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
The Amendment of 02/26/2026 is entered. Claims 1-16 are pending.
EXAMINER’S AMENDMENT
Authorization for this examiner’s amendment was given in an interview with Mitesh Mehta on 4/10/2026.
The application has been amended as follows:
Claim 16 is cancelled.
Response to Arguments
Applicant’s arguments, see Remarks heading 35 USC 112, filed 02/26/2026, with respect to the 35 USC 112(b) rejections of claims 3-4 and 14 have been fully considered and are persuasive. The rejections of claims 3-4 and 14 based on 35 USC 112(b) have been withdrawn.
The double patenting rejection based on 18025065 and 18025293 is overcome by the amendment requiring (vi) strip-cutting the continuous web or the continuous strip of aerosol generating substrate to form 1) aerosol generating strips comprising susceptor strips and 2) aerosol generating strips without susceptor patch. This additional limitation is not claimed in either of the reference applications, and thus these double patenting rejections have been withdrawn.
The provisional double patenting rejections made based on application 18/026,536 has been updated to reflect that the reference application has issued as US Pat. # 12,419,341.
The provisional double patenting rejections made based on application 18/026,670 has been updated to reflect that the reference application has issued as US Pat. # 12,329,191
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 9-11 of U.S. Patent No. US 12419341B2 in view of Tallier et al. (WO 2009112257 A1).
Regarding claim 1, US 12419341B2 discloses:
A method for continuously manufacturing aerosol generating articles, the method comprising:
(i) providing a continuous web or a continuous strip of an aerosol generating substrate, the continuous web or the continuous strip having a substantially flat surface, (claim 1);
(v) adhering the at least one susceptor patch to the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate, (claim 1 step (ii)); and
(vi) strip-cutting the continuous web or the continuous strip of aerosol generating substrate to form 1) aerosol generating strips comprising susceptor strips and 2) aerosol generating strips without susceptor patch, (claim 1 step 3 – cutting the exposed regions of the continuous web to form a plurality of strips on each side inherently forms the aerosol generating strips comprising susceptor strips as well as aerosol generating strips without the susceptor patch).
18026536 does not explicitly disclose the steps of:
(ii) providing a continuous web of susceptor material;
(iii) intermittently applying an adhesive to a surface of the continuous web of susceptor material to form adhesive areas on the surface; and
(iv) continuously cutting the continuous web of susceptor material at positions between the adhesive areas to form at least one susceptor patch, but by claiming that the at least one susceptor patch is adhered to the continuous web or continuous strip of aerosol generating substrate, 18026536 leaves to one of ordinary skill in the art, how the susceptor patch is to be provided to the method before adherence.
Tallier teaches a method for spaced application of patches of a first material onto a web of a second material for use in the manufacture of smoking articles, ([pg 1 lines 3-6]), and is thus within the inventor’s field of endeavor. Tallier teaches an apparatus that introduces a web of first material and a glue applicator for applying glue to the web of first material, and a cutter to form glued patches of the first material, a means to introduce a web of second material, and a transfer drum for applying the glued patches of the first material to the web of second material, ([pg 1 lines 24-31]). Tallier teaches that preferably the glue applicator is arranged to apply spaced glue areas to the web of the first material, ([pg 1-2 lines 36-2]), to avoid applying glue over the entire web of the first material, so that the cutter may be configured to cut in between the spaced glue areas to prevent the cutter from being clogged with glue, ([pg 2 lines 1-4]). Tallier teaches that the first material may be a metal and may be aluminum foil, which is a known susceptor material. Tallier teaches that the second material is a paper-like material, ([pg 3 lines 27-35]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the claimed invention of 18026536 according to the teachings of Tallier. Tallier teaches applying adhesive to the continuous web of susceptor material in patches, for the obvious purpose of improving the adherence between the susceptor patches and the continuous web of aerosol generating substrate, and cutting the susceptor web in between the applied areas of adhesive, to avoid fouling the cutting blades. One of ordinary skill in the art would have been motivated to hat apply the known steps and techniques of Tallier to the method of 18026536 for the obvious purpose of avoiding fouling the cutting blades with glue, and improving the adherence of the susceptor patches to the continuous web of substrate.
