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 office action is in response to Applicant’s amendment filed on 01/26/2026.
Claims 16-22, 24, 26, 28-30 are pending.
Claim 16 is amended.
Claims 23, 25, and 27 are cancelled.
Response to Arguments
Applicant' s arguments, see pages 5-9, filed 01/26/2026, with respect to the rejection of claim 16 under 35 U.S.C. 103 have been fully considered and are not persuasive.
On page 6, the Applicant argues the persons of ordinary skill in the art would not apply Malgat’s upstream plug to Zuber’s downstream section because the plug element is intended to prevent direct contact with the distal end of the susceptor and thus may prevent a displacement or a deformation of the susceptor during handling or transport for the article.
The Examiner respectfully disagrees and maintains the arguments of record.
As previously stated in the Non-Final rejection dated 10/24/2025, Zuber already teaches a resistance-to-draw of the downstream section is low and is merely silent to a specific value. Malgat discloses a resistance-to-draw (resistance-to-draw) of a plug element may be between 20 mmWG and 40 mmWG ([0015]) and further discloses the plug element may be made any material suitable for use in the aerosol-generating article, for example the same materials are used for the plug element as used in the mouthpiece, aerosol-cooling element, and/or in a support element (i.e., the support element, which is the downstream section, made of the same material would have the same resistance-to-draw as the plug element) ([0017]).
Malgat is only being relied upon to teach that the same material used in the aerosol-cooling element that is in Zuber, has a resistance-to-draw within the range claimed and therefore is not novel. Malgat is not applying the entire upstream plug element to a downstream section of Zuber and Malgat is merely relied upon to teach a similar material would have the resistance-to-draw claimed.
The upstream plug element is not replacing the downstream element of Zuber, the same material of the upstream plug of Malgat is the material of the downstream element of Malgat and the downstream element of Zuber, and therefore the downstream element would have the same resistance to draw and that is what is applied to Zuber’s downstream element.
On pages 6-7, the Applicant argues Malgat cannot be applied to Zuber because amended claim 16 has a narrowed resistance to draw that overcomes Malgat.
The Examiner agrees and the rejection regarding Malgat has been withdrawn due to the amendment made regarding the resistance to draw being less than 15 mmH2O which Malgat does not teach.
On pages 7-8 the Applicant argues that Zuber’s hollow tubular element does not extend from the downstream end to the upstream end and that there is no disclosure or suggestion of this feature in any embodiment in Zuber.
The Examiner respectfully disagrees.
As previously stated, Zuber teaches the aerosol generating article “may comprise a mouthpiece” ([0147]) and does not require a mouthpiece to be included in the downstream section of the device. It would be obvious to one of ordinary skill in the art that the aerosol-cooling element, could also be omitted.
In addition, merely making separable the mouthpiece and filter from the remained of the
article or omitting the mouthpiece and filter components entirely such that the hollow tubular element extends all the way to the downstream end of the aerosol generating article would be
obvious to one of ordinary skill in the art in order to arrive at the claimed invention. Therefore, the mouthpiece and aerosol-cooling element of Zuber can indeed be omitted and the downstream
section would just comprise the support elements hollow tubular element that would extend to
the downstream end of the downstream section.
In addition, Zuber further teaches that while the embodiment described and illustrated in Figure 1 has four elements, the four elements are not essential and according to other
embodiments may comprise fewer elements ([0198]). Therefore, it would be obvious to one of
ordinary skill in the art that the additional elements, the mouthpiece and the aerosol-cooling
element could be omitted from the article all together such that the hollow tubular element
extends all the way to the downstream end of the aerosol generating article and is considered
prima facie obvious to arrive at the claimed invention.
On page 8, the Applicant argues that the claim amendment regarding “the aerosol-generating substrate comprises tobacco cut filler” overcomes the previously cited prior art because there is no disclosure or suggestion in Zuber of the use of tobacco cut filler and that instead Zuber’s aerosol-generating substrate comprises homogenized tobacco material.
The Examiner respectfully disagrees.
