DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 9/4/2026 with respect to the rejections over Malgat have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues “Nothing in Metrangolo's thickness disclosure provides guidance for selecting the particular combination of first and second sheet thicknesses required by claim 1. Paragraph [0082] states generally that individual sheets may have a thickness between 10 µm and about 250 µm and that a thermally conductive sheet may have a lower thickness than an aerosol-forming sheet. However, Metrangolo does not identify a preferred thickness for either sheet, any quantitative relationship between their respective thicknesses, or any reason to select a first sheet having a thickness between about 100 µm and about 300 µm together with a second sheet having a thickness between about 1 µm and about 50 µm. Its generalized teaching that the conductive sheet may be thinner than the aerosol-forming sheet does not suggest how much thinner it should be or otherwise point to the particular paired ranges recited in claim 1.” The Examiner disagrees. The range disclosed by Metrangolo overlaps or encompasses the claimed ranges. This in and of itself establishes a prima facie case of obviousness for both ranges. Applicants can rebut a prima facie case of obviousness by showing the criticality of the ranges. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Applicant has not provided any evidence of unexpected results.
Applicant argues “Aoun does not disclose a numerical thickness for the second sheet. Rather, Aoun teaches generally that a relatively small thickness may allow a greater proportion of the heating material to be heated by a given varying magnetic field. Aoun at page 28, lines 19-25. Thus, at most, Aoun provides a general reason to reduce the thickness of the heating material. Aoun does not identify the claimed 1-50 µm range, disclose a thickness for the first sheet, or describe any relationship between the respective thicknesses of the first and second sheets…Neither reference suggests that the thickness of the aerosol-generating sheet should be selected based on the thickness of the heating material, or vice versa. Nor does either reference identify any relationship between these two parameters that would have led one of ordinary skill in the art to select a first sheet thickness between about 100 µm and about 300 µm together with a second sheet thickness between about 1 µm and about 50 µm.” The Examiner disagrees. Aoun does not need to identify the claimed range or describe any relationship between the respect thicknesses of the first and second sheets in order to render the claimed second sheet thickness obvious. Aoun teaches that the thickness of the heating material (second sheet) is a result effective variable. This establishes a prima facie case of obviousness. Furthermore, the aerosol-generating material first sheet thickness claimed by Applicant is merely a preferred aerosol-generating material sheet thickness known in the art as taught by Arndt. The Examiner disagrees with Applicant’s implication that a single reference teaching the relationship between both ranges is needed to render the combination of ranges obvious. The combination of ranges would have been obvious to one of ordinary skill in the art in view of the combination of Aoun and Arndt.
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.
Claims 1-2, 5-6, 32-34, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Metrangolo (US 2015/0107610) in view of Zuber (US 2014/0373856) and Aoun (WO 2019/110730).
Regarding claims 1, 33, 38, and 42, Metrangolo teaches an aerosol-generating component 1000 for use with a non-combustible aerosol-provision device [Fig. 3; 0020], the aerosol-generating component comprising: a first sheet comprising tobacco (aerosol-generating material) [0013]; a second sheet comprising metallic foil (heating material that is heatable by penetration with a varying magnetic field) [0014]; and a wrapper comprising paper and circumscribing the first sheet and the second sheet [0085-0086]. Metrangolo teaches the wrapper is a cigarette paper but does is silent to permeability. Zuber teaches an aerosol-generating component for use with a non-combustible aerosol-provision device [0010] comprising a cigarette paper wrapper having a permeability between 0 and 120 Coresta units [0060]. As this is a conventional permeability for a cigarette paper wrapper known in the art, it would have been obvious to one of ordinary skill in this art to use this permeability for the cigarette paper wrapper of Metrangolo to achieve predictable results, e.g. allowing an appropriate amount of air flow through the wrapper. Metrangolo teaches the sheets have a thickness of between 10 and 250 µm [0082]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Modified Metrangolo does not teach an adhesive bonding the first and the second sheet together. Aoun teaches an aerosol-generating component comprising a first sheet of aerosol-generating material, a second sheet of aluminum foil, and adhesive bonding the first and the second sheet together [page 12, line 6 to page 13, line 20]. It would have been obvious to one of ordinary skill in the art to include an adhesive bonding the first and the second sheet together in the aerosol-generating component of modified Metrangolo to achieve predictable results, e.g. more securely forming and the aerosol-generating component. This involves applying a known teaching to improve a similar device in a predictable manner. The method of manufacturing the component thus reads on the claimed method.
Regarding claim 2, Metrangolo teaches a surface of the first sheet is in contact with a surface of the second sheet [0106].
Regarding claim 5, Metrangolo teaches the first sheet comprises a plurality of apertures or a plurality of embossed portions [0035-0036].
Regarding claim 6, Metrangolo teaches the width/dimensions of the sheets may be similar [0024], i.e. not the same. Thus, a total area of the first sheet is necessarily either greater or less than a total area of the second sheet.
Regarding claim 32, the metallic foil of Metrangolo is an electrically-conductive material.
Regarding claim 34, Metrangolo teaches aluminum [0014].
