DETAILED ACTION
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
Applicant argues “Jackson does not disclose that the alleged compartment 24 is "a compartment configured to receive an aerosol-forming substrate". The Examiner disagrees. Compartment 24 of Jackson is capable of receiving an aerosol-forming substrate, thus “configured to” receive an aerosol-forming substrate as claimed. The claims do not require the presence of an aerosol-forming substrate in the compartment and does Jackson does not need to teach the presence of an aerosol-forming substrate in compartment 24 in order to read on this limitation.
Applicant argues “Jackson's cigarette holder is not intended for and not configured to be used with an aerosol-generating device”. The Examiner disagrees. The intention of Jackson has no bearing on whether Jackson’s article reads on the claimed article. The claims do not require the presence of an aerosol-generating device, nor are the claims directed to a method of using the article with an aerosol-generating device. Jackson’s article merely needs to be capable of being received into a cavity of a hypothetical aerosol-generating device. The Examiner maintains that Jackson reads on this limitation.
Applicant argues “Collet's electronic smoking article 10 is a standalone article that can also include a power source and other electronic control components. So, Collet's electronic smoking article 10 is not "configured to be received into a cavity of an aerosol-generating device," contrary to the assertions in the Office Action.” The intention of Collett has no bearing on whether Collett’s article reads on the claimed article. The claims do not require the presence of an aerosol-generating device, nor are the claims directed to a method of using the article with an aerosol-generating device. Collett’s article merely needs to be capable of being received into a cavity of a hypothetical aerosol-generating device. The Examiner maintains that Collett reads on this limitation.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 18-19, 21-22, and 24-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jackson (US 4,369,798).
Regarding claim 16, Jackson [Fig. 1-2 and 6] teaches a reusable article 10, the reusable article comprising: a housing 12 comprising a compartment 24, wherein at least parts of the housing are pivotable about a hinge and configured to provide access to the compartment [col. 2, l. 10-32]; and a mouthpiece 14, wherein the housing further comprises an air-flow path through the compartment to the mouthpiece (shown by the arrows in Fig. 6). The cavity 24 is capable of, i.e. “configured to”, receiving an aerosol-forming substrate. The article is capable of, i.e. “configured to”, being received into a cavity of an aerosol-generating device. The limitation that the article is “aerosol-generating” does not distinguish from the article of Jackson. The article of Jackson is capable of generating an aerosol if an aerosol-forming substrate were provided in the compartment and heat were applied to the substrate. Claim 16 is very broad in terms of its requirements for structure or composition. The presence of an aerosol-generating device is not required. The presence of an aerosol-forming substrate is not required. The presence of a heating element is not required. The article of Jackson reads on the current limitations.
Regarding claims 18-19, Jackson teaches an air-flow tube arranged downstream of the compartment (portion adjacent to the left of compartment 24 in Fig. 6), wherein the parts of the housing being pivotable about the hinge provide access to the compartment and the air-flow tube [Fig. 2-4]. This air-flow tube is part of the air-flow path as shown in Fig. 6.
Regarding claims 21-22, Jackson teaches the compartment 24 comprises inner walls [Fig. 6], wherein the compartment further comprises shoulders 26a/30a (holding elements) configured to hold the aerosol-forming substrate within the compartment [col. 2, l. 34-64]. These shoulders provided at the ends of the compartment protrude from the inner walls into an interior of the compartment [Fig. 6].
Regarding claim 24, the compartment is of Jackson is interpreted as being capable of, or configured to, receiving a pre-shaped substrate portion containing the aerosol-forming substrate.
Regarding claim 25, Jackson teaches the compartment 24 is rod-shaped [Fig. 5-6], and thereby is capable of or configured to receive a rod-shaped substrate portion.
Regarding claim 26, Jackson teaches the left end of cigarette 16 is provided inside of a chamber of the housing [Fig. 6]. This chamber, when the cigarette is not present, corresponds to the claimed air channel. The right open end of the housing through which the cigarette is able to be inserted corresponds to the claimed air inlet. Thus, the housing comprises an air inlet configured to provide air to the compartment, and wherein the air inlet is fluidly connected with the compartment 24 by an air channel.
Claims 16, 20-22, 24, 26, 32, and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collett (US 2014/0060554).
Regarding claim 16, Collett teaches a reusable aerosol-generating article 10 [Fig. 7; 0035], the reusable aerosol-generating article comprising: a housing 150 comprising a compartment configured to receive an aerosol-forming substrate 600, wherein at least parts of the housing are pivotable about a hinge and configured to provide access to the compartment [0110]; and a mouthpiece [0084], wherein the housing further comprises an air-flow path through the compartment to the mouthpiece [0096]. The article is capable of, i.e. “configured to”, being received into a cavity of an aerosol-generating device.