As recited in the instant specification, “as used herein, the term "cut filler" is used to describe to a blend of shredded plant material, such as tobacco plant material, including, in particular, one or more of leaf lamina, processed stems and ribs, homogenized plant material.” Therefore, the assertion that homogenized tobacco material teaches away from tobacco cut filler is not persuasive and Zuber does not teach away from cut filler.
In addition, Zuber teaches the “solid aerosol-forming substrate may comprise, for example, one or more of: powder, granules, pellets, shreds, strands, strips or sheets containing one or more of: herb leaf, tobacco leaf, tobacco ribs, expanded tobacco and homogenized tobacco.” ([0048]). All of the components make up tobacco cut filler and therefore it would be obvious to one of ordinary skill in the art that Zuber does indeed teach an aerosol-generating substrate comprising tobacco cut filler.
In addition, Adams, which is relied upon to teach the density of the aerosol-generating substrate is known in the art, also teaches the aerosol-generating substrate preferably comprises cut filler ([0012]).
A modified rejection based on the amendments to the claims is provided below.
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.
Claims 16-22, 24, 26, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US-20140305448-A1) and further in view of Adams et al. (EP 0836390 A1, as cited in the IDS dated 04/04/2023) and Nappi (WO-2017148773-A1).
In regards to claim 16, Zuber, directed to an aerosol-generating article for use with an aerosol-generating device, discloses the aerosol-generating article comprising an aerosol-generating substrate ([0001] and [0019]-[0024]); and
- A downstream support element (i.e., downstream section) extending from a downstream end of the aerosol-generating substrate to a downstream end of the aerosol-generating article (Figure 1, [0015]-[0016], and [0178]-[0182]),
- Wherein the aerosol-generating substrate has a length from about 7 to about 15 mm ([0087]) and a diameter from about 5 to 12 mm ([0086]). Zuber discloses a length-to-diameter range that would result in a length-to-diameter ratio of the aerosol-generating substrate being from about 0.58 to about 3. The range disclosed by the prior art overlaps the claimed range of a length-to-diameter ratio of the aerosol-generating substrate is no more than 6 and is therefore considered prima facie obvious.
- Wherein the downstream section comprises a support element 30 comprising a hollow tubular element that extends from one downstream end of the downstream section to the upstream end of the downstream section ([0091]). Refer to figure 1 annotated by the Examiner provided below. Zuber further teaches that while the embodiment described and illustrated in Figure 1 has four elements, the four elements are not essential and according to other embodiments may comprise fewer elements ([0198]). Therefore, it would be obvious to one of ordinary skill in the art that the additional elements, the mouthpiece and the aerosol-cooling element could be omitted from the article all together such that the hollow tubular element extends all the way to the downstream end of the aerosol generating article and is considered prima facie obvious to arrive at the claimed invention. In addition, the downstream end of the article does not include the mouth end of the device and therefore the end of element 30 is interpreted as the downstream end of the article.
The solid aerosol-forming substrate may comprise, for example, one or more of: powder, granules, pellets, shreds, strands, strips or sheets containing one or more of: herb leaf, tobacco leaf, tobacco ribs, expanded tobacco and homogenized tobacco (i.e., tobacco cut filler) ([0048]).
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Zuber does not explicitly disclose the density of the aerosol-generating substrate is no more than 0.5 grams per cubic centimeter (I) and does not explicitly disclose the resistance to draw of the entire downstream section is less than 15 mm H2O (II).
In regards to (I):
Zuber is silent to a specific density of the aerosol-generating substrate and does not explicitly disclose a density of no more than 0.5 grams per cubic centimeter.
However, Zuber teaches the weight of an aerosol-forming substrate comprising a gathered sheet of homogenized tobacco material of a particular length is determined by the density, width and thickness of the sheet of homogenized tobacco material that is gathered to form the aerosol-forming substrate. The weight of aerosol-forming substrates comprising a gathered sheet of homogenized tobacco material of a particular length can thus be regulated by controlling the density and dimensions of the sheet of homogenized tobacco material. This reduces inconsistencies in weight between aerosol-forming substrates of the same dimensions, and so results in lower rejection rate of aerosol-forming substrates whose weight falls outside of a selected acceptance range compared to aerosol-forming substrate comprising shreds of tobacco material ([0057]).
