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 Claims
Claim 16-35 are pending. Claims 1-15 are cancelled. Claim 35 is withdrawn.
Election/Restrictions
Claim 35 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/15/2025.
Applicant’s election of Group I in the reply filed on 12/15/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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) 16-18, 25-30, and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2019/0075845 A1), in view of Binassi et al. (US 2017/0049147 A1), and Shinozaki et al. (US 2014/0366901 A1).
Regarding claim 16, and 25-27, Malgat discloses:
An aerosol-generating article, ([0004] an aerosol generating article comprising a plurality of elements assembled in the form of a rod), comprising: a rod of aerosol-generating substrate, ([0004] the plurality of elements comprises an aerosol forming substrate); and a paper wrapper, ([0083] preferably the outer wrapper is a cigarette paper understood to be a conventional wrapper), wrapped around at least a portion of the aerosol-generating article, ([0089] Fig 1, ref 60 outer wrapper; the plurality of elements are circumscribed by an outer wrapper to form a cylindrical rod). Malgat discloses that the aerosol forming substrate may comprise one or more of powder, granules, pellets, shreds, spaghetti strands, strips, or sheets containing one or more of, herb leaf, tobacco leaf, fragments of tobacco ribs, reconstituted tobacco, homogenized tobacco, extruded tobacco, and expanded tobacco, ([0028]). Malgat discloses alternatives where the solid aerosol firming substrate may be in loose form or may be contained within a paper or other wrapper to have the form of a plug, ([0028]). Malgat discloses that the appearance of the article is important, and that the exterior of the article may have distinctive features for aesthetic and branding reasons, including information designed to indicate which electronically operated device intended to heat the article, ([0005] disclosing an upstream plug element that may protect the upstream end of the cigarette and provide branding and other information to the user).
Malgat does not disclose that the paper wrapper comprises an embossed portion circumscribing the rod of aerosol- generating substrate along at least 80 percent of the length of the rod or that the basis weight is from 50 grams per square meter to 100 grams per square meter, but inherently any wrapper must have some basis weight.
Binassi teaches that cigarettes typically comprise a rod of tobacco surrounded by a paper wrapper and a cylindrical filter aligned in an end-to-end relationship with the wrapped tobacco rod, with the filter attached to the tobacco rod by tipping paper, ([0002]), and is thus within the inventor’s field of endeavor. Binassi teaches that a segment of a smoking article may have one or more wrappers circumscribing a segment of a smoking article, and that a basis weight of the wrapper or wrappers should combine to have a basis weight of greater than 50 grams per square meter and a basis weight of less than 100 grams per square meter, to provide a desired hardness for the mouthpiece, ([0031] the wrapper taught by Binassi is also understood to comprise a conventional wrapper) and that the one or more wrapper should preferably have a basis weight between 65-85 grams per square meter, ([0032]), and that in preferred embodiments a single wrapper with comprising this basis weight range is provided, ([0032]). Binassi teaches that the one or more wrappers may comprise any suitable material or combination of materials, including cellulose based materials, paper, cardboard, recon, cellulose based film, and combinations thereof, where the one or more wrappers may be printed, embossed, debossed, or otherwise embellished with manufacturer or brand logos, trademarks, slogans, other consumer information and indicia, and where preferably the one or more wrappers comprise paper, ([0051]).
Binassi does not teach the percentage of embossing along the length of the wrapper.