Regarding claim 20, Collett teaches the compartment comprises a resistive heating element configured to heat the aerosol-forming substrate [0086] and electrical connections configured to supply power from the aerosol-generating device to the resistive heating element
Regarding claims 21-22, Collett teaches the compartment comprises inner walls, wherein the compartment further comprises microheaters that protrude from the inner walls into an interior of the compartment [Fig. 7; 0110]. As the aerosol-forming substrate is placed on the microheaters, the microheaters are interpreted as holding elements configured to hold the aerosol-forming substrate within the compartment.
Regarding claim 24, the compartment is of Collett is interpreted as being capable of, or configured to, receiving a pre-shaped substrate portion containing the aerosol-forming substrate.
Regarding claim 26, Collett teaches the housing further comprises at least one air inlet configured to provide air to the compartment, and wherein the air inlet is fluidly connected with the compartment by an air channel [0096].
Regarding claim 32, Collett teaches the reusable aerosol-generating article comprises a rod-shape [Fig. 7].
Regarding claim 38, Collett teaches the article comprises a resistive heating element configured to heat the aerosol-forming substrate [0086] and electrical connections configured to supply power from the aerosol-generating device to the resistive heating element [0102].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson as applied to claim 26 above, and further in view of Goetz (US 2,242,029).
The air inlet disclosed above with respect to claim 26, at the right open end of the housing, corresponds to one second air inlet being located proximal of the compartment 24. Jackson does not teach at least one first air inlet being located distal of the compartment. Goetz teaches a smoking pipe comprising air inlet being 19 distal to bowl 10 (analogous to the compartment of Goetz) to cool the smoke before it enters the mouth [Fig. 1; page 2, l. 20-23]. It would have been obvious to one of ordinary skill in the art to include in the housing of Jackson at least one first air inlet being located distal of the compartment to cool the smoke before it enters the mouth.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson as applied to claim 26 above, and further in view of Calkins (US 3,028,867).
Jackson teaches the housing comprises plastic [col. 2, l. 10-13]. Jackson does not teach ceramic. Calkins teaches a smoking pipe comprising plastic or ceramic [col. 1, l. 70 to col. 2, l. 1]. As ceramic is a conventional alternative for a smoking pipe material known in the art, it would have been obvious to one of ordinary skill in the art to alternatively use ceramic for the housing of Jackson to achieve predictable results.
Claim 32 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jackson.
The article of Jackson as shown in Fig. 5. is interpreted to comprises a rod-shape. In the alternative, absent evidence of criticality, the claimed limitation is merely a change in shape or aesthetic design change. The courts have held changes in shape and aesthetic design changes to be prima facie obvious, see In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), MPEP 2144.04.
Claims 16, 28-30, 33, and 36-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (1,774,073).
Regarding claim 16, Williams [Fig. 1-5] teaches an article comprising: a housing 18/19 comprising a compartment (interior of housing 18/19) configured to an aerosol-forming substrate, wherein at least parts of the housing are pivotable about a hinge 22 and configured to provide access to the compartment; and a mouthpiece 10, wherein the housing further comprises an air-flow path through the compartment to the mouthpiece [page 2, l. 9-13]. The article is capable of, i.e. “configured to”, being received into a cavity of an aerosol-generating device. The limitation that the article is “aerosol-generating” does not distinguish from the article of Jackson. The article of Jackson is capable of generating an aerosol if an aerosol-forming substrate were provided in the compartment and heat were applied to the substrate. Claim 16 is very broad in terms of its requirements for structure or composition. The presence of an aerosol-generating device is not required. The presence of an aerosol-forming substrate is not required. The presence of a heating element is not required. The article of Williams reads on the current limitations.
Regarding claim 28, Williams teaches the housing further comprises a first section 18 and a second section 19, wherein the first section 18 and the second section 19 are pivotable about the hinge 22, and wherein the hinge 22 is located at an upstream end of the reusable article [Fig. 1-5].
Regarding claim 29, Williams teaches the first section 18 and the second section comprise 19 parts of the compartment, the compartment being formed when the first section and the second section are closed [Fig. 1-5].
Regarding claim 30, Williams teaches both the first section and the second section comprise parts of rear portions 20 (air-flow tube), the air-flow tube being formed when the first section and the second section are closed [Fig. 1-5].
Regarding claims 33 and 36-37, Williams teaches the hinge 22 is located on a central longitudinal axis of the housing and at an upstream end of the article [Fig. 1-5]. The hinge 22 is located at the upstream end of an airflow path beginning at vents 23.
Allowable Subject Matter
Claim 23 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: There is no teaching or reasonable suggestion in the prior art to include in the compartment of the article of Jackson or Collett as applied above a heating blade or heating pin.
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 ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC YAARY/Examiner, Art Unit 1755
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