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 Claims
Claims 17-32 are pending. Claim 17 is amended. Claims 31-32 are withdrawn. Claims 1-16 are cancelled.
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
Applicant prefers that the reference Pasquine be relabeled as Osmalov. When entering US 3,490,461 into USPTO systems designed to promote work efficiency and reduce errors, form PT0-892 auto populates the last name of the named inventor as Pasquine. It is the normal practice of Examiners to follow the designation provided by USPTO systems in this regard. However, Pasquine has been replaced throughout this rejection by Osmalov, for the benefit of Applicant.
Applicant has amended claim 1 to require that both the first aerosol generating substrate and the second aerosol generating substrate are configured to be actively heated in use. Actively heated is not defined in the Specification. Applicant argues that actively heated requires that the device is configured to heat the first aerosol generating substrate and the second aerosol generating substrate, Remarks pg 7 last paragraph. Applicant further cites to Fig 6, which clearly shows the article inserted into a device, where the device comprises two sets of heaters, one surrounding the first aerosol generating substrate, and one surrounding the second aerosol generating substrate, such that the device may individually heat both sections separately from outside the article, considered to disclose be active heating of the two substrates by the device.
No particular limitations of the article have been identified in the present Application that correspond to configuring the article for active heating by the aerosol generating device. The limitation requiring that both of the first aerosol generating substrate and the second aerosol generating substrate are configured to be actively heated in use is considered intended use, and so long as the prior art article is susceptible to having the first aerosol generating substrate and the second aerosol generating substrate actively heated in use, no further weight is given to this limitation. See claim interpretation below.
Claim Interpretation
Applicant has amended claim 1 to require that both of the first aerosol generating substrate and the second aerosol generating substrate are configured to be actively heated in use. Examiner asserts that Osmalov anticipates this (and the other) limitations of claim 17.
An article comprising a first aerosol generating substrate and a second aerosol generating substrate where are each configured to be actively heated in use does not appear to require any modification of the article of Osmalov. Osmalov discloses an aerosol generating article where two aerosol generating substrates are spaced apart from each other along the longitudinal direction of the smoking article. Applicant argues that Osmalov is an article intended for combustion. Adiga et al. US 6,598,607 B2 evidences that it was known to heat rather than combust conventional cigarettes to vaporize the aerosol generating flavors in the tobacco, but at a temperature insufficient for combustion, ([Col 1 lines 12-17]), and discloses a device that utilizes a conventional cigarette to do so, ([col 2 lines 38-43]). BALLESTEROS GOMEZ et al. US 2019/0159517 A1 evidences a device disclosing two heaters to heat two longitudinal sections of an aerosol generating article.
The two aerosol generating substrates of an article of Osmalov are each configured for active heating by the device of BALLESTEROS GOMEZ. One would only have to insert the article of Osmalov into the device to achieve the claimed limitation, and Adiga evidences a reason to do so – heating the article to generate aerosol without the negative effects of combustion. Because Adiga also evidences that the temperatures the article are heated to will be lower, a user would consider using the device of BALLESTEROS GOMEZ to ensure that aerosol was properly generated from each aerosol generating substrate. As claimed, Osmalov anticipates the additional limitation, because the device and not the article is modified.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 17-19 and 29-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osmalov et al. (US 3,490,461), as evidenced by Adiga et al. (US 6,598,607 B2) and BALLESTEROS GOMEZ et al. (US 2019/0159517 A1).
Regarding claim 17, Osmalov discloses: An aerosol-generating article for generating an inhalable aerosol upon heating, ([col 4 lines 15-20] Fig 1), the aerosol-generating article having a proximal end and a distal end and comprising: a first aerosol-generating substrate located between the distal end and the proximal end of the aerosol-generating article, (Fig 1 ref 14 tobacco cylinder); a first air inlet configured to admit air into the aerosol-generating article, (Fig 1 the distal end of ref 14 comprises an axial inlet); a second aerosol-generating substrate located between the first aerosol-generating substrate and the proximal end of the aerosol-generating article, ([col2-3 lines 71-4]); a second air inlet configured to admit air into the aerosol-generating article, ([col 5 lines 2-4] Fig 1 ref 28); a first airflow pathway extending from the first air inlet through the first aerosol generating substrate towards the proximal end of the aerosol-generating article, (Fig 1); and a second airflow pathway extending from the second air inlet through the second aerosol-generating substrate towards the proximal end of the aerosol-generating article, (Fig 1), wherein the first airflow pathway and the second airflow pathway are isolated from one another, ([col 2 lines 33-38]), and wherein both of the first aerosol generating substrate and the second aerosol generating substrate are configured to be actively heated in use, (considered to be anticipated because devices with multiple sets of heaters that heat from the outside circumference of the aerosol generating article were known, and no configuration beyond the other limitations are required to achieve the required configuration.
