DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s amendment and remarks filed December 16, 2025. Claim 20 is new. Claims 12 and 16-19 were previously cancelled. Claims 1-11, 13-15, and 20 are pending and stand rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 has limited the invention to a single support element formed from a paper sheet and extending from a first point at the peripheral portion across the hollow inner region to a second point at the peripheral portion, wherein the support element extends through a radial centre of the hollow tubular element. In view of this stated limitation, there cannot be a single channel if the support element goes through the radial center as recited in claim 11. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1-2, 4-5, 9, 11, 13, 15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019063737 A1 (hereinafter NAPPI) in view of US 20170086508 A1 (hereinafter MIRONOV).
Regarding claim 1, NAPPI discloses an aerosol-generating article (abstract). NAPPI discloses a first element comprising an aerosol-forming substrate (Fig. 1, aerosol generating substrate 2, page 15). NAPPI discloses a hollow tubular element disposed downstream of the first element (Fig. 1, hollow tubular support element 3, page 15), wherein the hollow tubular element comprises: a peripheral portion (Fig. 6, peripheral portion 61, page 16) defining a hollow inner region of the hollow tubular element.
NAPPI further teaches a single support element (Fig. 6, inner portion 62, page 16-17) formed from a paper sheet (page 11) and extending from a first point at the peripheral portion across the hollow inner region to a second point at the peripheral portion (Figs. 6-8, page 6), wherein the support element extends through a radial centre of the hollow tubular element, and wherein the hollow tubular element has a substantially constant cross section along the entire length of the hollow tubular element (page 3). NAPPI teaches multiple embodiments of support elements with projections (pages 2-6). NAPPI teaches that there may be a single support element (Fig. 6, inner portion 62) that extends through the radial center (see annotated Fig. 6 below). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the embodiments taught in NAPPI to form a support element with a single support element through the radial center. A person of ordinary skill in the art would form support elements of many geometries as encouraged by the various embodiments of NAPPI. Doing so would provide a support barrier for the substrate and make it less likely that the aerosol forming material will be pushed out of the substrate leading to a more consistent experience for the user (page 2).
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NAPPI discloses that the support elements are made from an elastically deformable material (page 2). NAPPI is silent as to the specific material. However, NAPPI later teaches that the cooling element may be formed from a sheet material that has been crimped and that the sheet material maybe be paper (page 11). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of NAPPI to provide paper as a material for the support elements. Doing so would form the support elements from a known and readily available material in the art, paper, with predictable results as an elastically deformable material.
NAPPI does not disclose a susceptor element arranged within the first element.
MIRONOV teaches an aerosol generating article with a plurality of elements and an elongate susceptor (abstract). MIRONOV teaches an elongate susceptor 25 located within the aerosol forming substrate (Fig. 1, ¶97). MIRONOV teaches that, “the elongate susceptor is part of a consumable item, and thus is only used once. Thus, any residues that form on the susceptor during heating do not cause a problem for heating of a subsequent aerosol-generating article. The flavour of a sequence of aerosol-generating articles may be more consistent due to the fact that a fresh susceptor acts to heat each article.” (¶11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified NAPPI to provide a susceptor element arranged within the first element as taught in MIRONOV. A person of ordinary skill in the art would obviously arrange a susceptor within the first element. Doing so would both heat the consumable for use and provide more consistent heating (MIRONOV ¶11).
Regarding claim 2, modified NAPPI discloses the aerosol-generating article according to claim 1. NAPPI further teaches wherein the peripheral portion is formed from a sheet. NAPPI teaches that channels may be defined by a sheet material that has been crimped, pleated, gathered, or folded to form the channels (page 10). NAPPI teaches that the sheet material may be formed from a single sheet (page 10). Though this is disclosed with respect to the cooling element, a person of ordinary skill in the art would obviously form the peripheral portion from a sheet. Doing so would use a known technique to form an element of the rod.
Regarding claim 4, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI further teaches embodiments wherein the first point at the peripheral portion and the second point at the peripheral portion are adjacent to each other. As shown in NAPPI Fig. 6 shown above the first and second point are adjacent to each other under a broadest reasonable interpretation analysis. The first point and second point are located such that the support goes through the center and there is no point between. Therefore, these points are considered adjacent, nearby each other.
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Regarding claim 5, modified NAPPI discloses the aerosol-generating article according to claim 1. NAPPI further teaches an embodiment wherein the support element comprises a tip, the tip being positioned within the hollow inner region (page 5).
Regarding claim 9, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI further teaches an embodiment wherein a cross section of the support element comprises a curved portion. NAPPI teaches embodiment with cross sections that are curved (see annotated Figs. 6-8 below).
