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 .
Election/Restrictions
Applicant has elected Group I (claims 1–11, 14–17, and 19) with traverse. However, Applicant has not presented any reasons, arguments, or explanations as to why the restriction requirement is alleged to be improper, nor has Applicant specifically addressed why the groups are not independent or distinct.
Accordingly, the traverse is considered improper, and the election is treated as an election without traverse. See MPEP § 818.03(a).
Claims 20, 21, 31, and 32, directed to non-elected inventions, are withdrawn from further consideration in this application.
Response to Arguments
Applicant’s arguments filed 04/06/2026 have been fully considered but are not persuasive with respect to the rejection of amended independent claim 1 over Black in view of Reevell.
Applicant has amended independent claim 1 to include the subject matter of previously pending claim 11, namely that the first material is an aerosol-generating material. In view of this amendment, the rejection of claim 1 under 35 U.S.C. § 102 over Reevell has been withdrawn.
However, the amendment does not overcome the rejection of claim 1 under 35 U.S.C. § 103 over Black in view of Reevell. The rejection over Black in view of Reevell accounts for the amended limitation because Black, not Reevell, is relied upon as teaching the first material. In particular, Black discloses aerosol-generating strips 18 comprising aerosol-generating material, wherein the aerosol-generating strips 18 comprise aerosol-former and release volatile compounds upon heating.
Applicant argues that Reevell does not disclose a first material that is an aerosol-generating material. This argument is moot with respect to the withdrawn anticipation rejection and is not persuasive with respect to the obviousness rejection because Reevell is not relied upon as teaching the first material. Rather, Reevell is relied upon for teaching the second material comprising an amorphous solid material. Reevell discloses non-tobacco material 30 comprising glass fibre, and the strands extend in the longitudinal direction of the rod.
Applicant further argues that a person of ordinary skill in the art would not have combined Black and Reevell because Black is allegedly tobacco-based while Reevell is non-tobacco-based. This argument is not persuasive because both Black and Reevell are directed to aerosol-generating articles for producing an inhalable aerosol during use. The fact that Reevell discloses non-tobacco material does not preclude use of Reevell’s longitudinal strand material in the aerosol-generating article of Black.
Applicant also argues that neither Black nor Reevell suggests using two different types of aerosol-generating material in a single article. This argument is not commensurate with the scope of amended claim 1. Claim 1 requires a first material that is an aerosol-generating material and a second material comprising an amorphous solid material. Claim 1 does not require that the second material is a different aerosol-generating material from the first material.
Applicant further argues that modifying Black with Reevell would require removal of Black’s susceptor, thereby rendering Black’s article unheatable or unable to perform its intended function. This argument is not persuasive because the proposed combination does not require bodily incorporation of Reevell’s entire rod into Black and does not require removal of Black’s susceptor. Rather, Reevell is relied upon for its teaching of longitudinal glass-fibre strand material, while Black’s susceptor may remain in the aerosol-generating article as taught by Black.
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.
Claim(s) 1-4, 6, 9-10, 14-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Black et al. (US 2022/0015413), and further in view of Reevell (US 2020/0253274).
Regarding claim 1, Black teaches:
an article for use as or as part of an aerosol provision system, the article comprising (aerosol-generating article 1 for use with an aerosol-generating device), Black, ¶ [0069];
a component having an upstream end and a downstream end (aerosol-generating material part 10 having first and second ends 10a, 10b), Black, ¶ [0070];
and comprising a first material (aerosol-generating strips 18), Black, ¶ [0071];
wherein the first material is an aerosol-generating material (aerosol-generating strips 18 comprising aerosol-former and releasing volatile compounds upon heating), Black, ¶ [0076].
Black does not explicitly disclose a second material comprising an amorphous solid material, wherein the amorphous solid material extends substantially longitudinally through the component between the upstream end and the downstream end and has a length of at least about 70% of a length of the component between the upstream end and the downstream end.
