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 1-4, 6-21 are pending and are subject to this office action. Claim 1 has been amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 03/03/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 5-9, filed 03/03/2026, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. Applicant has amendment claim 1 to require that the cylindrical tube comprises a continuous cylindrical tube. Losee discloses a tobacco material applied to the outer surface of a cylindrical heater (72, Fig. 7C, col. 6 lines 60-65), but the heater (72) comprises slits (720, 721) such that the tobacco material is not a continuous cylindrical tube. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of newly found prior art.
The rejections below are maintained and modified where necessitated by Applicant’s amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the control unit.” There is insufficient antecedent basis for this limitation in the claim because it the first mention of a control unit. For the purposes of examination, claim 20 will be interpreted as the smoking article of claim 1, further comprising a control unit, wherein the control unit comprises a current regulating component.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 5-9, 12-15, and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Reevell (US 20200008470 A1).
Regarding claim 1, Reevell discloses an aerosol-generating system (401, Fig. 9, Fig. 10, [0139], “a smoking article”), comprising:
A power supply for supplying power to electric heaters (“a heat source”) in the main unit (403, [0083-0084, 0147]),
The electric heaters heat a tubular aerosol forming substrate (404, “a continuous cylindrical tube”) to generate a vapor ([0147]),
The tubular aerosol forming substrate (404) comprises a tobacco material ([0042-0043]),
An outer wrapper (407, “tubular casing”) surrounding the tubular aerosol forming substrate (404) and the heaters (211, Fig. 5, Fig. 9, [0142]),
A mouthpiece (406) defined by an end of the outer wrapper (407, Fig. 9, [0142]), and;
Power is supplied to the electric heaters upon detection of a puff on the mouthpiece (406) such that aerosol from the aerosol generating substrate (404) is received in the mouthpiece in response to a draw applied to the mouthpiece (406, [0147-0148]).
Reevell discloses the main unit (403) in Fig. 9 is substantially similar to the main unit (103) in Fig. 5 ([0144]). Therefore, the main unit (403) is considered to have heaters (211, Fig. 5, [0133]) positioned in the cavity of the substrate (404), such that the aerosol forming substrate (404) extends about a circumferential surface of the heaters (211) and is positioned between the heaters (211, Fig. 5) and the outer wrapper (407, Fig. 9, Fig. 10, [0144, 0146-0147]).
Regarding claims 2 and 3, Reevell discloses the mouthpiece comprises a cellulose acetate filter (Fig. 9, [0059, 0141]).
Regarding claim 4, Reevell discloses the power supply may be a lithium based battery such as a lithium cobalt battery ([0083]).
Regarding claim 6, Reevell discloses the heaters (211) in the main portion which may extending the length of the heating portion (210) of the main unit (Fig. 5, [0073, 0133]). The heating portion (210) is a cylindrical rod (Fig. 5) and the heaters (211) are electrically connected to the power source ([0084-0085]).
Regarding claim 7, Reevell discloses the power supply is housed in a tubular enclosure of the main unit (403) and the tubular enclosure is engaged with the outer wrapper (407, Fig. 1, Fig. 9, Fig. 10, [0083, 0118-0119, 0130, 0144]).
Regarding claim 8, Reevell discloses the aerosol generating system (401) comprises electric circuitry (“a control unit”) which is configured to supply power to the heaters from the power supply ([0084, 0087, 0147]).
Regarding claim 9, Reevell discloses the main unit may comprise a push button (13, Fig. 1) to switch the main unit on or off (“control actuation of power produced by the power source”, [0086, 0121, 0147]).
Regarding claim 12, Reevell discloses the aerosol forming substrate (404) comprises a tobacco material in the form of one or more of pellets (“tobacco containing beads”), shreds, strips, shreds of homogenized tobacco (“pieces of a reconstituted tobacco material”, [0042-0043]).
Regarding claim 13, Reevell discloses the power supply may be an electrical power supply ([0083]).
Regarding claim 14, Reevell discloses the power supply may comprise a battery and require recharging ([0083]).
Regarding claim 15, Reevell discloses the power supply may comprise a capacitor ([0083]).
Regarding claims 17 and 18, Reevell discloses the heaters are resistive heaters formed of graphite or metals ([0074]). A person having ordinary skill in the art would recognize that a resistive heater made of graphite or metals would be capable of generating both conductive and radiative heat.
Regarding claim 19, Reevell discloses the aerosol generating system (401) comprises electric circuitry (“a control device”) which is configured to supply power to the heaters in response to a user taking a puff ([0084, 0087, 0147]).
Regarding claim 21, Reevell discloses the aerosol forming substrate (404) comprises a solid tobacco material ([0042-0043]).
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.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 20200008470 A1) in view of Bless (US 20150216232 A1, as cited on IDS dated 03/28/2023).
Regarding claim 10, Reevell discloses the wrapper (407, “tubular casing“) is formed of a material substantially impermeable to gas ([0142]).
Reevell does not explicitly disclose the wrapper is formed of an insulating material.