Shinozaki teaches a paper tube suitable for a holder of a flavor inhaler having a heat source, and a flavor inhaler using such a paper tube, ([0001 considered to be a smoking article), and is thus within the inventor’s field of endeavor. Binassi teaches forming a thick paper into a cylindrical hollow tube by applying embossments in the form of grooves parallel to the axial line of a cylindrical hollow body and curving the thick paper into a tube, where the grooves may be on an outer surface or an inner surface of the cylindrical hollow body, ([0010]). Binassi provides an example where the basis weight of the thick paper was 199 grams per square meter, ([0065] Table 1 “D”), was formed into a tube where the groove forming process was applied and where the groove forming process was not applied, and where the crimples (creases) formed on the surface of the tube for each case was counted, ([0068]). In no case were there any creases formed on the surface of the paper tube, where the groove forming process was used, and in all cases there were creases where the groove forming process was not used, ([0069] table 2), teaching that the bending moment are reduced in thick papers of the groove forming process, ([0070] Fig 7(a)(b), and that the ease of manufacture is improved with superior appearance, and where the grooves are applied to the thick paper no creases are formed and the tube has a stable stiffness, ([0071]), and that the stiffness could be controlled based on the nature of the embossing, ([0075]-[0082]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Malgat according to the teachings of Binassi. Malgar discloses an aerosol generating article that is formed into a rod with an outer wrapper of paper, which must have a basis weight, but is silent as to what range of basis weight to use. Binassi teaches a smoking article may be circumscribed by a single paper wrapper and teaches that the basis weight of the wrapper is between 50-100 grams per square meter. One of ordinary skill in the art would consider it to be obvious to use a wrapper according to Binassi in the article of Malgat, based on the obvious rationale of simple substitution of one known element for another to obtain predictable results, MPEP 2143 I. Examples of Rationales (B). It is found that the wrapper of Malgat differed from the claimed basis weight range by the substitution of the wrapper of Binassi. It is found that the wrapper of Binassi and the reason to use the basis weight range was known in the art to provide desired firmness to the article. It is found that one of ordinary skill in the art would have substituted the known wrapper of Binassi for the known wrapper of Malgat, using it to circumscribe the article of Malgat minus the wrapper of Malgat, and the results of the substitution would have been predictable, the plurality of elements of Malgat circumscribed by the wrapper of Binassi, providing a workable smoking article. See MPEP 2143. B. Simple Substitution of One Known Element for Another to Obtain Predictable Results.
Because Binassi teaches embossing the wrapper may be embossed with manufacturer or brand logos, it is considered obvious to include embossing on at least a portion of the wrapper. Modified Malgat does not a minimum percentage of embossing on the wrapper.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Malgat according to the teachings of Shinozaki. It would have been obvious to apply embossing across the entire wrapper according to the technique of Shinozaki, to improve the product of modified Malgat, ready for improvement to yield predictable results, MPEP 2143 I. Examples of Rationales (D). The prior art renders modified Malgat obvious. It is found that extending the embossing across the entire wrapper would be seen as an improvement of modified Malgat, because the application of the embossing would improve the ease of forming the paper tube, as well as reduce the possibility that creases would form in the paper tube, as taught by Shinozaki. Although Shinozaki teaches using the embossing technique over a higher range of basis weight paper, it is found that Shinozaki also teaches modifying the depth of the embossments and that altering the depth would lead to predictable changes in the bending stiffness, and Shinozaki is silent regarding the formation of creases in lower basis papers, such as Binassi’s which are near the lower end of the range that Shinozaki, but Shinozaki teaches creases do form without embossing. It is found that one of ordinary skill in the art would have recognized that using the embossing techniques taught by Shinozaki would have predictably led to an easier formation process for circumscribing the article of modified Malgat with a reduced the probability of forming creases in the wrapper during formation, predictably improving the article of modified Malgat. See MPEP 2143. D. Applying a Known Technique to a Known Product Ready for Improvement to Yield Predictable Results.
Regarding claim 17, modified Malgat discloses the aerosol generating article of claim 16.
Binassi teaches that a basis weight of the wrapper or wrappers should combine to have a basis weight of greater than 50 grams per square meter and a basis weight of less than 100 grams per square meter, to provide a desired hardness for the mouthpiece, ([0031]) and that the one or more wrapper should preferably have a basis weight between 65-85 grams per square meter, ([0032]), and that in preferred embodiments a single wrapper with comprising this basis weight range is provided, ([0032]).
It would be obvious to select a basis weight range of between 60-70 grams per square meter, because Binassi teaches this range will work, and modifying this range will modify the firmness of the mouthpiece according to what may be desired.
Regarding claim 18, modified Malgat discloses the aerosol generating article of claim 16.
Binassi teaches that a basis weight of the wrapper or wrappers should combine to have a basis weight of greater than 50 grams per square meter and a basis weight of less than 100 grams per square meter, to provide a desired hardness for the mouthpiece, ([0031]) and that the one or more wrapper should preferably have a basis weight between 65-85 grams per square meter, ([0032]), and that in preferred embodiments a single wrapper with comprising this basis weight range is provided, ([0032]).
It would be obvious to select a basis weight range of between 75-85 grams per square meter, because Binassi teaches this range will work, and modifying this range will modify the firmness of the mouthpiece according to what may be desired.