Regarding claim 2, modified US 12419341B2 discloses the method of claim 1.
Tallier further teaches:
wherein step (iv) comprises continuously cutting the continuous web of susceptor material at positions between the adhesive areas to form a plurality of susceptor patches, ([pg 2 lines 1-4]).
Regarding claim 3, modified US 12419341B2 discloses the method of claim 1. Tallier teaches that the intermittently applied adhesive is applied substantially across a full width of susceptor material, see Fig 2a, ref 201, depicting a glue area that is substantially across a full width of the susceptor material, ref 203.
Regarding claim 4, modified US 12419341B2 discloses the method of claim 3. Tallier teaches the after the patches of susceptors with glue are applied to the paper, the glue may then be dried by heaters, ([pg 10 lines 22-26]).
Regarding claim 5-6, modified US 12419341B2 discloses the method of claim 1. Tallier teaches a configuration where the susceptor patches and second web are pressed between cam rollers,
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It would have been obvious to one of ordinary skill in the art, before the earliest filing date of the claimed invention, to have provided a pair of cam rollers to press the susceptor patches onto the second web. The depicted rollers reasonably suggest that the susceptor patches are pressed onto the continuous web. One of ordinary skill in the art would know that pressing a patch with a glue area onto a continuous web would promote adhesion between the continuous web and susceptor patch, and one of ordinary skill in the art would be motivated to provide this adaptation for the obvious purpose of improving the adhesion between the applied patch and second web.
Regarding claim 7, modified US 12419341B2 discloses the method of claim 1. 18026536 further discloses:
wherein the at least one susceptor patch has a length of between 5 mm and 50 mm, (claim 11).
Regarding claim 8, modified US 12419341B2 discloses the method of claim 1. Modified US 12419341B2 further discloses:
wherein the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate provided in step (i) includes a centre line, and step (v) comprises adhering the at least one susceptor patch to the substantially flat surface substantially along the centre line, (claim 1).
Regarding claim 9, modified US 12419341B2 discloses the method of claim 2. modified US 12419341B2 further discloses:
wherein step (v) comprises consecutively adhering the plurality of susceptor patches to the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate with a predefined and constant spacing between each successive susceptor patch and step comprises forming the continuous web or the continuous strip of aerosol generating substrate and the susceptor patches into the continuous rod, (claim 9).
Regarding claim 10-11, modified US 12419341B2 discloses the method of claim 1. Modified US 12419341B2 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 10).
Regarding claim 12, modified US 12419341B2 discloses the method of claim 9. modified US 12419341B2 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 10). Modified 18026536 does not explicitly claim wherein step (vii) comprises cutting the continuous rod at a position between adjacent susceptor patches, however the claimed limitation of cutting the continuous rod to form a plurality of individual smoking articles is interpreted in light of the specification as including embodiments where the cutting occurs at a position between the adjacent susceptor patches, (Specification [pg 19 lines 10-25]), see also MPEP 804 B. 1. Construing the Claim Using the Reference Patent or Application Disclosure, thus rendering claim 12 obvious.
Regarding claim 13, modified US 12419341B2 discloses the method of claim 12. Modified 18026536 does not explicitly disclose:
wherein step (vii) comprises cutting the continuous rod substantially at a midpoint between adjacent susceptor patches, however the claimed limitation of cutting the continuous rod substantially at a midpoint between adjacent susceptor patches is interpreted in light of the specification as including embodiments where the cutting occurs at a position substantially at a midpoint between adjacent susceptor patches, (Specification [pg 19 lines 10-25]), see also MPEP 804 B. 1. Construing the Claim Using the Reference Patent or Application Disclosure, thus rendering claim 13 obvious.
Regarding claim 14, modified US 12419341B2 discloses the method of claim 2. Tallier teaches that the intermittently applied adhesive is applied substantially across a full width of susceptor material, see Fig 2a, ref 201, depicting a glue area that is substantially across a full width of the susceptor material, ref 203.
