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 .
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.
Response to Amendment
The amendment of November 12, 2025 is entered. Claims 1-2, 6, 9, and 26 are amended.
Status of Claims
Claim 1 is amended to include partial subject matter of dependent claim 2. Claims 28-29, 31, 34, 36, and 38-40 remain withdrawn, previously presented. Claims 3-4, 7-8, 10, 12, 15-16, 18, 20-22, 24-25, 27, 30, 32-33, 35, 37, and 41-43 were canceled previously. Claims 5-6, 9, 11, 13-14, 17, and 23 are previously presented.
Response to Arguments
Applicant’s amendments and remarks filed November 12, 2025 regarding the § 102 and § 103 rejections have been fully considered but they are not persuasive.
Applicant argues, page 8, Nordskog ¶[0060] teaches a burn retardant...may be applied to at least a distal/lighting-end portion if the substrate to help prevent ignition and/or scorching by the heat-generation segment. The burn retardant material of Nordskog is not positioned at the distal end of the article but rather is located at the distal end of the aerosol-generating substrate 55 as shown in Fig. 1 of Nordskog, annotated and reproduced below.
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Applicant continues the argument, bottom of page 8, with Nordskog teaches fuel element 40 may comprise ignition aids which “reduce the time it takes to ignite the fuel element ¶[0031], and that the ignition aid in the fuel element 40 at the distal end teaches away from the limitations of claim 1, which recites that the plug at the distal end of the article comprises a combustion retarding additive that prevents combustion of the article. Applicant argues, page 9, further embodiments of ignition aides of Nordskog ¶[0040]).
Applicant is reminded a “teaching away” constitutes the ignition aids will not work or be otherwise capable of performing their expected functions of retarding combustion, not simply that a skilled person, considering Nordskog, would not arrive at the combustion retardant configuration outlined in claim 1 of the present application. As discussed in the rejections below, Nordskog discloses the ignition aid could also be in the form of inorganic salts such as various alkali metal, including sodium chloride, sodium sulfate, magnesium, chloride, magnesium sulfate, calcium chloride, calcium sulfate, potassium chloride, sodium bisulfate, and the like (¶[0041]). The ignition aid inorganic salts alkali metal salts sodium chloride and potassium chloride overlap the claimed combustion retardant salts of Claim 5. Products of identical chemical composition cannot have mutually exclusive properties therefore, the ignition aids salts of Nordskog function as combustion retarding additives. “Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).” Therefore, Nordskog anticipates the combustion retarding additives of Claim 1.
For the above reasons, Examiner finds Applicant’s arguments not persuasive.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 5-6, 9, 11, 19, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nordskog et al. (US 2017/0000188, provided on IDS February 21, 2023).
Regarding claims 1 and 5, Nordskog discloses a smoking article (10) (anticipates an article), the article (10) comprising an aerosol-generating segment (51) (anticipates a rod) comprising an aerosol generating material (may incorporate tobacco), and a fuel element (40) (anticipates a plug) is shown at the distal end of the smoking article (10) (Fig. 1, ¶[0052]). The fuel element may include one or more ignition aids (¶[0031]). The ignition aid could also be in the form of inorganic salts such as various alkali metal, including sodium chloride, sodium sulfate, magnesium, chloride, magnesium sulfate, calcium chloride, calcium sulfate, potassium chloride, sodium bisulfate, and the like (¶[0040]).
The ignition aid inorganic salts alkali metal salts sodium chloride and potassium chloride overlap the claimed combustion retardant salts of Claim 5. Products of identical chemical composition cannot have mutually exclusive properties therefore, the ignition aids salts of Nordskog function as combustion retarding additives. “Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).” This anticipates the combustion retarding additive of Claim 1 and the combustion retardant salts of Claim 5.
Regarding claim 2, Nordskog discloses fuel element (40) can abut aerosol-generating segment (51) (anticipates adjacent to and in contact with the rod of the aerosol generating material) (¶[0068]).
Regarding claim 6, Nordskog discloses in an embodiment, the fuel element (40) may be co-extruded with a layer of insulation (42) (¶[0053]) (anticipates a sheet material); the insulation (42) can be provided as multi-layer with an intermediate layer of reconstituted tobacco paper (anticipates paper-like material) (¶[0054]).
Regarding claim 9, Nordskog discloses it is advantageous for the ignition aid to be dispersed throughout the fuel element composition in a substantially uniform manner (¶[0048]). This anticipates the combustion retarding additive is incorporated in the sheet material.
Regarding claims 11 and 19, Nordskog discloses the combustible fuel element, which is suitable for use heat-not-burn tobacco products, includes a combustible carbonaceous material, such as milled carbon powder (e.g., BKO carbon powder) (¶[0030]). In addition to the combustible carbonaceous material, the fuel element includes one or more ignition aids (¶[0031]). The BKO carbon power anticipates a mass of an amorphous solid material, the combustion retarding additive is incorporated in the amorphous solid material of Claim 11; anticipates a heating material that is in contact with the plug comprising the combustion retarding additive of Claim 19); fuel element (40) can abut aerosol-generating segment (51) (anticipates in contact with the aerosol generating material of Claim 19) (¶[0068]).
