DETAILED ACTION
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
Applicant argues: “The Office cites paragraph [0059] of Malgat in rejecting claim 3 to allegedly teach thickness of the first and second sheets. This section of Malgat teaches that the co-laminated sheets have a total combined thickness of "at least about 50 µm to about 300 µm." The Office states that this suggests each individual sheet may have a thickness between 25 and 150 µm. Office Action at page 3. However, this analysis assumes that the combined thickness should be divided evenly between the two layers. However, there is no suggestion in Malgat that the thickness of the two layers would be divided equally as suggested by the Office.” The Examiner disagrees. Firstly, even if the thickness of the two layers was not divided equally, a wide range of thickness ratios of the two layers of Malgat overlaps overlap with the claimed thicknesses and renders them obvious. For example, if the thickness were to be 1/3 first sheet and 2/3 second sheet, the thickness of the first sheet would range from 17-100 µm, overlapping the claimed range, and the thickness of the second sheet would range from 33-200 µm, also overlapping the claimed range. Alternatively, if the thickness were to be 2/3 first sheet and 1/3 second sheet, the thickness of the first sheet would range from 33-200 µm, overlapping the claimed range, and the thickness of the second sheet would range from 17-100 µm, also overlapping the claimed range. Secondly, it is noted that the two layers being divided equally was selected because absent any guidance in Malgat regarding the thickness ratio, one of ordinary skill in the art would have considered a 1:1 ratio an appropriate starting point. In any case, it is emphasized that the two layers being divided equally is not at all required in order to render the claimed thicknesses obvious.
Applicant argues “Malgat teaches away from a thin metal layer. The thermally-conductive layer in Malgat must provide efficient heat-spreading to redistribute thermal energy away from a flame and along the longitudinal axis of the rod. Malgat at [0025] and [0035]. Moreover, the thermally-conductive layer in Malgat must withstand mechanical processing including crimping, gathering, and rod formation through a converging funnel without compromising mechanical robustness. Id. [0054]-[0056] and [0067]-[0069]. Reducing the metal layer below 50 µm as suggested by the Office would reduce its heat-spreading capacity and compromise mechanical robustness, which contrary to Malgat's overall technical objectives of providing a metal layer capable of efficient heat-spreading.” The Examiner disagrees. This argument is directly contradicted by Malgat’s teaching of a total thickness of 50 µm [0059], wherein the thickness of the second sheet would necessarily be below 50 µm. Malgat does not teach away from a metal layer having a thickness below 50 µm.
In response to applicant's argument that the claimed invention achieves a different technical effect through a different heating mechanism than Malgat, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues “Metrangolo does not disclose or suggest that the second sheet itself plays any role in heating the aerosol-generating material. In contrast, claims 1 and 42 require that the second sheet comprises a heating material that is heatable by penetration with a varying magnetic field, functioning as an induction heating susceptor rather than as a passive flavourant carrier.” Metrangolo teaches the second sheet is aluminum foil [0082], which is inherently a heating material that is heatable by penetration with a varying magnetic field. The claims do not recite and specific composition or configuration of the second sheet to distinguish from that of Metrangolo.
Applicant argues “Arriving at the claimed aerosol-generating component of claim 1 from Metrangolo would require multiple independent selections without clear guidance from the reference. First, one would need to select metallic material for the second sheet from among paper, polymeric materials, and metallic foil options. Second, one would need to select the narrow thickness sub- range of 1-50 µm from within the broad 10-250 µm range disclosed. Metrangolo teaches that the sheet of foil is used only for a non-tobacco flavourant, which Metrangolo does not teach is heatable by penetration with a varying magnetic field. Therefore, Metrangolo gives no indication why one of ordinary skill in the art would select the specific narrow thickness range from the broad disclosure, particularly when the second sheet serves as a flavourant carrier rather than a heating element in Metrangolo.” The Examiner disagrees. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. 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 shown criticality of the claimed range. Additionally, it is noted that Metrangolo does provided guidance that would further lead one of ordinary skill in the art to the claimed range: “In certain embodiments, individual sheets of material may have a thickness of between 10 µm and about 250 µm. Thermally conductive sheets such as sheets of aluminum foil may have a lower thickness than sheets of aerosol-forming material” [0082]. This would lead one of ordinary skill in the art to select an aluminum foil second sheet thickness towards the lower end of the disclosed range and a first sheet thickness towards the higher end of the disclosed range.
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 1-5, 32-34, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 2016/0309781) in view of Zuber (US 2014/0373856).
Regarding claims 1, 3, 33-34, 38, and 42, Malgat teaches an aerosol-generating component 1000 for use with a non-combustible aerosol-provision device [Fig. 2; 0030, 0075], the aerosol-generating component comprising: a first sheet comprising tobacco (aerosol-generating material); a second sheet comprising aluminum foil (heating material that is heatable by penetration with a varying magnetic field) [0067-0068]; and a wrapper comprising paper and circumscribing the first sheet and the second sheet [0073]. Malgat 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 Malgat to achieve predictable results, e.g. allowing an appropriate amount of air flow through the wrapper. Malgat teaches the sheets have a combined thickness of between 50 and 300 µm [0059]. This suggests to one of ordinary skill in the art that each sheet may have a thickness between 25 and 150 µm. 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). The method of manufacturing the component thus reads on the claimed method.
Regarding claim 2, Malgat teaches a surface of the first sheet is in contact with a surface of the second sheet [0009].
Regarding claim 4, Malgat is silent to the first sheet and second sheet comprising adhesive. They are therefore interpreted to be free of adhesive.
Regarding claim 5, Malgat teaches the first sheet comprises a plurality of apertures or a plurality of embossed portions [0027-0028].
Regarding claim 32, the aluminum foil of Malgat is an electrically-conductive material.
Regarding claim 37, Malgat teaches the aerosol-generating material is reconstituted [0011].
Regarding claim 39, Malgat teaches the aerosol-generating component is substantially cylindrical [0016].
Regarding claim 40, modified Malgat teaches an article for use with a non-combustible aerosol provision device, the article comprising the component according to claim 1 [Malgat Fig. 2].
Regarding claim 41, modified Malgat teaches a non-combustible aerosol delivery system 2000 comprising: a non-combustible aerosol provision device 2010; and the component according to claim 1 [Malgat Fig. 4; 0079].
Claims 1-6, 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).
Regarding claims 1, 3, 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). 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 4, Metrangolo is silent to the first sheet and second sheet comprising adhesive. They are therefore interpreted to be free of adhesive.
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].
Conclusion
THIS ACTION IS MADE FINAL. 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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/ERIC YAARY/Examiner, Art Unit 1755
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