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 .
Claim Objections
Claims 2-6, 9-11, 13-16, and 22-24 are objected to because of the following informalities:
All of the above listed claims (which are all dependent claims) contain the phrase “an article according to claim _...”.
These should be changed to “the article according to claim _...”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 23 recites limitation(s) which are considered a process of using without setting forth any steps substantial steps in the process of using the product. Therefore, it is indefinite as to what is actually required to meet the claim, or in other words infringe on the claim. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how the use is actually practice. There are no steps detailing how the “use” is actually practiced.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 23 is rejected under 35 U.S.C. 101 because the claimed recitation is considered a use without setting forth any steps substantial steps in the process of using the product. This results in an improper process claim under 35 U.S.C §101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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.
Claims 1-2, 8, 10-11, and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uthurry (WO 2020/128043).
Regarding claim 1, Uthurry teaches an article for use with a non-combustible aerosol provision system (Figure 3, aerosol generating article 40, page 25 line 2), the article comprising:
a rod of aerosol generating material (Figure 3, rod of aerosol-generating substrate 12, page 25 line 8);
and a hollow tube in axial alignment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 (note: the text lists this as “14”, but Figure 3 shows it as 16), page 25 line 9),
wherein the hollow tube has a weight less than 8.5 mg/mm in an axial direction (hollow tubular segment has weight of 2.5 mg/mm, page 14 lines 29-31).
Regarding claim 2, Uthurry teaches the article according to claim 1, wherein the hollow tube comprises a cellulose acetate tube or tube formed of a plurality of layers of sheet material (hollow tubular segment comprises tube formed from a plurality of overlapping paper layers, page 13 lines 36-37).
Regarding claim 8, Uthurry teaches an article for use with a non-combustible aerosol provision system (Figure 3, aerosol generating article 40, page 25 line 2) comprising:
a rod of aerosol generating material (Figure 3, rod of aerosol-generating substrate 12, page 25 line 8);
and a hollow tube in axial alignment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 (note: the text lists this as “14”, but Figure 3 shows it as 16), page 25 line 9),
wherein the hollow tube comprises a plurality of layers of a sheet material (hollow tubular segment comprises tube formed from a plurality of overlapping paper (i.e. sheet) layers, page 13 lines 36-37)
and wherein a weight per unit length of the hollow tube is less than 4 mg/mm in an axial direction (hollow tubular segment has weight of 2.5 mg/mm, page 14 lines 29-31).
Regarding claim 10, Uthurry teaches the article according to claim 1, wherein the hollow tube is provided adjacent to and in abutment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 is adjacent and in abutment with rod of aerosol-generating substrate 12, page 25 lines 8-9).
Regarding claim 11, Uthurry teaches the article according to claim 1, wherein the hollow tube is provided at a mouth end of the article (Figure 3, the hollow tubular segment 16 is provided at least partially in the “mouth end”, in other words the mouth side of the article, page 25 lines 8-9).
Regarding claim 22, Uthurry teaches the article according to claim 1, wherein the aerosol generating material comprises tobacco material (aerosol-generating substrate comprises homogenized tobacco material, page 7 lines 35-36).
Regarding claim 23, Uthurry teaches the use of the article according to claim 1 in a non-combustible aerosol provision system (disclosure teaches aerosol generating articles and aerosol-generating articles can be heated rather than combusted, page 1, lines 3-6).
Claims 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kadiric et al. (US 2018/0027870, cited in IDS dated July 18, 2023).
Regarding claim 7, Kadiric teaches an article for use with a non-combustible aerosol provision system (Figure 1, smoking article 10, [0066]), the article comprising:
a rod of aerosol generating material (Figure 1, rod of tobacco 12, [0066]);
and a hollow tube in axial alignment with the rod of aerosol generating material (Figure 2, hollow tube segment 24, [0067]),
wherein the hollow tube comprises a plurality of layers of a sheet material having a basis weight of less than 90 GSM (plurality of layers of paper (sheet), [0043] and 80 gsm preferred, [0010]).