Reevell is in the same field of endeavor as Black because Reevell is also directed to a heated aerosol-generating article for producing an inhalable aerosol. Reevell discloses:
a second material comprising an amorphous solid material (non-tobacco material 30 comprising glass fibre), Reevell, ¶ [0037];
wherein the amorphous solid material extends substantially longitudinally through the component between the upstream end and the downstream end (each strand 30 extending in the longitudinal direction of the rod 12), Reevell, ¶ [0075];
and has a length of at least about 70% of a length of the component between the upstream end and the downstream end (each strand having a length substantially equal to the length of the rod of aerosol-generating substrate), Reevell, ¶ [0049].
Therefore, 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 aerosol-generating material part of Black to include, as the second material, the longitudinal glass-fibre strands of Reevell because Reevell teaches such strands as suitable longitudinal materials for an aerosol-generating rod/article, and the use of such longitudinal strands would have provided a known material arrangement for holding and releasing aerosol former while maintaining longitudinal airflow through the aerosol-generating component.
Regarding claim 2, Black teaches an aerosol-generating article comprising a plurality of elongate elements disposed within a component and extending substantially parallel along the longitudinal axis of the article (e.g., Black ¶¶ [0036]–[0042], [0050]).
Reevell discloses that amorphous solid delivery materials may be provided in the form of a plurality of elongate solid strands extending longitudinally and arranged substantially parallel to one another within the component (Reevell ¶¶ [0018], [0049], [0052]).
It would have been obvious to one of ordinary skill in the art to configure the second material of Black as a plurality of elongate, parallel amorphous solid strips as taught by Reevell in order to provide uniform substance delivery and predictable airflow interaction, as expressly taught by Reevell.
Regarding claim 3, Reevell expressly discloses embodiments in which the aerosol-generating article comprises about 20 elongate solid strands (Reevell ¶[0051]).
Because 20 strips falls squarely within the claimed numerical ranges, Reevell teaches a number of elongate amorphous solid strips meeting the limitations of claim 3.
It would have been obvious to apply the strand number taught by Reevell to the modified article of Black for predictable and optimized delivery performance.
Accordingly, claim 3 is unpatentable over Black in view of Reevell.
Regarding claim 4, Reevell teaches that the elongate amorphous solid strands preferably have a length substantially equal to the length of the component, extending along substantially the entire longitudinal extent of the article (Reevell ¶¶ [0018], [0049]).
A strand having a length substantially equal to the component length necessarily extends to within a small distance of both the upstream and downstream ends, including within 5 mm, as recited in claim 4.
It would have been obvious to implement such full-length or near-full-length strands in the article of Black, as modified by Reevell, to ensure consistent interaction with airflow along the component.
Regarding claim 6, Reevell expressly discloses that the amorphous solid delivery material comprises a substance to be delivered, such as an aerosol former or other deliverable compound, which is absorbed or adsorbed into or onto the solid material and released during use of the article (Reevell ¶¶ [0033]–[0040]).
It would have been obvious to incorporate such substance-containing amorphous solid material into the aerosol-generating article of Black in order to provide controlled and predictable delivery of a substance during aerosol generation, as expressly taught by Reevell.
Regarding claim 9, Black teaches an aerosol-generating article comprising an aerosol-generating material part (10) including aerosol-generating strips (18) and a second material in the form of an inductively heatable susceptor (12), wherein the susceptor is positioned within the aerosol-generating material and is fully surrounded by the aerosol-generating strips (¶¶[0080], [0083], [0088]).
As set forth above with respect to claim 1, Reevell discloses the remaining limitations of the independent claim. It would have been obvious to one of ordinary skill in the art to apply the surrounding arrangement taught by Black to the article of Reevell in order to promote uniform heating and aerosol generation.
Regarding claim 10, Black expressly teaches that the inductively heatable susceptor (12) is positioned centrally within the aerosol-generating material part (10) and is fully surrounded by the aerosol-generating strips (18) (¶[0088]).