An article comprising a first aerosol generating substrate and a second aerosol generating substrate where are each configured to be actively heated in use does not appear to require any modification of the article of Osmalov. Osmalov discloses an aerosol generating article where two aerosol generating substrates are spaced apart from each other along the longitudinal direction of the smoking article.
Adiga evidences that it was known to heat rather than combust conventional cigarettes to vaporize the aerosol generating flavors in the tobacco, but at a temperature insufficient for combustion, ([Col 1 lines 12-17]), and discloses a device that utilizes a conventional cigarette to do so, ([col 2 lines 38-43]).
BALLESTEROS GOMEZ evidences a device disclosing two heaters to heat two longitudinal sections of an aerosol generating article.
The two aerosol generating substrates of an article of Osmalov are each configured for active heating by the device of BALLESTEROS GOMEZ, because BALLESTEROS GOMEZ discloses a device where the two heaters actively heat different portions of an aerosol generating article, ([0098] Fig 1 refs 102 and 104). One would only have to insert the article of Osmalov into the device to achieve the claimed limitation, and Adiga evidences a reason to do so – heating the article to generate aerosol without the negative effects of combustion. Because Adiga also evidences that the temperatures the article are heated to will be lower, a user would consider using the device of BALLESTEROS GOMEZ to ensure that aerosol was properly generated from each aerosol generating substrates. As claimed, Osmalov anticipates the additional limitation, because the device and not the article is modified.
Regarding claim 18, Osmalov discloses: The aerosol-generating article according to claim 17, wherein the first air inlet is further configured to admit air into the aerosol-generating article in an axial direction, (Fig 1 depicts the first air inlet is in an axial direction) .
Regarding claim 19, Osmalov discloses: The aerosol-generating article according to claim 17, wherein the second air inlet is further configured to admit air into the aerosol-generating article in a radial direction, (Fig 1 depicts the second inlet is in a radial direction).
Regarding claim 29, Osmalov discloses: The aerosol-generating article according to claim 17, wherein a composition of the first aerosol-generating substrate, ([col 4 line 16] a cylinder of tobacco) is different from a composition of the second aerosol-generating substrate, ([col 3 lines 1-2] suggesting menthol).
Regarding claim 30, Osmalov discloses: The aerosol-generating article according to claim 17, wherein one or both of the first aerosol-generating substrate comprises tobacco material, ([col 4 line 16]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osmalov et al. (US 3,490,461) as evidenced by Adiga et al. (US 6,598,607 B2) and BALLESTEROS GOMEZ et al. (US 2019/0159517 A1).
Regarding claim 20, Osmalov discloses: The aerosol-generating article according to claim 19. Osmalov discloses that the second aerosol generating substrate is provided in an outer axial airflow channel and Osmalov does not limit the amount of the second aerosol generating substrate so provided, ([col 2-3 lines 72-4]). Osmalov does not explicitly disclose that an axial airflow channel is provided in the second aerosol-generating substrate provided within the outer axial airflow channel.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Osmalov to provide the maximum amount of second aerosol generating substrate possible, to achieve the greatest amount of aerosol flavoring possible. One of ordinary skill in the art would have recognized that filling the outer axial airflow channel with the second aerosol generating substrate, and incorporating a small airflow channel through the substrate, would provide the most amount of second aerosol generating substrate possible, while still allowing air to flow through the outer axial airflow channel. One of ordinary skill in the art would have believed doing so would be successful, because structurally all the required elements of the aerosol generating article would still be present, and thus had a reasonable belief that the modification would be successful.
Regarding claim 21, modified Osmalov discloses: The aerosol-generating article according to claim 20, wherein the first airflow pathway extends through the axial airflow channel provided in the second aerosol- generating substrate, (Fig 1 depicting a first airflow pathway extending through the center of the surrounding axial airflow channel).
Regarding claim 22, modified Osmalov discloses: The aerosol-generating article according to claim 20, further comprising a first hollow tubular element located between the first aerosol- generating substrate and the second aerosol-generating substrate, wherein the first hollow tubular element comprises an axial airflow channel and an air-impermeable wall, ([col 2 lines 33-38] Fig 1 depicting a first hollow tubular element, comprising an axial airflow channel, where the tube wall is air impenetrable)
Regarding claim 23, modified Osmalov discloses: The aerosol-generating article according to claim 22, wherein the first airflow pathway extends through the axial airflow channel of the first hollow tubular element, (Fig 1 depicting a first airflow pathway extending through the center of the first hollow tubular element).
Claim(s) 24-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osmalov et al. (US 3,490,461) as applied to claim 17 above, and further in view of Holford (US 2023/0337725 A1).
Regarding claim 24, Osmalov discloses: The aerosol-generating article according to claim 17, disclosing a hollow tubular element, wherein the hollow tubular element comprises an inner axial airflow channel and an outer axial airflow channel, and extends to the proximal end of the aerosol generating article. Osmalov discloses that the second aerosol generating substrate is provided in an outer axial airflow channel and Osmalov does not limit the amount of the second aerosol generating substrate so provided, ([col 2-3 lines 72-4]).
