBER discloses a smoking article with a plurality of elements for use with a heating element (abstract). ZUBER discloses a rod (Fig. 1, rod 15, ¶53) comprising a column of aerosol-generating material (Fig. 1, aerosol forming substrate 7, ¶56) and a mouthpiece (Fig. 1, mouthpiece filter 3, ¶59) at a first end of the column of aerosol-generating material, the column of aerosol generating material being wrapped in a wrapper (Fig. 1, cigarette paper 5, ¶53); and a component (Fig. 1, front-plug 2, ¶53, ¶56, ¶69) located within the wrapper at an opposite end of the column of aerosol-generating material to retain the aerosol generating material within the wrapper. ZUBER discloses that the front end plug blocks the path of the substrate upon removal keeping the substrate contained (¶69-¶70). ZUBER further discloses that the front-end plug has the advantage of preventing egress of the aerosol-forming substrate during shipping (¶20).
ZUBER does not disclose wherein the component comprises a non-aerosol generating material formed from an amorphous solid or wherein the amorphous solid is crimped.
CAMPITELLI teaches a tubular element for use in an aerosol-generating article with a porous medium loaded with a gel (abstract). CAMPITELLI teaches that the porous medium has a gel that comprises an active agent (¶7). CAMPITELLI also teaches that the medium comprises non-aerosol generating materials such as biopolymers, gellan gums, alginates, agar (¶109). CAMPITELLI teaches that the use of agar as the gelling agent is preferred because the melting point of the gel is suitable for hot environments and only needs to be heated to low temperatures to aerosolize the active agent (¶117). CAMPITELLI further teaches that the porous medium may be any material able to hold or retain the gel including paper that is crimped (¶192). .
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 ZUBER to provide wherein the component comprises a non-aerosol generating material formed from an amorphous solid and wherein the amorphous solid is crimped as taught in CAMPITELLI. A person of ordinary skill in the art would obviously include non-aerosolizable material in the gel. The gel itself comprises an active ingredient, but the recitation of comprises is open language and as clearly taught in CAMPITELLI gels made for use in an aerosol-generating article comprise non-aerosol generating material such as agar to act as a support structure. A person of ordinary skill would immediately recognize that not all of the gel is aerosol generating. Further, a person of ordinary skill in the art would use crimped medium to hold an retain the gel with predictable results (CAMPITELLI ¶192).
Regarding claim 2, modified ZUBER discloses the article of claim 1 as discussed above. ZUBER further discloses wherein the component comprises a gathered sheet of material. ZUBER teaches many options for constructing the front-plug (¶22-¶26). ZUBER discloses that the front-plug may be partially or entirely formed from an aerosol-forming substrate (¶25). ZUBER further discloses that the aerosol-forming substrate may be formed from a gathered sheet (¶6). 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 applied the teachings of ZUBER to provide that the component comprises a gathered sheet of material. Where the substrate is formed from a gathered sheet, and the front-plug is formed from a substrate, the component comprises a gathered sheet of material. A person of ordinary skill in the art would obviously use the materials of construction disclosed in ZUBER interchangeably, as encouraged and taught by ZUBER ¶61, to form the segments with predictable results.
Regarding claim 3, modified ZUBER discloses the article of claim 2 as discussed above. ZUBER further teaches wherein the gathered sheet is made of a fibrous material such as paper (¶6, ¶24). As with the reasoning stated in the rejection of claim 2, a person of ordinary skill in the art would obviously use paper, a fibrous material, for the gathered sheet with predictable results.
Regarding claim 5, ZUBER discloses the article of claim 4 as discussed above. ZUBER further teaches wherein the amorphous solid comprises elongate strips. ZUBER teaches that the aerosol-forming substrate may include strips or sheets (¶32). ZUBER further teaches that the when a gel is used it may be deposited in a pattern to deliver provide a non-uniform flavour deliver during use (¶34). ZUBER further teaches that the carrier may take the form of strips (¶34) 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 applied the teachings of ZUBER to provide that the amorphous solid comprises elongate strips. A person of ordinary skill in the art would provide the amorphous solid on strips in patterns. Doing so would provide a desired flavor delivery (¶34) .
Regarding claim 6, modified ZUBER discloses the article of claim 5 as discussed above. ZUBER further teaches wherein the elongate strips are substantially aligned with a longitudinal axis of the article. ZUBER teaches that there are strips in the substrate (¶32). ZUBER teaches that the front-plug has a length along the longitudinal axis (¶24). ZUBER teaches that the front-plug may be formed from fibres that are aligned in a direction that is longitudinal with respect to the rod (¶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 applied the teachings of ZUBER to align the elongate strips along the longitudinal axis of the article. A person of ordinary skill in the art would obviously arrange strips along the axis. Doing so is an obvious arrangement of fibres and strips along the article. The courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). One of ordinary skill in the art would appreciate [insert].
