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 the Claims
Claims 33-47 are pending.
Claims 44-47 are new.
Response to Arguments
Applicant's arguments filed 8/7/2026 have been fully considered but they are not persuasive.
The Applicant argues that the Office relies on Rojo-Calderon for allegedly disclosing the claimed size of the susceptor particles of about 10 microns to 70 microns in the combination of Lee and Hejazi and similar to Birza, Rojo-Calderon discloses a range for the size of susceptor particles which are located within an aerosol-forming article comprising tobacco-laden solid aerosol-forming substrate and which are not located in the carrier including a carrier gel and/or carrier liquid, as recited in claim 33. The Applicant states that the susceptor particles have sizes in the range of 5 micrometers to 100 micrometers, for example a range between 20 micrometers and 50 micrometers (see, page 10, lines 6 to 9 and claims 4 and 5 of Rojo Calderon). The Applicant argues that Rojo-Calderon does not disclose susceptor particles for heating a capsule portion with at least one pharmaceutically active agent and/or at least one flavoring as in claim 33, but seems to be concerned with the heating of a tobacco-laden substrate which is solid. The Applicant argues that a short review of Rojo-Calderon reveals that the aerosol-forming substrate disclosed therein does not contain a carrier liquid or a carrier gel and the discussion at pages 9 and 10 of Rojo-Calderon quite clearly indicates that the susceptor particles are in contact with the aerosol-forming substrate. The Applicant argues that the Office has not addressed this aspect of Rojo-Calderon and for this reason the Office's analysis is superficial at best and the rejection is misplaced.
The Examiner respectfully disagrees. Modified Lee teaches that the size of the susceptor particles may vary (Hejazi , [0062]) but does not expressly teach that the susceptor particles have a particle size of about 10 microns to 70 microns. Rojo-Calderon teaches an inductive heating device for heating an aerosol forming substrate comprising susceptor particles (abstract), wherein the particles that are distributed in the substrate have sizes in the range of 5 micrometers to 100 micrometers, more preferably in a range of 10 micrometers to 80 micrometers, for example between 20 micrometers and 50 micrometers (page 10, 1-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the dimensions of the susceptor particles of modified Lee, in view of Rojo-Calderon, with a reasonable expectation of success and predictable results. Barring a showing of unexpected results, it would have been obvious to one of ordinary skill to utilize a range of 10-70 microns through routine experimentation of the workable range taught by Rojo-Calderon. See MPEP 2144.05 II A. It is noted that Rojo-Calderon is not relied upon to teach an aerosol-forming substrate that contains a carrier liquid or a carrier gel.
The Applicant argues that the Office Action appears to either confuse the terms "upstream" and "downstream" or gives no patentable weight to these elements. The Applicant argues that the Office Action asserts that the first filter element located upstream of the capsule of claim 33 corresponds to the filter element 340 of Lee and that the second filter element located downstream of the capsule corresponds to the element 320 of Lee. The Applicant argues that Figure 3 of Lee rather discloses that the second filter element 340 is located at the downstream end of the article 30 and is therefore not a filter element located upstream of the capsule and the first filter segment 320 surrounds the flavoring capsules 322 and 324 and therefore is not located downstream of the capsule as asserted by the examiner. The Applicant argues that the second filter segment 320 of Figure 3 of Lee cannot be read on the second downstream filter element of new claim 44 because this filter element is not located downstream of the capsule as defined in new claim 44. Additionally, the Applicant states, the second filter segment 320 of figure 3 of reference Lee in fact corresponds to the hollow tubular portion of new claim 44 and that the second filter element downstream of the capsule is therefore a filter element not shown in Lee. The Applicant argues that the additionally introduced features that the first filter element and the second filter element are located adjacent to the hollow tubular portion is supposed to exclude the Office's interpretation that the second filter element 340 would correspond to the first filter element, the second filter element 340 in figure 3 of Lee which according to the Office corresponds to the first filter element of the claims is not located adjacent to the first filter element 320 owing to the cooling segment 330 being located between both elements 320 and 340 and the filter element 340 of figure 3 of Lee is the most downstream part of the article and therefore cannot be configured to avoid spillover of the active agent to upstream or downstream parts of the aerosol-generating article as recited in new claim 44.