As explained above with respect to claim 1, Reevell teaches the remaining limitations of the independent claim. It would have been obvious to incorporate the internal and surrounding arrangement disclosed by Black into the aerosol-generating article of Reevell as a predictable design choice for improving heat transfer and aerosol formation.
Regarding claim 14, Black teaches an aerosol-generating article in which the aerosol-generating material part (10), including aerosol-generating strips (18), forms the portion of the article that generates aerosol during use (¶¶[0071], [0075]–[0076]). Thus, Black teaches a component that constitutes an aerosol generation portion of the article.
As set forth above with respect to claim 1, Reevell is relied upon for the remaining limitations of the independent claim. It would have been obvious to one of ordinary skill in the art to configure the component of the combined article of Black and Reevell as an aerosol generation portion, since both references are directed to aerosol-generating articles in which aerosol is produced in a defined portion of the article.
Regarding claim 15, As set forth with respect to claim 1, the “first material” broadly recites a material portion of the aerosol-generating article that is surrounded by a wrapper and is not limited to being aerosol-generating.
Black discloses an aerosol-generating article comprising multiple material portions arranged longitudinally and surrounded by a wrapper, including a filter (26) (¶[0074]). The filter constitutes a filter material and is a material portion of the article within the meaning of the claimed first material.
Accordingly, Black teaches the additional limitation of claim 15. As previously explained with respect to claim 1, Reevell is relied upon for the remaining limitations of the independent claim.
Regarding claim 16, Black teaches an aerosol-generating article in which the arrangement and configuration of the aerosol-generating material part (10) and the second material, such as the inductively heatable susceptor (12), are selected to control heating, airflow, and aerosol characteristics within the article (¶¶[0071], [0072], [0080], [0088]). Thus, Black teaches a component that modifies aerosol properties during use.
As set forth above with respect to claim 1, Reevell is relied upon for the remaining limitations of the independent claim. It would have been obvious to one of ordinary skill in the art to configure the component of the combined article of Black and Reevell as an aerosol-modifying portion, since both references are directed to aerosol articles in which internal components are arranged to influence aerosol formation, delivery, and characteristics.
Regarding claim 17, Black teaches an aerosol-generating article in which internal components, including the aerosol-generating material and associated elements, are arranged to influence heating, airflow, and aerosol characteristics during use, thereby functioning as an aerosol-modifying portion of the article (¶¶[0071], [0072], [0080], [0088]).
Reevell expressly teaches that aerosol-generating articles include articles in which an aerosol-generating substrate is combusted, such as conventional cigarettes (Reevell ¶¶[0014]–[0015]). Reevell further teaches aerosol-generating substrates configured to control aerosol formation and release during use (Reevell ¶¶[0012], [0021]–[0023]).
Accordingly, it would have been obvious to one of ordinary skill in the art to configure the aerosol-modifying portion taught by Black for use in a combustible aerosol provision system, as expressly contemplated by Reevell, since both references are directed to aerosol-generating articles in which internal structures are arranged to influence aerosol formation and delivery.
Regarding claim 19, Black teaches an aerosol-generating article comprising a shell or wrapper (14) that encloses both an aerosol-generating material part (10), including aerosol-generating strips (18), and a second material in the form of an inductively heatable susceptor (12) (¶¶[0070], [0071], [0080], [0088]). In Black, the wrapper surrounds both the aerosol-generating material and the second material and maintains their positional relationship within the article.
As set forth above with respect to claim 1, Reevell discloses the remaining limitations of the independent claim. It would have been obvious to one of ordinary skill in the art to enclose both the first and second materials of Reevell within a wrapper as taught by Black, since both references are directed to aerosol-generating articles and the use of a wrapper to contain multiple internal components is a well-known and predictable structural arrangement.
Claim(s) 5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Black et al. (US 2022/0015413), and Reevell (US 2020/0253274) as applied to claim 1 above, and further in view of SCIBOZ et al. (US 2018/0310608).