Regarding claim 15, modified US 12419341B2 discloses the method of claim 9. Modified US 12419341B2 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 10). Modified 18026536 does not explicitly claim wherein, wherein each individual aerosol generating article comprises at least one susceptor patch, and wherein step (vii) comprises cutting the continuous rod at a position between adjacent susceptor patches, however the claimed limitations are interpreted according to the Specification as including embodiments the cutting occurs at a position between adjacent susceptor patches to ensure each individual aerosol generating article comprises at least one susceptor patch, (Specification [pg 5 lines 20-25]), see also MPEP 804 B. 1. Construing the Claim Using the Reference Patent or Application Disclosure, thus rendering claim 15 obvious.
Claims 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 6-11 of U.S. Patent No. US 12329191B2 in view of Tallier et al. (WO 2009112257 A1).
Regarding claim 1, US 12329191B2 discloses:
A method for continuously manufacturing aerosol generating articles, the method comprising: (i) providing a continuous web or a continuous strip of an aerosol generating substrate, the continuous web or the continuous strip having a substantially flat surface, (claim 1), (claim 8);
(v) adhering the at least one susceptor patch to the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate, (claim 6); and
(vi) strip-cutting the continuous web or the continuous strip of aerosol generating substrate to form 1) aerosol generating strips comprising susceptor strips and 2) aerosol generating strips without susceptor patch, (claim 1).
Tallier teaches a method for spaced application of patches of a first material onto a web of a second material for use in the manufacture of smoking articles, ([pg 1 lines 3-6]), and is thus within the inventor’s field of endeavor. Tallier teaches an apparatus that introduces a web of first material and a glue applicator for applying glue to the web of first material, and a cutter to form glued patches of the first material, a means to introduce a web of second material, and a transfer drum for applying the glued patches of the first material to the web of second material, ([pg 1 lines 24-31]). Tallier teaches that preferably the glue applicator is arranged to apply spaced glue areas to the web of the first material, ([pg 1-2 lines 36-2]), to avoid applying glue over the entire web of the first material, so that the cutter may be configured to cut in between the spaced glue areas to prevent the cutter from being clogged with glue, ([pg 2 lines 1-4]). Tallier teaches that the first material may be a metal and may be aluminum foil, which is a known susceptor material. Tallier teaches that the second material is a paper-like material, ([pg 3 lines 27-35]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the claimed invention of 18025293 according to the teachings of Tallier. Tallier teaches applying adhesive to the continuous web of susceptor material in patches, for the obvious purpose of improving the adherence between the susceptor patches and the continuous web of aerosol generating substrate, and cutting the susceptor web in between the applied areas of adhesive, to avoid fouling the cutting blades. One of ordinary skill in the art would have been motivated to hat apply the known steps and techniques of Tallier to the method of 18025293 for the obvious purpose of avoiding fouling the cutting blades with glue, and improving the adherence of the susceptor patches to the continuous web of substrate.
Regarding claim 2, modified US 12329191B2 discloses the method of claim 1.
Tallier further teaches:
wherein step (iv) comprises continuously cutting the continuous web of susceptor material at positions between the adhesive areas to form a plurality of susceptor patches, ([pg 2 lines 1-4]).
Regarding claim 3, modified US 12329191B2 discloses the method of claim 1. Tallier teaches that the intermittently applied adhesive is applied substantially across a full width of susceptor material, see Fig 2a, ref 201, depicting a glue area that is substantially across a full width of the susceptor material, ref 203.
Regarding claim 4, modified US 12329191B2 discloses the method of claim 3. 18026670 discloses that the adhesive may be heated to cure or set the adhesive, (claim 7). Tallier also teaches the after the patches of susceptors with glue are applied to the paper, the glue may then be dried by heaters, ([pg 10 lines 22-26]).