The Examiner respectfully disagrees. First, the Examiner apologizes for the inadvertent error of mislabeling elements 320 and 340. Element 320 is the first filter and element 340 is the second filter. Second, there appears to be confusion regarding the configuration of Lee. Fig. 9 below is annotated with the corresponding structure, wherein it is noted that the capsules are located within the capsule portion (or cooling segment, 330 [0068] which may be a cellulose acetate filter having a hollow inside [0066]).
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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) 33-47 is/are rejected under 35 U.S.C. 103 as being unpatentable US 20200397035 (Lee hereinafter) in view of US 20190387787 (Hejazi hereinafter) and further in view of WO 2017068098 (Rojo-Calderon hereinafter).
Regarding claim 33, Lee teaches an aerosol generating article (abstract) comprising:
a capsule portion (330) containing a capsule (322), a second filter element (340) located upstream of the capsule, and a first filter element located downstream of the capsule (320) ([0068]), and,
a substrate portion (210, 310 or 810) comprising a tobacco medium ([0056] or [0064]), wherein the capsule portion (330) is located downstream of the substrate portion (Figs 8 and 9).
Lee teaches that an active agent, specifically flavorant ([0060]), and susceptor particles ([0005],[0070]-[0071]) are contained within the capsule (322).
Lee does not expressly teach that a carrier liquid and/or carrier gel are contained within the capsule or that the susceptor particles have a particle size of from 10 micron to 70 micron.
Hejazi teaches an aerosol generating article (200) with a capsule (204). An active agent, specifically flavorants ([0067] and [0069]), susceptor particles (232) ([0094]), and a carrier that comprises a carrier gel are contained within the capsule ([0095]). It would have been obvious for one of ordinary skill in the art at the time of filing to have included a carrier that comprises a carrier gel for the susceptor particles in the capsule in the capsule of Lee, as taught by Hejazi, with a reasonable expectation of success and predictable results because the carrier liquid of Hejazi provides an efficient means of containing the flavorant along with the heatable susceptor particles within the capsule of Lee.
Modified Lee teaches that the size of the susceptor particles may vary (Hejazi , [0062]) but does not expressly teach that the susceptor particles have a particle size of about 10 microns to 70 microns.
Rojo-Calderon teaches an inductive heating device for heating an aerosol forming substrate comprising susceptor particles (abstract), wherein the particles that are distributed in the substrate have sizes in the range of 5 micrometers to 100 micrometers, more preferably in a range of 10 micrometers to 80 micrometers, for example between 20 micrometers and 50 micrometers (page 10, 1-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the dimensions of the susceptor particles of modified Lee, in view of Rojo-Calderon, with a reasonable expectation of success and predictable results. Barring a showing of unexpected results, it would have been obvious to one of ordinary skill to utilize a range of 10-70 microns through routine experimentation of the workable range taught by Rojo-Calderon. See MPEP 2144.05 II A.
The instant specification states that the claimed carrier and the claimed susceptor particles form a magnetorheological fluid and form clusters and agglomerates in a magnetic field when heated (page 4, lines 11-21). Modified Lee teaches the claimed carrier and the claimed susceptor particles, which are configured to be heatable upon inductive heating. Thus, it is therefore inherent that “wherein the susceptor particles and the carrier form a magnetorheological fluid, wherein the susceptor particles are configured to form clusters and agglomerates upon heating of the capsule for release of the active agent” since such a property is evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 34, Modified Lee teaches that the carrier gel comprises polyhydric alcohol (Hejazi, [0092] and [0095]).
Regarding claim 35, Modified Lee teaches that the susceptor particles are ferromagnetic (Lee, [0040]).
Regarding claim 36, Modified Lee teaches “the percentage of susceptor particles 132 as a function of total volume of the substrate portion 110 may be within the inclusive range of approximately 5% to approximately 35%; however, in other implementations the percentage of susceptor particles may be lower than this range, and in still other implementations the percentage of susceptor particles may be higher than this range,” (Hejazi,[0061]) which establishes the volumetric percent, and thus the weight percent, as a result effective variable which it would have been obvious for one of ordinary skill in the art at the time of filing to have optimized. See MPEP 2144.05 II B.
Regarding claim 37, Modified Lee teaches the article comprises fibers (Lee, [0061]).
Regarding claim 38, Modified Lee teaches a capsule portion further comprises a retention material (Lee, 840, “cooling segment” and [0066]), wherein the capsule is located adjacent to the retention material in the capsule portion (Lee, [0066] and [0094]-[0095]).
Regarding claim 39, Modified Lee teaches that the capsule portion is wrapped with a capsule wrapper (Lee, [0055]), and further teaches that the wrapper comprises a material that is air-permeable, specifically paper (Hejazi, [0036]).
Regarding claim 40, Modified Lee teaches an aerosol-generating system, comprising an aerosol-generating article according to claim 33 (see above); an aerosol-generating device including a cavity to receive the aerosol-generating article, and an induction heating element (Lee, [0023]).
Regarding claim 41, Modified Lee teaches a method of operating an aerosol-generating system according to claim 40 (see above), the method comprising the steps of: receiving the aerosol-generating article in the cavity of the aerosol-generating device (Lee, [0023]); and heating the aerosol-generating article by the induction heating element (Lee, [0023]), thereby releasing the active agent from the capsule (Lee, [0034]).
Regarding claims 42 and 43, Modified Lee teaches the claimed aerosol-generating article, including the claimed carrier gel and the claimed susceptor particles that are configured to be heatable upon inductive heating. Thus, it is therefore inherent that “the susceptor particles become movable in the carrier gel upon heating” and “the clusters and agglomerates form channels comprising liquefied carrier gel or carrier liquid with the active agent” since such a property is evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 44, Modified Lee teaches that the capsule portion (330) further contains a hollow tubular portion surrounding the capsule, the hollow tubular portion comprising a retention material, specifically cellulose acetate ([0066], “the cooling segment 330… may be a cellulose acetate filter having a hollow inside” and [0068], “A plurality of flavoring capsules may be arranged inside…the cooling segment 330”). Modified Lee teaches that both the first filter element (320) and the second filter element (340) are located adjacent to the hollow tubular portion (330) (Fig. 9).
Regarding the limitations, “the retention material absorbing the active agent and one or both of the gel carrier and the liquid carrier upon being released from the capsule” and “wherein both the first filter element and the second filter element are configured to avoid any spillover of the active agent and of the gel carrier or the liquid carrier to upstream or downstream parts of the aerosol-generating article” these limitations are properties of the retention material, the first filter element and the second filter element, respectfully. It is therefore inherent that the retention material absorbs the active agent and one or both of the gel carrier and the liquid carrier upon being released from the capsule and that both the first filter element and the second filter element are configured to avoid any spillover of the active agent and of the gel carrier or the liquid carrier to upstream or downstream parts of the aerosol-generating article since such properties are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The definition of the terms “upstream” and “downstream,” specifically, “wherein the terms "upstream", and "downstream", are used to describe the relative positions of components, or portions of components, of the aerosol-generating article in relation to the direction in which air flows through the aerosol-generating article during use thereof along the air flow path” does not add patentable weight to the claim.
Regarding claim 45, Modified Lee teaches that the carrier gel comprises polyhydric alcohol (Hejazi, [0092] and [0095]).
Regarding claim 46, Modified Lee teaches that the susceptor particles are ferromagnetic (Lee, [0040]).
Regarding claim 47, Modified Lee teaches “the percentage of susceptor particles 132 as a function of total volume of the substrate portion 110 may be within the inclusive range of approximately 5% to approximately 35%; however, in other implementations the percentage of susceptor particles may be lower than this range, and in still other implementations the percentage of susceptor particles may be higher than this range,” (Hejazi,[0061]) which establishes the volumetric percent, and thus the weight percent, as a result effective variable which it would have been obvious for one of ordinary skill in the art at the time of filing to have optimized. See MPEP 2144.05 II B.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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