Regarding claim 7, modified ZUBER discloses the article of claim 4 as discussed above. ZUBER further teaches wherein the amorphous solid is laminated on a supporting substrate. ZUBER teaches the use of a gel, considered to be an amorphous solid (¶34). ZUBER teaches that the gel may be deposited on the entire surface of a carrier in order to provide a specific flavor delivery during use (¶34). In the case where the front-end plug is made from an aerosol forming substrate (¶25) and the substrate is made from a gel deposited on a carrier, the component comprises a material formed from an amorphous solid. This is directly analogous to the instant application where a gel is applied to a carrier (See PG Pub of instant application ¶31).
Regarding claim 8, modified ZUBER discloses the article of claim 7 as discussed above. ZUBER further teaches wherein the supporting substrate is paper or foil. ZUBER discloses that the front end plug may comprise paper (¶24). ZUBER further teaches that the aerosol forming substrate may be embedded onto a carrier that can take the form of strips or sheets (¶34). A person of ordinary skill in the art would immediately recognize that paper as disclosed in ZUBER as an acceptable material of construction (¶24) would be used in the form of strips or sheets (¶34) with predictable results.
Regarding claim 10, modified ZUBER discloses the article of claim 4 as discussed above. ZUBER further teaches, wherein the amorphous solid comprises a flavourant. ZUBER teaches that the substrate can comprise a flavor (¶15). ZUBER further teaches that the substrate is can be applied to the carrier to release this flavor in a designed non-uniform delivery (¶34).
Regarding claim 11, modified ZUBER discloses the article of claim 1 as discussed above. ZUBER does not disclose wherein the amorphous solid comprises a gelling agent.
CAMPITELLI teaches a tubular element for use in an aerosol-generating article with a porous medium loaded with a gel (abstract). CAMPITELLI teaches that the porous medium has a gel that comprises an active agent (¶7). CAMPITELLI teaches that the gel comprises a gelling agent (¶103). CAMPITELLI also teaches gelling agents such as biopolymers, gellan gums, alginates, agar (¶109). CAMPITELLI teaches that the use of agar as the gelling agent is preferred because the melting point of the gel is suitable for hot environments and only needs to be heated to low temperatures to aerosolize the active agent (¶117).
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 ZUBER to provide wherein the amorphous solid comprises a gelling agent as taught in CAMPITELLI. A person of ordinary skill in the art would obviously include a gelling agent in the gel. The gelling agent acts as solid medium to disperse an aerosol former (¶108).
Regarding claim 12, modified ZUBER discloses the article of claim 11 as discussed above. ZUBER does not disclose wherein the gelling agent is one of pectin, gelatin, polysaccharide or carageenan.
CAMPITELLI teaches a tubular element for use in an aerosol-generating article with a porous medium loaded with a gel (abstract). CAMPITELLI teaches that the porous medium has a gel that comprises an active agent (¶7). CAMPITELLI teaches that the gel comprises a gelling agent (¶103). CAMPITELLI also teaches gelling agents such as biopolymers formed of polysaccarides, gellan gums, alginates, agar (¶109). CAMPITELLI teaches that the use of agar as the gelling agent is preferred because the melting point of the gel is suitable for hot environments and only needs to be heated to low temperatures to aerosolize the active agent (¶117).
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 ZUBER to provide wherein the gelling agent is polysaccharide as taught in CAMPITELLI. A person of ordinary skill in the art would obviously use polysaccharide a well-known gelling agent to form the gel with predictable results.
Regarding claim 13, modified ZUBER discloses the article of claim 1 as discussed above. ZUBER further discloses wherein the mouthpiece comprises a body of material (¶19).
Regarding claim 16, modified ZUBER discloses the article of claim 1 as discussed above. ZUBER further discloses comprising a second component (Fig. 1, tube 6, ¶57) located in the wrapper between the aerosol generating material and the mouthpiece.
Regarding claim 17, modified ZUBER discloses the article of claim 16 as discussed above. ZUBER further discloses wherein the second component is the same as the component located within the wrapper at an opposite end of the column of aerosol-generating material. The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. In this case, ZUBER encourages the five elements in the cigarette paper, but also the inclusion and reordering of the elements (¶61). A person of ordinary skill in the art would obviously apply the teachings to include an amorphous solid on a carrier for flavor delivery in the various segments of the rod with predictable results to deliver flavor to a user (¶33-¶34).