Regarding claim 28-30, modified Malgat discloses the aerosol generating article of claim 16. Malgat does not disclose the embossed portion has a bending moment of from 3 centinewton centimeters to 8 centinewton centimeters at 90 degrees.
Binassi teaches that the one or more wrappers have a bending stiffness in the cross direction of the wrapper of at least about 4 centinewtons, ([0034]), and that bending stiffness is the resistance of the material to a bending force applied perpendicular to the plain [sic plane] of the material. Binassi does not teach the stiffness in centinewtons centimeters measured at 90 degrees.
Shinozaki teaches that the embossments may be used to modify bending moment in a wrapper, ([0070]), and that applying the embossments will improve the appearance of the tubes formed with paper that comprises embossments, ([0071]), and teaches a range of bending moments are achievable in specific paper thicknesses, (Fig 7(a)(b) depicting that the bending moment is lower one direction than the other based on the direction of the grooves). Although Shinozaki reasonably teaches that based on the basis weight of the paper and the nature of the embossments, the bending moment may be controlled, Shinozaki does not disclose varying the basis weight and embossing to achieve a particular bending moment functional range of the embossed portion of the wrapper.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided ensured the wrapper of modified Malgat had a bending moment of from 3 centinewton centimeters to 8 centinewton centimeters at 90 degrees, and preferably 4 centinewton centimeters to 7 centinewton centimeters at 90 degrees, and more preferably 4 centinewton centimeters to 6 centinewton centimeters at 90 degrees, because these bending properties are similar to those of a conventional wrapper, (see Specification pg 11 lines 1-6 and 20-21). One of ordinary skill in the art would have found it obvious to specify the bending moment to be that of the bending moment conventionally used in conventional wrappers, to provide a wrapper with a bending moment known to work, according to known methods, to yield predictable results, MPEP 2144.I Example Rationales (A).
It is found that the prior art discloses each element claimed, including the bending moment limitation (disclosed as being present in a conventional wrapper overlapping the claimed ranges in claims 28-30), with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. It is found that one of ordinary skill in the art would have been capable of combining the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. It is found that one of ordinary skill in the art would have recognized the results of the combination would be predictable. See MPEP 2144. A. Combining Prior Art Elements According to Known Methods to Yield Predictable Results.
Regarding claim 32, modified Malgat discloses the aerosol generating article of claim 16.
Malgat discloses an elongate susceptor element extending in a longitudinal direction through the rod of aerosol generating substrate, ([0003], [0089] Fig 1 ref 25 depicting an elongate susceptor element extending in a longitudinal direction through the rod of aerosol generating substrate ref 20).
Regarding claim 33, modified Malgat discloses the aerosol generating article of claim 16.
Malgat discloses an upstream element provided upstream of the rod of aerosol-generating substrate and abutting an upstream end of the rod of aerosol generating substrate, ([0089] Fig 1 ref 90 depicting an upstream element provided upstream of the rod of aerosol-generating substrate ref 20, also depicted as abutting an upstream end of the rod of aerosol generating substrate).
Regarding claim 34, modified Malgat discloses the aerosol generating article of claim 16.
Malgat discloses a downstream section provided downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol generating substrate, the downstream section comprising one or more downstream elements, ([0089] Fig 1 refs 30, 40, and 50 depicting a downstream section provided downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol generating substrate, the downstream section comprising one or more downstream elements).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2019/0075845 A1), Binassi et al. (US 2017/0049147 A1), and Shinozaki et al. (US 2014/0366901 A1), as applied to claim 16 above, and further in view of Cheong et al. (US 2021/0337859).
Regarding claim 19, modified Malgat discloses the aerosol generating article of claim 16.
Binassi teaches that the one or more wrappers may comprise any suitable material or combination of materials, including cellulose based materials, paper, cardboard, recon, cellulose based film, and combinations thereof, ([0051]), reasonably suggesting that the wrapper is compatible with other materials. Neither Malgat, Binassi, nor Shinozaki disclose or teach at least the embossed portion of the paper wrapper is a water-resistant wrapper.
