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 .
Status of the Claims
Claims 1-20 are pending.
Claims 11 and 12 have been withdrawn.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive.
Regarding the argument that Counts relates to electronic smoking systems, in which the tobacco material of the replaceable cigarettes is heated by heating elements that are heated by resistive heating. Thus, Applicant argues, the teaching of Counts relates to a different technical field and it does not disclose or suggest induction heating. Accordingly, the Applicant argues, Counts does not disclose or suggest "a method for manufacturing an inductively heatable aerosol-generating article," which is the focus of Claim 1, the Examiner respectfully disagrees. Claim 1 does not positively recite any induction heating steps. The aerosol-generating article has to be capable of being inductively heatable, but the claim is not limited to the field of induction heating.
Regarding the argument that Counts teaches away from integrating any heating elements into the replaceable cigarettes; in order to make the heating elements reusable and thus Counts does not teach and cannot motivate a person of ordinary skill in the art to integrate any heating elements (let alone susceptor elements) into replaceable cigarettes, the Examiner respectfully disagrees. The Applicant is arguing limitations which are not claimed, including heating elements and replaceable cigarettes.
Regarding the argument the carbon fiber mat material of the carrier 59 of Counts is neither suitable as a susceptor, nor is it disclosed with respect to such a function and on the contrary, Counts only describes that this layer is provided for heat transfer between the heating elements 43 and the tobacco flavor material 61, the Examiner respectfully disagrees. The claim limitation states “a susceptor material” and the instant specification teaches that a preferred susceptor material is carbon (page 7, lines 27-32 and page 8, lines 2-6). The instant specification also states that the “susceptor material may be a sheet-like material, such as for example a foil, mesh or web… A mesh or web may, for example, be a material made of woven, nonwoven or braided fibers” (page 9, lines 3-5).
Regarding the argument that a person of ordinary skill in the art seeking to manufacture a smoking article, which clearly involves numerous specific considerations given that the product will be inhaled, would not look to a document teaching how to manufacture fuel lines and vapor lines for automobiles, the Examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Counts teaches the multi-layer hollow tube aerosol-generating article with a conductive layer made of carbon fibers but is silent as to the method of manufacture of the article. Hunter teaches a suitable method, specifically co-extrusion, to make a multi-layer hollow tube with a conductive layer made of carbon fibers, therefore it would be obvious for one of ordinary skill in the art at the time of filing to have applied co-extrusion as taught by Hunter as a suitable method to make the aerosol-generating article of Counts.
Regarding the argument that Hunter does not disclose or suggest anything related to induction heating thus there is no reasonable expectation of success that the extrusion process disclosed in Hunter would be successful with the materials used in the electronic smoking systems of Counts, the Examiner respectfully disagrees. First, claim 1 does not positively recite any induction heating steps. The aerosol-generating article has to be capable of being inductively heatable, but the claim is not limited to the field of induction heating. Second, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 8-10 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts (US 5388594) in view of Hunter (US 5891373).
Regarding claim 1, Counts teaches an aerosol-generating article capable of being inductively heatable (col. 8, lines 39-41, “carbon fiber mat”) wherein the article is a hollow tube (Fig. 4B) with an aerosol forming substrate layer (61, “tobacco flavor material”) and a susceptor material layer (59, “carbon fiber mat”)) and the layers are coaxial (Fig. 4B).
Counts does not expressly teach the method of making the hollow tube article.
Hunter teaches a process of making a multi-layer hollow tube (abstract) by coextrusion (col. 3, lines 10-11), wherein one layer is a conductive layer (16) formed of carbon fibers (col. 2, line 64- col. 3, line 7) and is directly adjacent a second layer (15).
Counts teaches the multi-layer hollow tube aerosol-generating article with a conductive layer made of carbon fibers but is silent as to the method of manufacture of the article. Hunter teaches a suitable method, specifically co-extrusion, to make a multi-layer hollow tube with a conductive layer made of carbon fibers, therefore it would be obvious for one of ordinary skill in the art at the time of filing to have applied co-extrusion as taught by Hunter as a suitable method to make the aerosol-generating article of Counts. The courts have held that when a particular known technique is recognized as part of the ordinary capabilities of one skilled in the art, one of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art. See MPEP 2143 D.
Regarding claims 8 and 10, modified Counts teaches that the susceptor material (59, Fig. 4B) is a sheet-like material, specifically a mat (Counts, col. 8, lines 39-41), which is in the shape of a hollow tube (59, Fig. 4B).