Regarding claim 19, modified ZUBER discloses a method (¶7, ¶32, ¶35-¶36) for manufacturing an article for use in a non-combustible aerosol provision system according to claim 1, comprising: providing a column of aerosol-generating material (Fig. 1, aerosol forming substrate 7, ¶56) and a mouthpiece (Fig. 1, mouthpiece filter 3, ¶59) at a first end of the column of aerosol-generating material, the column of aerosol generating material being wrapped in a wrapper (Fig. 1, cigarette paper 5, ¶53); and locating a component which is a non-aerosol generating material (Fig. 1, front-plug 2, ¶53, ¶56, ¶69) within the wrapper at an opposite end of the column of aerosol-generating material to retain the aerosol generating material within the wrapper.. ZUBER discloses that the front end plug blocks the path of the substrate upon removal keeping the substrate contained (¶69-¶70). ZUBER further discloses that the front-end plug has the advantage of preventing egress of the aerosol-forming substrate during shipping (¶20).
ZUBER does not disclose that the component is made from an amorphous solid that has been crimped.
CAMPITELLI teaches a tubular element for use in an aerosol-generating article with a porous medium loaded with a gel (abstract). CAMPITELLI teaches that the porous medium has a gel that comprises an active agent (¶7). CAMPITELLI also teaches that the medium comprises non-aerosol generating materials such as biopolymers, gellan gums, alginates, agar (¶109). CAMPITELLI teaches that the use of agar as the gelling agent is preferred because the melting point of the gel is suitable for hot environments and only needs to be heated to low temperatures to aerosolize the active agent (¶117). CAMPITELLI further teaches that the porous medium may be any material able to hold or retain the gel including paper that is crimped (¶192).
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 ZUBER to provide the component is made from an amorphous solid that has been crimped as taught in CAMPITELLI. CAMPITELLI teaches gels made for use in an aerosol-generating article comprise non-aerosol generating material such as agar to act as a support structure. Gels provide further benefits such as being thermorevesible (CAMPITELLI ¶100). Therefore a person of ordinary skill in the art forming a front end plug to prevent egress would obviously elect to make the plug from a thermoreversible gel as taught in CAMPITELLI because doing so would create a plug that can withstand heat cycling (CAMPITELLI ¶100). This is an obvious combination supported by the rationale of (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (See MPEP 2143, I., (D)). Further, a person of ordinary skill in the art would use crimped medium to hold an retain the gel with predictable results (CAMPITELLI ¶192).
Regarding claim 21, modified ZUBER discloses the article of claim 4 as discussed above. ZUBER further discloses wherein the mouthpiece comprises a body of material (¶19).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over ZUBER and CAMPITELLI as applied to claims 1-3, 5-8, 10-13, 16-17, 19, and 21 above, and further in view of US 20020020420 A1 (hereinafter ZUE) .
Regarding claim 14, modified ZUBER discloses the article of claim 13 as discussed above. ZUBER does not disclose wherein the body of material comprises an amorphous solid.
ZUE teaches high efficient filters to reduce targeted components in cigarette smoke (abstract). ZUE teaches using silica gel to impregnate the fibers of the filters (¶35). ZUE teaches that the impregnated fibers will reduce the methane delivered to the user (¶42). ZUE claims a filter impregnated with an amorphous silica gel (Claims 7-8).
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 ZUBER to provide wherein the body of material comprises an amorphous solid as taught in ZUE. A person of ordinary skill in the art would obviously include an amorphous solid in a body of material in a segmented article. Doing so would reduce targeted components in cigarette smoke (ZUE abstract) including a reduction of methane (ZUE ¶35).
Regarding claim 15, modified ZUBER discloses the article of claim 14 as discussed above. ZUBER does not disclose wherein the amorphous solid forming the component is the same as the amorphous solid forming the body.
As discussed in the rejection of claim 17 above, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. In this case, ZUBER encourages the five elements in the cigarette paper, but also the inclusion and reordering of the elements (¶61). A person of ordinary skill in the art would obviously apply the teachings to include an amorphous solid on a carrier for flavor delivery in the various segments of the rod with predictable results to deliver flavor to a user (¶33-¶34). Further in light of the teachings of ZUE, a person of ordinary skill in the art would be further motivated to include an amorphous solid to reduce components such as methane (ZUE, abstract, ¶35).
Response to Arguments
Applicant’s arguments, filed March 26, 2026, with respect to the rejections of claims 1 and 19 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of CAMPITELLI.
Conclusion
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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