Regarding claim 5-6, US 12329191B2 discloses the method of claim 1. Tallier teaches a configuration where the susceptor patches and second web are pressed between cam rollers,
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It would have been obvious to one of ordinary skill in the art, before the earliest filing date of the claimed invention, to have provided a pair of cam rollers to press the susceptor patches onto the second web. The depicted rollers reasonably suggest that the susceptor patches are pressed onto the continuous web. One of ordinary skill in the art would know that pressing a patch with a glue area onto a continuous web would promote adhesion between the continuous web and susceptor patch, and one of ordinary skill in the art would be motivated to provide this adaptation for the obvious purpose of improving the adhesion between the applied patch and second web.
Regarding claim 7, modified US 12329191B2 discloses the method of claim 1. Modified 18026670 further discloses:
wherein the at least one susceptor patch has a length of between 5 mm and 50 mm, (claim 10).
Regarding claim 8, modified US 12329191B2 discloses the method of claim 1. Modified 18026670 further discloses:
wherein the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate provided in step (i) includes a centre line, (claim 8), and step (v) comprises adhering the at least one susceptor patch to the substantially flat surface substantially along the centre line, (claim 8), (claim 6).
Regarding claim 9, modified US 12329191B2 discloses the method of claim 2. Modified 18026670 further discloses:
wherein step (v) comprises consecutively adhering the plurality of susceptor patches to the substantially flat surface of the continuous web or the continuous strip of aerosol generating substrate with a predefined and constant spacing between each successive susceptor patch and step comprises forming the continuous web or the continuous strip of aerosol generating substrate and the susceptor patches into the continuous rod, (claim 9).
Regarding claim 10, modified US 12329191B2 discloses the method of claim 1. Modified 18026670 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 11).
Regarding claim 11, modified US 12329191B2 discloses the method of claim 10. Modified 18026670 further does not explicitly claim: wherein each individual aerosol generating article comprises at least one susceptor patch.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to ensure that each individual aerosol generating article comprises at least one susceptor patch, for the obvious advantage of ensuring that each smoking article contains a component that can be heated inductively, to ensure that the aerosol generating article may be heated to form an aerosol.
Regarding claim 12-13, modified US 12329191B2 discloses the method of claim 9. Modified 18026670 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 11), but does not claim wherein step (vii) comprises cutting the continuous rod at a position between adjacent susceptor patches or wherein step (vii) comprises cutting the continuous rod substantially at a midpoint between adjacent susceptor patches.
The step of cutting the continuous rod to form a plurality of aerosol generating articles is interpreted to include both of these embodiments in light of the specification, ([pg 18 lines 7-11]).
Regarding claim 14, modified US 12329191B2 discloses the method of claim 2. Tallier teaches that the intermittently applied adhesive is applied substantially across a full width of susceptor material, see Fig 2a, ref 201, depicting a glue area that is substantially across a full width of the susceptor material, ref 203.
Regarding claim 15, modified US 12329191B2 discloses the method of claim 9. Modified 18026670 further discloses:
wherein the method further comprises: (vii) cutting the continuous rod to form a plurality of individual aerosol generating articles, (claim 11), but does not explicitly claim wherein each individual aerosol generating article comprises at least one susceptor patch, and wherein step (vii) comprises cutting the continuous rod at a position between adjacent susceptor patches. The step of cutting the continuous rod to form a plurality of aerosol generating articles is interpreted to include both of these embodiments in light of the specification, ([pg 5-6 lines 31-5]).
Allowable Subject Matter
Claims 1-15 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter: Sanna et al. (US 20200114097 A1) as modified by Tallier et al. (WO 2009112257 A1) are considered the closest prior art references of record. Although Sanna discloses a method for continuously manufacturing aerosol generating articles that as modified by Tallier renders obvious many of the present claim limitations, it does not further disclose strip-cutting the continuous web or the continuous strip of aerosol generating substrate to form 1) aerosol generating strips comprising susceptor strips and 2) aerosol generating strips without susceptor patch, in conjunction with the other claimed limitations. Neither Sanna nor Tallier reasonably disclose or suggest this step, and it would not be obvious to one of ordinary skill in the art to perform this step absent impermissible hindsight.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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