Regarding claim 9, Kadiric teaches the article according to claim 7, wherein the sheet material has a basis weight of at less than 80 GSM, or less than 70 GSM (80 gsm preferred, [0010]).
Claim Rejections - 35 USC § 103
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (WO 2020/128043).
Regarding claim 1, Uthurry discloses an article for use with a non-combustible aerosol provision system (Figure 3, aerosol generating article 40, page 25 line 2), the article comprising:
a rod of aerosol generating material (Figure 3, rod of aerosol-generating substrate 12, page 25 line 8);
and a hollow tube in axial alignment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 (note: the text lists this as “14”, but Figure 3 shows it as 16), page 25 line 9),
wherein the hollow tube has a weight less than 8.5 mg/mm in an axial direction (length of hollow tubular segment is between 10 and 30 mm (page 12, lines 34-36) and an example weight given as 171 milligrams (page 24, lines 30-33) which gives a weight per length in the range of 5.7 mg/mm to 17.1 mg/mm, which overlaps the claimed range).
Regarding claim 2, Uthurry discloses the article according to claim 1, wherein the hollow tube comprises a cellulose acetate tube or tube formed of a plurality of layers of sheet material (tube may be cellulose acetate, page 14 lines 11-12).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (WO 2020/128043) in view of Kadiric et al. (US 2018/0027870, cited in IDS dated July 18, 2023).
Regarding claim 3, Uthurry discloses the article according to claim 1, as set forth above (specifically the 103 rejection above). Uthurry fails to disclose wherein the hollow tube is a cellulose acetate tube formed of cellulose acetate tow.
Kadiric teaches a similar smoking article with a mouth end cavity (i.e. hollow tube) wherein the hollow tube is a cellulose acetate tube formed of cellulose acetate tow (filter material in each segment may be cellulose acetate tow, [0039]). Kadiric also teaches that that the invention including the cellulose acetate tow hollow segment allows for a mouth end cavity of increased length, which is less likely to be vulnerable to deformation [0015].
Therefore, 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 Uthurry to incorporate the teachings of Kadiric to make the cellulose acetate tube out of cellulose acetate tow because doing so would allow for a mouth end cavity of increased length, which is less likely to be vulnerable to deformation, as recognized by Kadiric [0015].
Regarding claim 4, modified Uthurry discloses the article according to claim 3, wherein the cellulose acetate tow forming the cellulose acetate tube has a total fiber denier of between 25000 and 40000 (Kadiric, total denier between 30000 and 50000, [0042], which overlaps with the claimed range).
Regarding claim 5, modified Uthurry discloses the article according to claim 3, wherein the cellulose acetate tow forming the cellulose acetate tube has a fiber denier per filament value of between 3 and 10 dpf, or between 5 and 8 dpf (Kadiric, denier per filament of 3.3 preferred, [0042]).
Regarding claim 6, modified Uthurry discloses the article according to claim 1, wherein the hollow tube comprises 15% or less by weight of plasticizer (Kadiric, 8 to 12% by weight plasticizer, [0042]).
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (WO 2020/128043) in view of Cheong et al. (US 2020/0359677, cited in IDS dated July 18, 2023).
Regarding claim 12, Uthurry discloses an article for use with a non-combustible aerosol provision system (Figure 3, aerosol generating article 40, page 25 line 2) comprising:
a rod of aerosol generating material configured to generate an aerosol when heated during use (Figure 3, rod of aerosol-generating substrate 12, page 25 line 8);
and a hollow tube in axial alignment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 (note: the text lists this as “14”, but Figure 3 shows it as 16), page 25 line 9),
and provided adjacent to and in abutment with the rod of aerosol generating material (Figure 3, hollow tubular segment 16 is adjacent and in abutment with rod of aerosol-generating substrate 12, page 25 lines 8-9).
Uthurry fails to disclose wherein the hollow tube has a length in an axial direction of 5 mm or less.