Regarding claim 23, Nordskog discloses aerosol-generating segment (51) includes a substrate material (55) (¶[0058]); the substrate material (55) can be provided from a reconstituted tobacco in cut filler form (i.e., cut rag tobacco). This anticipates the tobacco limitations of the claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nordskog et al. (US 2017/0000188, provided on IDS February 21, 2023) as applied to claim 11 above.
Nordskog further discloses the ignition aid will be present in the fuel element in an amount of at least 0.01 percent by dry weight to an amount not exceeding 40 percent by dry weight (e.g., between at least 0.01 dry wt% to < 40 dry wt%) (¶[0033]), which partially overlaps the range of Claim 13. Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art.
One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable.
In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Claims 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog et al. (US 2017/0000188, provided on IDS February 21, 2023) as applied to claim 1 above, in view of Sebastian et al. (US 2020/0154784, provided on IDS February 21, 2023).
Nordskog teaches all the claim limitations as set forth above. Nordskog teaches the ignition aid can be incorporated in the fuel element monolith structure by known techniques such as spray-coating or dip-coating the monolith structure (¶[0048]), which reads over the coating limitation of Claim 14. Nordskog further discloses the ignition aid will be present in the fuel element in an amount of at least 0.01 percent by dry weight to an amount not exceeding 40 percent by dry weight (e.g., between at least 0.01 dry wt% to < 40 dry wt%) (¶[0033]), which partially overlaps the range of Claim 14. Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable.
In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Nordskog does not explicitly disclose the coating comprising a binder (Claim 14) nor the binder material or wt% of binder material in the coating (Claim 17).
Sebastian teaches aerosol generating substrates for use in aerosol source members and aerosol source members for use with aerosol delivery devices wherein some implementations of aerosol source members use an ignitable heat source to heat a material, preferably without combusting the material to any significant degree, for forming an inhalable substance (e.g., carbon heated tobacco products) (¶[0028]). Sebastian additionally teaches a binder is understood to be a material that imparts a cohesive effect to fibers (¶[0056]). The coating may include one or more of the following ingredients: a fibrous material comprising a tobacco or a non-tobacco material, a binder material, a burn retardant, an aerosol precursor composition, and a flavorant (¶[0060]).
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 coating of Nordskog to include a binder material as taught by Sebastian with a reasonable expectation of success due to the cohesive effect binders impart to fibers. This reads over Claim 14.
Regarding claim 17, Sebastian teaches preferred coating binder materials include alginates, such as ammonium alginate, propylene glycol alginate, potassium alginate, and sodium alginate. Other suitable binder materials include hydroxypropyl cellulose ; hydroxypropyl methylcellulose; hydroxyethyl cellulose; microcrystalline cellulose; methylcellulose; and sodium carboxymethylcellulose. Still other possible binder materials include starches (e.g., corn starch), guar gum, carrageenan, locust bean gum, pectins and xanthan gum. In some implementations, combinations, or blends of two or more binder materials may be employed (¶[0065]).
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 coating of Nordskog to include a binder material selected from the list of coating binder materials as taught by Sebastian with a reasonable expectation of success because Sebastian exemplifies said binder materials for use in a coating. This reads over the binder material listing of Claim 17.
Sebastian further teaches in one implementation the coating may include less than 10% of binder material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that one ordinary skill in the art would be reasonably suggested to include in the coating of Nordskog about 9.9 wt% of binder material. A person of ordinary skill in the art would have a reasonable expectation of success with such modification as about 9.9 wt% of binder material in the coating is close to the lower end of the claimed range of about 10 wt% to about 97 wt%.
One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable, especially a value at the upper end of the prior art range, given that the prior art specifically teaches the range to be suitable.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Nordskog et al. (US 2017/0000188, provided on IDS February 21, 2023) as applied to claim 1 above, in view of Malgat et al. (US 2019/0075845).
Nordskog discloses all the claim limitations as set forth above. Nordskog further discloses the fuel element density greater than 0.5 g/cm3 (i.e., 0.5 mg/mm3) which encompasses the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Nordskog because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Nordskog does not explicitly disclose the pressure drop of the plug.
Malgat teaches an aerosol-generating article (10) comprising a plug element (90) located upstream of and adjacent the aerosol-forming substrate (20) within the rod (abstract); wherein a resistance to draw (RTD) of a plug element may be between 20 mmWG and 40 mmWG (millimeter water gauge) (¶[0015]). Malgat teaches an embodiment in Fig. 3 wherein the plug element (92) is porous allowing air to pass through the plug element (¶[0111]).
One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable.
In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747