However, Bless, directed to an aerosol delivery device (100, abstract), discloses:
The aerosol delivery device (100) comprises a first outer body (102) and second outer body (104, Fig. 1, [0037])
The first outer body (102) contains the battery and electronics and the second outer body (104) contains the disposable components (Fig. 4, [0031, 0049, 0050]).
The first and second outer bodies (102, 104) are a tubular shape and are formed of a graphite composite (Fig. 1, [0031, 0037])
The specification discloses a liner material (112) comprising graphite to provide thermal insulation (pg. 20 lines 20-31). Therefore, the outer body formed of a graphite composite is considered to meet the limitation of an insulating material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Reevell by providing an outer body formed of a graphite composite around the aerosol generating substrate as taught by Bless because both Reevell and Bless are directed to smoking articles, Reevell discloses the wrapper is formed of a material impermeable to gas but is silent to the material used, Bless teaches providing an outer body to house the disposable components of the article formed of graphite composite, and one having ordinary skill in the art would be motivated to look to similar smoking devices for housing materials, and this involves applying a known housing material to a similar smoking device to yield predictable results.
Regarding claim 11, Bless discloses the outer body (104) is formed of a graphite composite ([0037]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 20200008470 A1) in view of Fursa (US 20210145061 A1).
Regarding claim 16, Reevell discloses the heaters are resistive heaters ([0074]).
Reevell does not explicitly disclose the heat source generates inductive heat.
However, Fursa, directed to an aerosol generating device (12, [0039], discloses:
An aerosol generating device (12) comprising a tubular housing (16) defining a chamber (18) for receiving an aerosol generating article (14), a susceptor element (24), and inductor coil (26) disposed in the chamber (18, Fig. 1, [0093, 0094])
Aerosol generating devices may comprise resistive heating elements or an inductor and susceptor for inductively heating the aerosol generating article ([0003]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to substitute the resistive heater of Reevell with a rod shaped susceptor and inductor coil arranged in a tubular housing as taught by Fursa because both Reevell and Fursa are directed to smoking articles, Fursa teaches aerosol generating devices may use a resistive heating element or a susceptor and coil for induction heating, and this involves substituting one known heating source for another in a similar smoking device to yield predictable results.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 20200008470 A1) in view of Counts (US 5269327 A).
Regarding claim 20, Reevell discloses the aerosol generating system (401) comprises electric circuitry (“control unit”) which is configured to supply power to the heaters from the power supply ([0084, 0087, 0147]).
Reevell does not explicitly disclose a current regulating component.
However, Counts, directed to an electrical smoking article (10, Fig.1, col. 3 lines 63-69), discloses
A control circuit (32) which supplied current the heaters for a predetermined duration to produce enough tobacco flavor but not long enough to burn the tobacco flavor medium (col. 10 lines 37-46).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Reevell by configuring the electric circuitry to limit the current supplied to the heaters as taught by Counts because both Reevell and Counts are directed to smoking articles, Counts teaches limiting the current prevents the tobacco medium from burning, and this involves configuring a control circuitry in a known manner in a similar smoking device to yield predictable results.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,641,877 in view of Reevell (US 20200008470 A1).
Regarding claim 1, U.S. Patent No. 11,641,877 recites a smoking article comprising:
a power source;
a heat source in communication with the power source, the heat source being configured to generate heat in response to power received from the power source;
a tubular casing extending axially about the heat source to a second end;
a solid tobacco material housed within the tubular casing, the solid tobacco material being configured as a cylindrical tube extending about a circumferential surface of the axially-extending heat source, between the heat source and the tubular casing and the solid tobacco material being configured to produce an aerosol in response to the heat generated by the heat source; and
a mouthpiece defined by the second end of the tubular casing, the mouthpiece being configured to receive the aerosol from the solid tobacco material in response to a draw applied to the mouthpiece.
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims differ in that claim 1 of the instant case further requires that the tobacco material comprises a continuous cylindrical tube extending about a circumferential surface of the heat source.
However, Reevell directed to an aerosol-generating system (1, Fig. 1, Fig. 2, [0110-0112], “a smoking article”), discloses:
A tubular aerosol forming substrate (4) comprising a tobacco material and extending about a circumferential surface of a heater (11, Fig. 1, [0042-0043, 0110-0112, 0115]), and;
The aerosol forming substrate (4) can be removed from a main unit (3) without damaging the substrate ([0007]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify U.S. Patent No. 11,641,877 by providing the tobacco material as a tube extending about the circumferential surface of the heater as taught by Reevell because both U.S. Patent No. 11,641,877 and Reevell are directed to smoking articles, Reevell teaches the tubular shaped aerosol generating substrate prevents damage to the substrate when it is removed from the main unit, and this involves applying an aerosol generating substrate in a known shape to a similar smoking device to yield predictable results.
Therefore, all of the elements of rejected claims 1 and 21 are present and obvious over claim 1 of U.S. Patent No. 11,641,877
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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