Holford teaches a component for use in a non-combustible provision system, ([0004]), and is thus within the inventor’s field of endeavor. Holford teaches a similar arrangement of an inner tube contained in an outer tube, where there are separate axial flow channels provided in the inner tube and between the outer tube and the inner tube, ([0076]-[0081]). Holford discloses that the outer channel may contain a fibrous material, ([0106]).
It would be obvious to one of ordinary skill in the art, before the effective filingdate of the claimed invention, to have modified Osmalov to provide the maximum amount of second aerosol generating substrate possible, to achieve the greatest amount of aerosol flavoring possible. One of ordinary skill in the art would have recognized that filling the outer axial airflow channel with the second aerosol generating substrate, and incorporating a small airflow channel through the substrate, would provide the most amount of second aerosol generating substrate possible, while still allowing air to flow through the outer axial airflow channel. One of ordinary skill in the art would have believed doing so would be successful, because structurally all the required elements of the aerosol generating article would still be present, and thus had a reasonable belief that the modification would be successful.
It would be obvious, before the effective filing date of the claimed invention, to further modify Osmalov, and provide a second hollow tubular element comprising an inner and outer tube and with porous material in the outer tube to contain the second substrate in the aerosol generating article, until it is aerosolized. One of ordinary skill in the art would have recognized the possibility that the second aerosol generating substrate may move towards the proximate end if no impediment is provided to contain the second aerosol generating substrate. Holford teaches that putting a porous filter material in the outer tube will not impair the functioning of the article. One of ordinary skill in the art would have reasonably believed that placing a second hollow tubular element configured with a porous medium would aid in containing the second aerosol generating substrate, and believed this improvement would be successful.
Regarding claim 25, modified Osmalov discloses: The aerosol-generating article according to claim 24, wherein the first airflow pathway extends through the inner axial channel of the second hollow tubular element and the second airflow pathway extends through the outer axial airflow channel of the second hollow tubular element, (the modification of claim 24 comprises a second hollow tubular element where the pathways of the first tubular element are extended, meeting these limitations).
Regarding claim 26-27, modified Osmalov discloses: The aerosol-generating article according to claim 17. Modified Osmalov discloses the aerosol generating article of claim 25 above. Osmalov does not disclose a mixing chamber located between the second aerosol-generating substrate and the proximal end of the aerosol-generating article, wherein the first airflow pathway extends from the first air inlet through the first aerosol-generating substrate to the mixing chamber and the second airflow pathway extends from the second air inlet through the second aerosol-generating substrate to the mixing chamber.
Holford teaches a mixing chamber located between the second aerosol-generating substrate and the proximal end of the aerosol-generating article, wherein the first airflow pathway extends from the first air inlet through the first aerosol-generating substrate to the mixing chamber and the second airflow pathway extends from the second air inlet through the second aerosol-generating substrate to the mixing chamber, ([0097] Fig 1c) for the disclosed advantage of enhancing visible aerosol formation.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Osmalov to include the mixing chamber of Holford, to enhance the visible aerosol formation, according to the aesthetic desired by some smokers. Extending the outer tube beyond the inner tube would have been within the ordinary skill in the art, and one of ordinary skill in the art would have believed that doing so would have successfully provided the mixing chamber at the proximal end of the aerosol generating article.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osmalov et al. (US 3,490,461) as applied to claim 17 above, and further in view of Mclaughlin et al. (US 2020/0113227 A1) as evidenced by Adiga et al. (US 6,598,607 B2) and BALLESTEROS GOMEZ et al. (US 2019/0159517 A1).
Regarding claim 28, Osmalov discloses: The aerosol-generating article according to claim 17. Osmalov does not disclose an air-permeable plug of porous material located at the distal end of the aerosol-generating article.
Mclaughlin teaches a tobacco containing consumable article for use in aerosol generating devices, ([0014]), and thus is within the inventor’s field of endeavor. Mclaughlin teaches providing a distal filter portion upstream of the tobacco derived portion, ([0014]). The filter portion is provided as a physical barrier to contain the tobacco derived portion and help maintain the overall structural integrity of the tobacco article, while allowing desired air to pass through,, ([0048]). The filter portions are typicall composed of materials such as cellulose acetate, ([0051] reasonably understood to meet the limitation of an air permeable plug pf porous material located as required by the claim.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Osmalov to have a distal end filter according to the teachings of McLaughlin. One of ordinary skill in the art would have recognized the benefits of placing an air permeable plug at the distal end of the aerosol generating substrate of Osmalov to aid in containing the substrate as well as providing enhanced structural integrity for the article. One of ordinary skill in the art would have reasonably been capable of attaching such an air permeable plug to the substrate rod, and believed that the modification would have successfully provided the expected benefits while remaining serviceable as an aerosol generating article.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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