Cheong teaches a smoking article that comprises a wrapper that wraps around and outer side surface of a first smoking material, ([0011]), and is thus within the inventor’s field of endeavor. Cheong teaches that a paper wrapper may be produced using water resistant wrapping paper, because the aerosol generated may include moisture, ([0076]), the wrapper may be stained or weakened, and a coating layer for water resistance may be imparted to a surface of the wrapper, ([0077]), suggesting a number of materials that may be used to provide the coating layer, ([0078]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have further modified Malgat according to the teachings of Cheong. It would have been obvious to apply the technique of applying a coating layer for water resistance to the wrapper according to the technique of Cheong, to improve the product of modified Malgat, ready for improvement to yield predictable results, MPEP 2143 I. Examples of Rationales (D). It is found that the prior art renders modified Malgat obvious, see the rejection of claim 16 above. It is found that the Cheong contained a known technique that is applicable to the base device, here applying a coating to the wrapper of modified Malgat to improve its water resistance. It is found that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system, because Cheong discloses that without the water resistance provided by the coating, the wrapper may become stained or weakened.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2019/0075845 A1), Binassi et al. (US 2017/0049147 A1), and Shinozaki et al. (US 2014/0366901 A1), as applied to claim 16 above, and further in view of Sanna et al. (US 2017/0332694 A1).
Regarding claim 20, modified Malgat discloses the aerosol generating article of claim 16.
Malgat discloses an aerosol generating article comprising a plurality of segments assembled together longitudinally, the plurality of segments including the rod of aerosol generating substrate, wherein the paper wrapper is wrapped around the rod of aerosol generating substrate and at least one other of the plurality of segments, ([0089] Fig 1 ref 90 depicting an upstream element, ref 20 the rod of aerosol-generating substrate, refs 30, 40, and 50 depicting a downstream section with a plurality of downstream elements, all wrapped by ref 60 an outer wrapper).
Malgat does not disclose whether or not there is a layer of adhesive on an inner surface of the paper wrapper, the layer of adhesive circumscribing at least two of the plurality of segments to thereby keep the at least two segments in place relative to each other.
Sanna teaches a method for manufacturing an endless rod of substantially flat continuous material for use in the manufacture of aerosol generating articles, ([0001]), and is thus within the inventor’s field of endeavor. Sanna teaches that the manufacture of an aerosol generating article is generally includes filter plugs, which are manufactured from a substantially flat continuous material, such as a paper, tobacco, or plastic web, where the continuous material is formed into an endless rod, ([0002]). Sanna teaches that the filter is wrapped with a wrapper as part of the manufacturing process, but due to the special materials used for the production of plugs, and the high production speed these plugs are manufactured, the plugs tend to displace or fall out of their wrappers, especially where rod shaped products or semi products have a sudden change in transport direction, which may require setting limits to production speed or negatively impact the manufacturing operations, ([0002]). Sanna teaches that there is a need for a providing improved anchoring of rod material to its wrapper, ([0003]). Sanna teaches a technique of applying an adhesive to a wrapper, and wrapping around the smoking article, where preferably the step of applying the adhesive to the wrapper comprises applying the adhesive over a width of the wrapper and in a central longitudinal portion of the wrapper, including a central longitudinal axis of the wrapper and about plus or minus 50 percent of the entire width of the wrapper, ([0022]). Sanna teaches that the adhesive may be applied in the central longitudinal portion according to a regular or irregular pattern, ([0023]). Sanna teaches that adhesive is applied in the central longitudinal portion for coming into contact with the rod material, and a seam region, for adhering the wrapper to itself and forming a seam, that the seam region typically covers a few percent of the width of the wrapper only, and that a glue pattern may extend from the central longitudinal portion to the seam region, ([0024]). Although Sana teaches that the amount of adhesive should be kept at a minimum, ([0009]), Sanna explicitly teaches that the adhesive extending over a width of the wrapper more preferably includes for example over 50% of the width of the wrapper, ([0034]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Malgat according to the teachings of Sanna, and included a layer of adhesive on the inner surface of the paper wrapper, the layer of adhesive circumscribing at least two of the plurality of segments to keep the at least two segments in place relative to each other according to the technique of Sanna, to improve the product of modified Malgat, ready for improvement to yield predictable results, MPEP 2143 I. Examples of Rationales (D). It is found that the prior art renders modified Malgat obvious, see the rejection of claim 16 above. The prior art of Sanna contained a known technique of applying a layer of adhesive across 50% or more of the width of the wrapper, with the desired effect of securing the position of the segments on the wrapper during the manufacturing process. It is found that one of ordinary skill in the art would have recognized applying this technique to the wrapper of modified Malgat would have predictably increased the adhesion of the plurality of segments affixed to the wrapper, and improved the likelihood that the segments would remain in place relative to each other during manufacture of the article, and in use by a smoker.