Therefore, one of ordinary skill would reasonably conclude that the density of the aerosol-generating substrate is a result effective variable that will affect the consistency, weight, and acceptance of the substrate in the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the density of the aerosol-generating substrate to be no more than 0.5 grams per cubic centimeter to regulate the weight of the substrate because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
In addition, Adams directed to a cigarette for an electrical smoking system discloses a tobacco rod (i.e., aerosol-generating substrate) with a density most preferably between about 0.24 and 0.28 grams per cubic centimeter ([0036]).
The range disclosed by the prior art overlaps the claimed density of the substrate being no more than 0.5 grams per cubic centimeter and is therefore considered prima facie obvious.
Adams further discloses the elevated densities are preferred for the avoidance of loose ends at the free end of the substrate ([0036]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Zuber by making the density of the aerosol-generating substrate no more than 0.5 grams per cubic centimeter, as taught by Adams, because one of ordinary skill in the art would look to a similar reference for a known density of an aerosol-generating substrate in the art of a similar aerosol-generating system, especially when the original prior art is silent to one, Adams teaches the elevated density is preferred to avoid loose ends ([0036]), and this merely involves applying a known density of a similar tobacco cut filler substrate to yield predictable results.
In regards to (II):
Zuber is silent to a specific resistance-to-draw of the entire downstream section.
Nappi directed to a smoking article having a filter with a hollow tubular segment, discloses the smoking article comprising a mouth cavity and a tobacco rod (i.e., aerosol generating substrate) (page 2, lines 1-10).
Nappi further discloses the hollow tubular segment (i.e., entire downstream section) having a wall thickness of no more than 0.9 mm and formed from a fibrous filtration material (page 2, lines 9-15).
Nappi further discloses the hollow tubular element has an unrestricted flow channel with a substantially constant cross-sectional area for the smoke and air to flow through and is the downstream section of the article (Figure 1 and page 2, lines 33-34).
Nappi further discloses the unrestricted, hollow tube segment does not substantially contribute to increasing the resistance-to-draw (resistance-to-draw) of the smoking article. At most, the unrestricted, hollow tube segment contributes only marginally to increasing the resistance-to-draw of the smoking article. In practice, the unrestricted, hollow tube segment may be adapted to generate a resistance-to-draw in the range of approximately 1 mm H2O and approximately 20 mm H2O (page 3, lines 5-10). The range disclosed by the prior art overlaps the claimed range of the downstream section having a resistance-to-draw of less than 30 mm H2O and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify modified Zuber, by making the downstream element have a resistance-to-draw less than 10 mm H2O, as taught by Nappi, because all are directed to aerosol-generating articles, Nappi teaches a similar hollow tubular section with a low resistance-to-draw (page 3, lines 5-10), and this involves applying a known and commonly used resistance-to-draw of a similar downstream element, which is merely silent to a specific resistance-to draw, to yield predictable results.
In regards to claim 17, Zuber discloses the aerosol-generating substrate has a length from about 7 to about 15 mm ([0087]) and a diameter from about 5 to 12 mm ([0086]). Zuber discloses a length-to-diameter range that would result in a length-to-diameter ratio of the aerosol-generating substrate being from about 0.58 to about 3. The range disclosed by the prior art overlaps the claimed range of a length-to-diameter ratio of the aerosol-generating substrate is at least 0.5 and is therefore considered prima facie obvious.
In regards to claims 18-19, Zuber discloses the aerosol-generating substrate has a diameter from about 5 to 12 mm ([0086]). The range disclosed by the prior art overlaps the claimed range of the diameter of the aerosol-generating substrate being from at least 5 to no more than 8 millimeters and is therefore considered prima facie obvious.
In regards to claims 20-21, Zuber discloses the aerosol-generating substrate has a length from about 7 to about 15 mm ([0087]). The range disclosed by the prior art overlaps the claimed range of the length of the aerosol-generating substrate being from at least 10 to no more than 40 millimeters and is therefore considered prima facie obvious.