Cheong teaches a similar aerosol-generating article containing a hollow tube wherein the hollow tube has a length in an axial direction of 5 mm or less (Figure 3, length of second hollow tube 332 between 4 mm to 10 mm, which overlaps the claimed range [0056]). Cheong also teaches that the article containing this hollow tube allows for the manufacturing cost to be reduced while maintaining aerosol ingredient delivery function and a cooling function of the aerosol-generating article [0006].
Therefore, 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 Uthurry to incorporate the teachings of Cheong to make the hollow tube with a length of between 4 and 10 mm (which overlaps the claimed range) because doing so would allow for the manufacturing cost of the article to be reduced while maintaining aerosol ingredient delivery function and a cooling function of the aerosol-generating article, as recognized by Cheong [0006].
Regarding claim 13, modified Uthurry discloses the article according to claim 12, wherein the hollow tube is provided in a cooling section of the article configured to cool aerosols generated from the rod of aerosol generating material when the rod of aerosol generating material is heated during use (Uthurry, cooling zone is hollow tubular element, discussed in at least [0029]).
Regarding claim 14, modified Uthurry discloses the article according to claim 13, wherein the cooling section further comprises a cavity between the hollow tube (Uthurry, Figure 3, cavity is empty white space to the right of the ventilation zone 26 of hollow tubular segment 16 (which is between hollow tube and mouthpiece segment 18), page 25 lines 8-15)
and a downstream filter plug (Uthurry, Figure 3, mouthpiece segment 18 comprises plug of cellulose acetate tow (a filter material), page 25 lines 8-10).
Regarding claim 15, modified Uthurry discloses the article according to claim 12, wherein the hollow tube comprises a plurality of layers of sheet material (Uthurry, hollow tubular segment comprises tube formed from a plurality of overlapping paper layers, page 13 lines 36-37).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (WO 2020/128043) in view of Cheong et al. (US 2020/0359677, cited in IDS dated July 18, 2023) as applied to claim 15 above, and further in view of Kadiric et al. (US 2018/0027870, cited in IDS dated July 18, 2023).
Regarding claim 16, modified Uthurry discloses the article according to claim 15, as set forth above. Uthurry fails to disclose wherein the sheet material has a basis weight below 90 GSM, below 80 GSM, or below 70 GSM.
Kadiric teaches a similar smoking article with a mouth end cavity (i.e. hollow tube) wherein the sheet material for the tube has a basis weight below 90 GSM, below 80 GSM, or below 70 GSM (plurality of layers of paper (sheet), [0043] and 80 gsm preferred, [0010]). Kadiric also teaches that that the invention including the paper hollow segment allows for a mouth end cavity that is less likely to be vulnerable to deformation [0015].
Therefore, 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 Uthurry to incorporate the teachings of Kadiric to make the paper tube out of sheet material (paper) with a basis weight of 80 gsm because doing so would allow for a mouth end cavity that is less likely to be vulnerable to deformation, as recognized by Kadiric [0015].
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (WO 2020/128043) in view of Chau et al. (US 2020/0037663).
Regarding claim 24, Uthurry discloses a system comprising the article according to claim 1, as set forth above. Uthurry fails to disclose a non-combustible aerosol provision device for heating the aerosol generating material of the article.
Chau teaches an article (cigarette 100 in Figure 1, [0023]) and a non-combustible aerosol provision device for heating the aerosol generating material of the article (Figure 1, device 99 and device is a heat-not burn device, [0022]-[0023]). Chau also teaches that one (among other) advantage of a heat-not-burn type device is that a lower temperature may be used compared to direct smoldering which reduces the amount of tar (which can lead to undesirable health effects to a smoker), [0022].
Therefore, 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 Uthurry to incorporate the teachings of Chau to heat the article in a heat-not-burn device like the one taught in Chau because doing so would allow for a lower temperature may be used compared to direct smoldering which reduces the amount of tar (which can lead to undesirable health effects to a smoker), as recognized by Chau [0022].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam Z. Baratz whose telephone number is (703)756-1613. The examiner can normally be reached Monday-Thursday 6:30 - 4:30 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on 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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/A.Z.B./
Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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