Regarding claim 21, modified Malgat discloses the aerosol generating article of claim 20.
Sanna discloses the adhesive covers at least 50 percent of an area of the inner surface of the paper wrapper, ([0034]).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2019/0075845 A1), Binassi et al. (US 2017/0049147 A1), Shinozaki et al. (US 2014/0366901 A1) and Sanna et al. (US 2017/0332694 A1), as applied to claim 21 above, and as further evidenced by Balcon et al. (US 2022/0408794 A1).
Regarding claim 22-23, modified Malgat discloses the aerosol generating article of claim 21.
Malgat discloses the aerosol generating article may be substantially elongate, have a length and a circumference that is substantially perpendicular to the length, ([0043]), where the total length of the aerosol generating article has a length of between 30 and 100 millimeters, ([0044]), and where the circumference has a diameter of between 5 mm and 12 mm, ([0045]), thus disclosing a wrapper with a range of curved surface areas given by 2*pi*d*h or 471 mm2 to 3,768 mm2. (1g/m2 = 0.001 mg/mm2). 8gsm =0.008mgsmm
Malgat, Binassi, and Shinozaki do not disclose or teach a target range of adhesive by weight used per aerosol generating article. Sanna teaches using an amount of adhesive per aerosol generating article over an area of the wrapper required by claim 21 above but does not teach using a target range of adhesive by weight per aerosol generating article. In all cases, inherently the adhesive must have a basis weight and correspond to a discreet amount of adhesive per smoking article.
Balcon teaches a paper for a cigarette to be rolled comprising an adhesive strip, ([0018]), and is thus within the inventor’s field of endeavor. Balcon evidences that before the time of the claimed invention, adhesives with a basis weight of 0.004 mg/mm2 to 0.0075 mg/mm2 were in use, which had a tackiness of the same order of magnitude of a classic rolling cigarette paper, ([018]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at an amount of adhesive used per aerosol generating article that falls within the claimed ranges of 15-45 milligrams and 25-35 milligrams because these ranges correspond to the amount of adhesive that would be applied to the area ranges of the smoking article wrappers of Malgat as evidenced by Balcon, such as 28.26 mg of adhesive for a smoking article wrapper having a curved surface area of 3,768 mm2.
Claim(s) 24-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2019/0075845 A1), Binassi et al. (US 2017/0049147 A1), and Shinozaki et al. (US 2014/0366901 A1), as applied to claim 16 above, and further in view of Ghanouni (WO 2020/025713 A1).
Regarding claim 24 and 31, modified Malgat discloses the aerosol generating article of claim 16.
Malgat discloses that the aerosol forming substrate may comprise one or more of powder, granules, pellets, shreds, spaghetti strands, strips, or sheets containing one or more of, herb leaf, tobacco leaf, fragments of tobacco ribs, reconstituted tobacco, homogenized tobacco, extruded tobacco, and expanded tobacco, ([0028]). Malgat discloses that the homogenized tobacco material comprises glycerine as an aerosol former, ([0094]). Malgat does not disclose the amount of glycerine that the aerosol forming substrate may comprise, or that it is at least about 10 % by weight.