Regarding claim 5,
“…wherein the second material comprises a sheet material and wherein a tensile strength of the second material in a longitudinal direction is at least one of …”
As set forth above, Black as modified by Reevell teaches an aerosol-generating article comprising first and second materials arranged within a wrapper, wherein the second material may comprise an amorphous solid material configured to deliver a substance. Black as modified by Reevell does not teach that the second material is provided in the form of a sheet material, nor does it teach or address tensile strength of the second material in a longitudinal direction.
However, SCIBOZ is in the same field of endeavor, namely aerosol-generating articles and tobacco products comprising sheet-based materials used for aerosol formation and delivery. SCIBOZ teaches forming homogenized tobacco material as a continuous web or sheet that is incorporated into an aerosol-generating article and functions as a material component of the article (SCIBOZ, [¶0067]), corresponding to the claimed second material.
SCIBOZ further teaches that fibers and binders are incorporated into the homogenized tobacco sheet to increase tensile strength, thereby improving resistance to tearing and enabling conveying, winding, and assembly of the sheet in a longitudinal direction during manufacture (SCIBOZ, [¶0051–¶0054], [¶0058]).
Thus, SCIBOZ teaches a sheet material used as a structural material component of an aerosol-generating article, wherein tensile strength in the longitudinal direction is an important design consideration. Tensile strength is therefore identified as a result-effective variable for sheet-based materials used in aerosol-generating articles.
It would have been obvious to one of ordinary skill in the art to configure the second material of the article of Black as modified by Reevell as a sheet material having sufficient longitudinal tensile strength, as taught by SCIBOZ, since SCIBOZ addresses the same problem of providing mechanically robust sheet materials suitable for manufacture and use in aerosol-generating articles.
Regarding claim 7,
“…wherein the substance to be delivered is menthol.”
As set forth above, Black as modified by Reevell teaches an aerosol-generating article comprising first and second materials arranged within a wrapper, wherein the second material may comprise an amorphous solid material configured to deliver a substance. However, Black as modified by Reevell does not expressly teach that the substance to be delivered is menthol.
SCIBOZ is in the same field of endeavor, namely aerosol-generating articles and tobacco products configured to deliver flavorants during aerosol generation. SCIBOZ discloses forming a sheet material incorporated into an aerosol-generating article, corresponding to the claimed second material (SCIBOZ, [¶0067]).
SCIBOZ further teaches that the sheet material may include menthol as a flavorant or aerosol-forming substance, wherein the menthol is incorporated into the sheet and released during use of the aerosol-generating article (SCIBOZ, [¶0020–¶0022], [¶0045]).
It would have been obvious to one of ordinary skill in the art to incorporate menthol into the sheet-based second material of the article of Black and Reevell in view of SCIBOZ, since SCIBOZ teaches the use of menthol for aerosol delivery in the same field of aerosol-generating articles and addresses the same problem of delivering flavorants during use.
Regarding claim 8,
“…wherein the amorphous solid material comprises 2 mg to about 20 mg of menthol.”
As discussed above, Black as modified by Reevell teaches an aerosol-generating article comprising an amorphous solid second material configured to deliver a substance.
Black as modified by Reevell does not teach a specific amount of menthol incorporated into the amorphous solid material.
However, SCIBOZ, which is in the same field of endeavor of aerosol-generating articles and tobacco products, teaches incorporating menthol into a sheet-based material used in aerosol-generating articles and further teaches that the amount of menthol incorporated may be selected and adjusted depending on desired aerosol delivery characteristics (SCIBOZ, [¶0022], [¶0049], [¶0074–¶0076]).
SCIBOZ thus teaches that menthol content is a formulation parameter, i.e., a result-effective variable, that may be optimized without changing the fundamental structure or operation of the sheet material used for aerosol delivery.
It would have been obvious to one of ordinary skill in the art to select an amount of menthol within the recited range of 2 mg to about 20 mg when incorporating menthol into the sheet-based second material of the article of Black and Reevell in view of SCIBOZ, as a matter of routine optimization to achieve desired aerosol delivery characteristics.
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 JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights