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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/18/2026 has been entered.
Status of the Claims
Claims 33-43 are pending.
Claims 33-43 are new.
Claims 15-21 and 24-32 have been cancelled.
Response to Arguments
Applicant’s arguments, filed 3/18/2026, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 20200397035 (Lee hereinafter) in view of US 20190387787 (Hejazi hereinafter) and further in view of WO 2017068098 (Rojo-Calderon hereinafter).
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) 33-43 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 first filter element (340) located upstream of the capsule, and a second 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.
Conclusion
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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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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