Regarding claim 37, Metrangolo teaches the aerosol-generating material is reconstituted [0013].
Regarding claim 39, Metrangolo teaches the aerosol-generating component is substantially cylindrical [0026].
Regarding claim 40, modified Metrangolo teaches an article for use with a non-combustible aerosol provision device, the article comprising the component according to claim 1 [Metrangolo Fig. 3].
Regarding claim 41, modified Metrangolo teaches a non-combustible aerosol delivery system 2000 comprising: a non-combustible aerosol provision device 2010; and the component according to claim 1 [Metrangolo Fig. 4; 0114].
Claims 1, 2, 32-34, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (WO 2019/110730) in view of Zuber (US 2014/0373856) and Arndt (US 2021/0345659).
Regarding claims 1 and 42, Aoun teaches an aerosol-generating component for use with a non-combustible aerosol-provision device, the aerosol-generating component comprising: a first sheet comprising aerosol-generating material [page 12, l. 15-20]; a second sheet comprising heating material that is heatable by penetration with a varying magnetic field [page 12, l. 23-32]; and a wrapper comprising paper and circumscribing the first sheet and the second sheet [page 17, l. 4-10], wherein the aerosol-generating component further comprises an adhesive bonding the first sheet and the second sheet together [page 12, l. 6-12].
Aoun does not specifically teach the second sheet has a thickness between about 1 µm and about 50 µm. However, Aoun does teaches by providing that the heating material has a relatively small thickness, a greater proportion of the heating material may be heatable by a given varying magnetic field, as compared to heating material having a depth or thickness that is relatively large as compared to the other dimensions of the heating material [page 28, l. 19-25]. As this the thickness is recognized as a result effective variable, it would have been obvious to one of ordinary skill in the art to optimize the thickness of the second sheet through routine experimentation to achieve the desired effects.
Aoun is silent to the permeability of the paper wrapper. Zuber teaches an aerosol-generating component for use with a non-combustible aerosol-provision device [0010] comprising a paper wrapper having a permeability between 0 and 120 Coresta units [0060]. As this is a conventional permeability for a paper wrapper known in the art, it would have been obvious to one of ordinary skill in this art to use this permeability for the paper wrapper of Aoun to achieve predictable results, e.g. allowing an appropriate amount of air flow through the wrapper. The method of manufacturing the component thus reads on the claimed method.
Modified Aoun is silent to the thickness of the first sheet. Arndt teaches an aerosol-generating article comprising an aerosol-generating substrate sheet having a preferable thickness between 150 and 300 µm [0126]. As this is a preferred aerosol-generating substrate sheet thickness known in the art, it would have been obvious to one of ordinary skill in the art to apply this thickness to the first sheet of modified Aoun to achieve predictable results, e.g. providing an appropriately thick sheet for heating and aerosol generation.
Regarding claim 2, Aoun teaches a surface of the first sheet is in contact with a surface of the second sheet [page 6, l. 13-14].
Regarding claims 32-34, Aoun teaches the heating material comprises electrically conductive material such as aluminum [page 3, l. 21-31].
Regarding claims 37-38, Aoun teaches the aerosol-generating material is reconstituted tobacco [page 2, l. 26].
Regarding claim 39, Aoun teaches the aerosol-generating component is substantially cylindrical [page 3, l. 1-2].
Regarding claim 40, modified Aoun as applied to claim 1 above teaches the component according to claim 1. Aoun teaches an article for use with a non-combustible aerosol provision device, the article comprising the component [page 4, l. 19-23].
Regarding claim 41, modified Aoun as applied to claim 1 above teaches the component according to claim 1. Aoun teaches a non-combustible aerosol delivery system comprising: a non-combustible aerosol provision device; and the component [page 4, l. 29 to page 5, l. 3].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Aoun, Zuber, and Arndt as applied to claim 1 above, and further in view of Malgat (US 2016/0309781).
Modified Aoun does not teach the first sheet comprises a plurality of apertures or a plurality of embossed portions. Malgat teaches texturing an aerosol-generating sheet through apertures or embossed portions facilitates gathering of the sheet to form a rod [0027-0028], which would have been obvious to one of ordinary skill in the art to apply to the first sheet of modified Aoun for the same reasons.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Aoun, Zuber, and Arndt as applied to claim 1 above, and further in view of Metrangolo (US 2015/0107610).
Modified Aoun does not teach a total area of the first sheet is greater or less than a total area of the second sheet. Metrangolo teaches an aerosol generating article comprising an aerosol-generating sheet and a foil sheet [0013-0014] wherein the width/dimensions of the sheets may be similar [0024], i.e. not the same. Thus, a total area of the first sheet is necessarily either greater or less than a total area of the second sheet. Given the finite number of options, i.e. sheets with totals area that are identical to one another or totals areas that are not identical to one another (one is greater or less than the other), one of ordinary skill in the art would have found it obvious to try either in the component of modified Aoun to achieve the same, predictable result of providing a component for heating and aerosol generation.
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.
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/ERIC YAARY/Examiner, Art Unit 1755
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