Ghanouni teaches an aerosol generating substrate for use with an aerosol generating device, comprising an amorphous solid material, ([pg 3 lines 14-16]), and is thus within the inventor’s field of endeavor. Ghanouni teaches that an amorphous solid may alternatively be referred to a monolithic solid or as a dried gel, ([pg 11 lines 15-16]). Ghanouni teaches the amorphous solid may comprise 10-60 wt%, 25-40wt%, or 30-35 wt% of an aerosol generating agent, and in some cases the aerosol generating agent consists of glycerol, ([pg 19-20 lines 31-4]) understood to be equivalent to glycerine).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Malgat according to the teachings of Ghanouni. Malgat discloses an aerosol generating article that is comprised of an aerosol generating substrates that are similar to gels and with an aerosol former that is similar to the one taught by Ghanouni. Ghanouni teaches that an aerosol generating substrate in the form of a gel and having a weight percent of glycerol (considered equivalent to glycerine) of over 10 wt% would work as an aerosol generating substrate. One of ordinary skill in the art would consider it to be obvious incorporate the teachings of Ghanouni into the article of Malgat, based on the obvious rationale of simple substitution of one known element for another to obtain predictable results, MPEP 2143 I. Examples of Rationales (B). It is found that the aerosol generating substrate of Malgat differed from the claimed aerosol generating substrate by the form of the aerosol generating substrate and amount of aerosol generating substrate taught by Ghanouni. It is found that the aerosol generating substrate of Ghanouni was known and that Ghanouni teaches that the form and claimed range of aerosol would have been expected to work in the aerosol generating substrate of Malgat. It is found that one of ordinary skill in the art would have substituted the form of the aerosol generating substrate and percentage of aerosol former of Ghanouni for the form of the aerosol generating substrate and the unknown percentage of glycerol of Malgat, that the results of the substitution would have been predictable, providing a workable aerosol generating substrate. See MPEP 2143. B. Simple Substitution of One Known Element for Another to Obtain 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 16-19, 24-26, 28-29, 31 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-21, 23, 25-26, 28-29, 32, and 35 of copending Application No. 18/253,445. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16, application 18/253,445 discloses:
An aerosol-generating article, (claim 16), comprising: a rod of aerosol-generating substrate; and a paper wrapper wrapped around at least a portion of the aerosol-generating article, (claim 16), (claim 18 – the wrapper is paper), the paper wrapper comprising an embossed portion circumscribing the rod of aerosol- generating substrate along at least 80 percent of the length of the rod, (claim 16), and having a basis weight of from 50 grams per square meter to 100 grams per square meter, (claim 25).
It would be obvious for one of ordinary skill in the art to combine these disclosed features of claims 16, 18, and 25 into a single embodiment. Claim 18 and 25 both depend on claim 16, and thus are disclosed as intending to be combined with the limitations of claim 16. Claim 25 discloses a basis weight of the wrapper, which is known to be a parameter used to select a paper for use in a wrapper. One of ordinary skill in the art would reasonably believe that these limitations could be combined into a workable embodiment that would perform successfully as an aerosol generating article.
Regarding claim 17, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 60 grams per square meter to 70 grams per square meter, (claim 25).
It would be obvious for one of ordinary skill in the art to vary the range of basis weights suggested by claim 25 within the narrower range of 60-70 gsm, because the basis weight is a parameter of paper that is known to be varied in paper wrappers to alter the performance of the wrapper in a predictable way. Because claim 25 discloses a range of acceptable values for the basis weight that overlaps the claimed range, the narrower range is rendered obvious, absent a showing of unexpected results.
Regarding claim 18, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 75 grams per square meter to 80 grams per square meter, (claim 26).
Regarding claim 19, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein at least the embossed portion of the paper wrapper is a water-resistant wrapper, (claim 20).
Regarding claim 24, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the rod of aerosol-generating substrate comprises an aerosol former having a glycerine content of at least about 10 percent by weight, (claim 19)
Regarding claim 25, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper directly circumscribes the rod of aerosol-generating substrate, (claim 21).
Regarding claim 26, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper circumscribes the rod of aerosol-generating substrate along at least 90 percent of a length of the rod, (claim 26).
Regarding claim 28, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper has a bending moment of from 3 centinewton centimeters to 8 centinewton centimeters at 90 degrees, (claim 28).
Regarding claim 29, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper has a bending moment of from 4 centinewton centimeters to 7 centinewton centimeters at 90 degrees, (claim 29 – the narrower disclosed range of 5-6 centinewton centimeters rendering obvious the broader claimed range).
Regarding claim 31, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, wherein the rod of aerosol-generating substrate comprises a gel composition, (claim 32).
Regarding claim 32, application 18/253,445 discloses:
The aerosol-generating article according to claim 16, further comprising an elongate susceptor element extending in a longitudinal direction through the rod of aerosol-generating substrate, (claim 35).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16-19, 24-26, 28-30, and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16, 18-20, 24-25, 27-28, 30-31, and 35 of copending Application No. 18/254,404. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16, application 18/254,404 discloses:
An aerosol-generating article, (claim 16), comprising: a rod of aerosol-generating substrate, (claim 18); and a paper wrapper wrapped around at least a portion of the aerosol-generating article, (claim 16), the paper wrapper comprising an embossed portion, (claim 16), circumscribing the rod of aerosol- generating substrate, (claim 25), and having a basis weight of from 50 grams per square meter to 100 grams per square meter, (claim 16).
Application 18/254,404 does not explicitly claim the embossed portion circumscribing along at least 80 percent of the length of the rod. However, by virtue of disclosing that the embossed portion does fully circumscribe the rod of aerosol generating substrate, inherently the embossed portion must circumscribe along some length of the rod of aerosol generating substrate. To interpret how to apply this limitation to the claim, one of ordinary skill in the art would need to look to the Specification of Application 18/254,404. The Specification makes clear to one of ordinary skill in the art that the length of the embossed portion includes at least 80% of the length of the rod of aerosol generating substrate, Specification pg 8:
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It would be obvious for one of ordinary skill in the art to combine these disclosed features of claims 16, 18, and 25 into a single embodiment. Claim 25 depends on claim18, which depends on claim 16, and thus are disclosed as intending to be combined with the limitations of claim 16. One of ordinary skill in the art would reasonably believe that these limitations could be combined into a workable embodiment that would perform successfully as an aerosol generating article.
Regarding claim 17, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 60 grams per square meter to 70 grams per square meter, (claim 27 disclosing 60-90gsm).
It would be obvious for one of ordinary skill in the art to vary the range of basis weights suggested by claim 27 within the narrower range of 60-70 gsm, because the basis weight is a parameter of paper that is known to be varied in paper wrappers to alter the performance of the wrapper in a predictable way. Because claim 27 discloses a range of acceptable values for the basis weight that overlaps the claimed range, the narrower range is rendered obvious, absent a showing of unexpected results.
Regarding claim 18, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 75 grams per square meter to 80 grams per square meter, (claim 28).
Regarding claim 19, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein at least the embossed portion of the paper wrapper is a water-resistant wrapper, (claim 16).
Regarding claim 24, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the rod of aerosol-generating substrate comprises an aerosol former having a glycerine, (claim 20).
Application 18/254,404 does not explicitly claim the glycerine content of at least about 10 percent by weight. But by virtue of disclosing that the aerosol generating substrate contains glycerine, inherently glycerine must comprise some percentage weight of the rod of aerosol generating substrate. To interpret how to apply this limitation to the claim, one of ordinary skill in the art would need to look to the Specification of Application 18/254,404. The Specification makes clear to one of ordinary skill in would include at least 10% of glycerine by weight in the rod of aerosol generating substrate, Specification pg 14:
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Reasonably suggesting that glycerine is also considered glycerol and:
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Reasonably suggesting that the glycerine should be included in amounts above 10%.
Regarding claim 25, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper directly circumscribes the rod of aerosol-generating substrate, (claim 24).
Regarding claim 26, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper circumscribes the rod of aerosol-generating substrate along at least 90 percent of a length of the rod, (see the double patenting rejection of claim 16 above, which makes clear that the limitation requiring the embossed portion of the paper wrapper circumscribing the rod of aerosol generating substrate may circumscribe at least 90 percent of a length of the rod).
Regarding claim 28, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper has a bending moment of from 3 centinewton centimeters to 8 centinewton centimeters at 90 degrees, (claim 28).
Regarding claim 29, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper has a bending moment of from 4 centinewton centimeters to 7 centinewton centimeters at 90 degrees, (claim 31 – the narrower disclosed range of 5-6 centinewton centimeters rendering obvious the broader claimed range).
Regarding claim 31, application 18/254,404 discloses:
The aerosol-generating article according to claim 16, wherein the rod of aerosol-generating substrate comprises a gel composition, (claim 35).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16-21, 24-31, and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-19, 21-22, 24-25, 27-28, 30-32, and 35 of copending Application No. 18/711,712. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 16, application 18/711,712 discloses:
An aerosol-generating article, (claim 18), comprising: a rod of aerosol-generating substrate, (claim 18); and
a paper wrapper wrapped around at least a portion of the aerosol-generating article, (claim 18), the paper wrapper comprising an embossed portion circumscribing the rod of aerosol- generating substrate, (claim 22), along at least 80 percent of the length of the rod, (claim 27), and having a basis weight of from 50 grams per square meter to 100 grams per square meter, (claim 18).
It would be obvious for one of ordinary skill in the art to combine these disclosed features of claims 18, 22, and 27 into a single embodiment. Claim 27 depends on 22 (indirectly) and claim 22 depends on claim 18, and thus are disclosed as intending to be combined with the limitations of claim 16.
Regarding claim 17, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 60 grams per square meter to 70 grams per square meter, (claim 18 disclosing a broader range).
It would be obvious for one of ordinary skill in the art to vary the range of basis weights suggested by claim 25 within the narrower range of 60-70 gsm, because the basis weight is a parameter of paper that is known to be varied in paper wrappers to alter the performance of the wrapper in a predictable way. Because claim 18 discloses a range of acceptable values for the basis weight that overlaps the claimed range, the narrower range is rendered obvious, absent a showing of unexpected results.
Regarding claim 18, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein the paper wrapper has a basis weight of from 75 grams per square meter to 80 grams per square meter, (claim 19 disclosing a broader range).
It would be obvious for one of ordinary skill in the art to vary the range of basis weights suggested by claim 19 within the narrower range of 75-80 gsm, because the basis weight is a parameter of paper that is known to be varied in paper wrappers to alter the performance of the wrapper in a predictable way. Because claim 19 discloses a range of acceptable values for the basis weight that overlaps the claimed range, the narrower range is rendered obvious, absent a showing of unexpected results.
Regarding claim 19, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein at least the embossed portion of the paper wrapper is a water-resistant wrapper, (claim 24).
Regarding claim 20 and 34, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, further comprising: a plurality of segments assembled together longitudinally, the plurality of segments including the rod of aerosol-generating substrate, wherein the paper wrapper is wrapped around the rod of aerosol-forming substrate, (claim 21), and at least one other of the plurality of segments; and
a layer of adhesive on an inner surface of the paper wrapper, (claim 18), the layer of adhesive extending to a downstream end of the aerosol generating article, (claim 35).
Application 18/711,712 discloses that the paper wrapper circumscribes at least a portion of the aerosol generating article, (claim 18), and the wrapper is wrapped around the rod of aerosol generating substrate, (claim 21), and that the layer of adhesive (on the wrapper) extends to a downstream end of the aerosol generating article. One of ordinary skill in the art would need to consult the Specification to determine whether the scope of this limitation includes a configuration that contemplates a downstream section of the aerosol generating article beyond the rod of aerosol generating substrate, which would be held in place relative to each to the rod of aerosol generating substrate. The Specification, pg 24 discloses:
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One of ordinary skill in the art would interpret the limitations in light of the Specification and recognize the claimed scope of the limitations include at least two sections elements are present (which meet the limitation of a plurality of segments), and that the adhesive as claimed would be reasonably expected to hold the at least two segments in place relative to each other, meeting the limitations required by the claim.
Regarding claim 21, application 18/711,712 discloses:
The aerosol-generating article according to claim 20, wherein the layer of adhesive covers at least 50 percent of an area of the inner surface of the paper wrapper, (claim 18).
Regarding claim 24, application 18/711,712 discloses:
The aerosol-generating article according to claim 16. Claim 30 discloses that the aerosol generating substrate may comprise an aerosol former of at least about 5 percent on a dry weight basis and claim 31 discloses that the rod of aerosol generating substrate further comprises a gel composition.
One of ordinary skill in the art would need to consult the Specification to determine whether the scope of this limitation includes amounts of aerosol former of at least about 10% by weight and whether the aerosol former reasonably includes glycerine as the aerosol former. wherein the rod of aerosol-generating substrate comprises an aerosol former having a glycerine content of at least about 10 percent by weight, (claim 19).
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Reasonably suggesting that glycerine is also considered glycerol and:
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Reasonably suggesting that the glycerine should be included in amounts above 10%.
Together the limitation requiring that the aerosol generating substrate comprises a gel composition, with an aerosol former content of at least 5% on a dry weight basis, should be reasonably interpreted as including within its scope that the aerosol former is glycerine in an amount of about greater than 10%.
Regarding claim 25, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper directly circumscribes the rod of aerosol-generating substrate, (claim 25).
Regarding claim 26, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein the embossed portion of the paper wrapper circumscribes the rod of aerosol-generating substrate along at least 90 percent of a length of the rod, (claim 28).
Regarding claim 31, application 18/711,712 discloses:
The aerosol-generating article according to claim 16, wherein the rod of aerosol-generating substrate comprises a gel composition, (claim 32).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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