Regarding claim 9, Counts teaches that the susceptor material comprises carbon fibers (Counts, col. 8, lines 39-41) but does not expressly teach that the susceptor material comprises a ferromagnetic material.
Hunter teaches that the susceptor material layer (conductive layer, 16) comprises nickel or carbon fibers (Hunter, col. 3, lines 5-7). Thus, it would have been obvious for one of ordinary skill in the art at the time of the invention to have substituted nickel, a ferromagnetic material, for carbon fibers because it has been held that simple substitution of one known element (i.e. nickel) for another (i.e. carbon fibers) to accomplish the same result is obvious to one of ordinary skill in the art (See MPEP 2141 and 2143).
Regarding claim 13, modified Counts does not expressly teach a wall thickness of the extrudate is between 1 mm and 7 mm. However, the courts have 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. See MPEP 2144.04(IV)(A).
Regarding claim 14, modified Counts teaches that a wall of the extrudate is a structured wall, specifically a circular wall (59 and 61 in Fig. 4B).
Regarding claims 16, 17 and 18, modified Counts teaches further comprising covering an outside of the hollow extrudate at least partly with a cover material (69), wherein the cover material is paper (col. 7, lines 5-10) which is a porous material layer (Counts, col. 8, lines 10-12).
Regarding claim 19, modified Counts does not expressly teach that the die opening of the extrusion device is formed in between an inner tube and an outer tube, the inner tube and the outer tube being coaxially arranged.
However, modified Counts teaches co-extruding a multi-layer tube wherein each layer thickness is set on the overall extrusion device (col. 3, lines 40-56). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have the die opening of the extrusion device formed in between an inner tube and an outer tube, the inner tube and the outer tube being coaxially arranged, in order to co-extrude a multi-layer tube wherein each layer thickness is set on the overall extrusion device (col. 3, lines 40-56) with a reasonable expectation of success and predictable results.
Regarding claims 15 and 20, modified Counts does not expressly teach that the structured wall is a wavy wall, or that a circumference of the inner tube and the outer tube describe a wavy line. However, the courts have held that changes in shape, absent persuasive evidence that the particular configuration was significant would have been obvious to one of ordinary skill in the art at the time of filing. See MPEP 2144.04(IV)(B).
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Counts in view of Hunter as applied to claim 1 above, and further in view of Andersen (US 5545297).
Regarding claim 2, modified Counts does not expressly teach coaxially extruding a continuous string material together with the aerosol-forming substrate and the susceptor material.
Andersen teaches a novel feature of introducing continuous filaments into the structural matrix of the extruded article during the extrusion process (abstract and col. 9, lines 28-31) which results in remarkable properties of strength, toughness, environmental soundness, mass-producibility, and low cost (col. 6, lines 35-38). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have incorporated a continuous filament, or string material, into the structural matrix of the extruded article of modified Counts during extrusion in order achieve the remarkable properties of strength, toughness, environmental soundness, mass-producibility, and low cost (col. 6, lines 35-38), which is taught by Andersen, in the article of modified Counts.
Regarding claim 3 and 4, Andersen teaches that the continuous filament, or string material, can be placed anywhere within the structural matrix, including in the interior and/or on the surface of the structural matrix (Andersen, col. 53, lines 47-50). Thus it would have been obvious for one of ordinary skill in the art at the time of filing to have placed the string material anywhere within the structural matrix of modified Counts including in the interior between the susceptor material and the aerosol-forming substrate or radially outside of the susceptor material, as taught by Andersen, with a reasonable expectation of success and predictable results.
Regarding claims 5 and 6, modified Counts teaches that the continuous filament, or thread, comprises fibers (Andersen, col. 37, lines 22-35).
Regarding claim 7, modified Counts does not expressly teach that the continuous string material has a tensile strength such that an elongation of the continuous string material is below 1 millimeter per meter under a load of 20 Newton.
While this is not a common unit of measure of tensile strength, the instant specification teaches that preferably the string element has a tensile strength above 110MPa, and also teaches that the continuous string material is a carbon fiber.
Modified Counts teaches that the string element may be made of carbon fiber (Andersen, col. 38, lines 9-12), which has a tensile strength above 110MPa. As modified Counts teaches that the continuous string material is a carbon fiber with a tensile strength above 110MPa, this limitation is met.
Conclusion
THIS ACTION IS MADE FINAL. 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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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