In regards to claim 22, As discussed above in claim 16, density is a result effective variable that can be optimized. Therefore it would be obvious to one of ordinary skill in the art that the density of the aerosol-generating substrate could be modified to have a density of at least 0.24 grams per cubic centimeter as claimed.
Further, Adams discloses the aerosol-generating substrate comprising a density most preferably between about 0.24 and 0.28 grams per cubic centimeter ([0036]).
The range disclosed by the prior art overlaps the claimed density of the substrate being at least 0.24 grams per cubic centimeter and is therefore considered prima facie obvious.
In regards to claim 24, Zuber discloses the aerosol-generating substrate comprises an aerosol former, wherein the aerosol former content in the aerosol-generating substrate is between approximately 5% and approximately 30% on a dry weight basis ([0081]). The range disclosed by the prior art overlaps the claimed range of the aerosol former being at least 10 percent by weight and is therefore considered prima facie obvious.
In regards to claim 26, Zuber discloses the aerosol-generating article may comprise one or more air inlets (i.e., ventilation zone) downstream the aerosol-generating substrate (at a location along the downstream section), through which air may be drawn into the aerosol-generating article ([0032]).
In regards to claim 29, Zuber discloses an aerosol-generating article system comprising ([0168]):
The aerosol-generating article according to claim 16; and
An aerosol-generating device having a distal end and a mouth end (Figure 2 and [0168]), the aerosol generating device comprising:
A housing (body) extending from a distal end to the mouth end, the housing defining a device cavity configured to receive the aerosol-generating article ([0161]) at the mouth end of the aerosol-generating device (Figure 2), and
A heater within the cavity configured to heat the aerosol-generating substrate when the aerosol-generating article is received within the device cavity ([0160]-[0171]).
In regards to claim 30, Zuber discloses the device may include other heaters in addition to the internal heating element that is inserted into the aerosol-forming substrate of the aerosol-generating article ([0165]).
Adams discloses a heater fixture (i.e., device) slidably receives the aerosol generating article ([0013]).
Adams further discloses when the article is inserted, each heater will locate alongside (i.e., circumscribe) the tobacco rod (i.e., substrate) at a predetermined location so that condensation of the tobacco aerosol at or about the heater elements is reduced ([0014]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Zuber with additional external heaters such as the ones taught by Adam that circumscribe the substrate because both Zuber and Adam are directed to heating of aerosol generating substrates, Zuber teaches that other heaters in addition to the internal heating element may be used, Adam teaches a known type of external heater in the art, and this merely involves applying a known heater to a known device ready for improvement of the addition of a second heater.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US-20140305448-A1) in view of Adams et al. (EP 0836390 A1, as cited in the IDS dated 04/04/2023) and Nappi (WO-2017148773-A1) and further in view of Malgat et al. (US-20190075845-A1).
In regards to claim 28, Zuber discloses the aerosol-forming substrate can have a front-plug upstream the substrate ([0022]). Zuber further discloses the front-plug may be formed from an air permeable filter material such as cellulose acetate tow and that the permeability of the front-plug may be varied to help control resistance-to-draw of the aerosol-generating article ([0031]).
Modified Zuber is silent regarding a specific resistance-to-draw value and does not explicitly disclose a resistance-to-draw of the upstream section from 10 to 70 mm H2O.
Malgat directed to an article-generating article discloses an aerosol-generating article comprising an aerosol-forming substrate (abstract).
Malgat further discloses an upstream plug element comprising a resistance-to-draw from about 20 to 40 mm H2O ([0015]).
The range disclosed by the prior art overlaps the claimed range of the upstream element having a resistance-to-draw between 10 and 70 mm H2O, and is therefore considered prima facie obvious.
Malgat further discloses porosity or permeability of the material may be varied to support control of a resistance-to-draw through the aerosol-generating article ([0014]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Zuber, by making the upstream section have a resistance-to-draw from 10 to 70 mm H2O, as taught by Malgat, because all are directed to aerosol-generating articles, Malgat teaches a resistance-to-draw is important to control so that the user can draw air through the upstream element ([0012]-[0014]), and this involves applying a known and commonly used resistance-to-draw of a similar upstream element, which is merely silent to a specific resistance-to draw, to yield predictable results.
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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755