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Regarding claim 11, NAPPI discloses the aerosol-generating article according to claim 1. NAPPI further teaches embodiments wherein the support element is configured so that the hollow inner region consists of a single channel (as shown in Figs. 3-5A).
Regarding claim 13, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI further teaches embodiments wherein the hollow tubular element comprises a plurality of support elements. As shown in Fig. 7, there are a plurality of support elements that form a cross to support the rod.
Regarding claim 15, modified NAPPI discloses the aerosol-generating article according to claim 1. NAPPI does not disclose wherein the susceptor is arranged within the aerosol-forming substrate.
MIRONOV teaches an aerosol generating article with a plurality of elements and an elongate susceptor (abstract). MIRONOV teaches an elongate susceptor 25 located within the aerosol forming substrate (Fig. 1, ¶97). MIRONOV teaches that, “the elongate susceptor is part of a consumable item, and thus is only used once. Thus, any residues that form on the susceptor during heating do not cause a problem for heating of a subsequent aerosol-generating article. The flavour of a sequence of aerosol-generating articles may be more consistent due to the fact that a fresh susceptor acts to heat each article.” (¶11).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified NAPPI to provide wherein the susceptor is arranged within the aerosol-forming substrate as taught in MIRONOV. A person of ordinary skill in the art would obviously arrange a susceptor within the aerosol forming substrate. Doing so would both heat the consumable for use and provide more consistent heating (MIRONOV ¶11).
Regarding claim 20, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI does disclose the susceptor element extends to a downstream end of the first element.
MIRONOV teaches an aerosol generating article with an elongate susceptor configured to allow the article to be consumed by an electrically-operated aerosol-generating device having an inductor (abstract). As shown in Fig. 1, the susceptor 25 extends to the downstream end of the first element (aerosol forming substrate 20).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide the susceptor element extends to a downstream end of the first element as taught in MIRONOV. A person of ordinary skill in the art would obviously extend the susceptor to the downstream end of the first element. Doing so would properly heat the aerosol for inhalation (MIRONOV ¶21, ¶80).
Claims 3, 6-8, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over NAPPI and MIRONOV as applied to claims 1-2, 4-5, 9, 11, 13, and 15 and in further view of US 20200268043 A1 (hereinafter PARTOUCHE).
Regarding claim 3, modified NAPPI discloses the aerosol-generating article according to claim 2 as discussed above. NAPPI does not disclose wherein the peripheral portion and the support element are integrally formed from a sheet.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). The filter provides support for the cigarette (¶16). PARTOUCHE teaches that the strip is folded to form the three-dimensional shape (Fig. 7, ¶50-¶51). PARTOUCHE teaches that the design of manufacturing is industrial where each lobe is formed from the sheet allowing a single operation from a cardboard reel (¶51).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide wherein the peripheral portion and the support element are integrally formed from a sheet as taught in PARTOUCHE. A person of ordinary skill in the art would obviously use an integral sheet to form both the peripheral portion and the support element because doing so would allow a single operation (PARTOUCHE ¶51).
Regarding claim 6, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI does not disclose wherein the support element depends from the peripheral portion along a first fold line of the sheet, wherein the first fold line resides at the first point at the peripheral portion.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). In modified Fig. 1 below, PARTOUCHE teaches the shaping of the filter. As shown in the figure the lobes are formed with folds along the peripheral portion.
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide wherein the support element depends from the peripheral portion along a first fold line of the sheet, wherein the first fold line resides at the first point at the peripheral portion as taught in PARTOUCHE. A person of ordinary skill in the art would form the support element with fold lines to points on the peripheral portion to form lobes because doing so would support the cigarette (PARTOUCHE ¶16) and overcome the disadvantages detailed in PARTOUCHE (¶11-¶13).
Regarding claim 7, modified NAPPI discloses the aerosol-generating article according to claim 6 as discussed above. NAPPI does not disclose wherein the support element depends from the peripheral portion along a second fold line of the sheet, wherein the second fold line resides at the second point at the peripheral portion.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). In modified Fig. 1 below, PARTOUCHE teaches the shaping of the filter. As shown in the figure the lobes are formed with folds that have a first and second point that are adjacent.
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide wherein the support element depends from the peripheral portion along a second fold line of the sheet, wherein the second fold line resides at the second point at the peripheral portion as taught in PARTOUCHE. A person of ordinary skill in the art would form the support element with fold lines to points on the peripheral portion to form lobes because doing so would support the cigarette (PARTOUCHE ¶16) and overcome the disadvantages detailed in PARTOUCHE (¶11-¶13).
Regarding claim 8, modified NAPPI discloses the aerosol-generating article according to claim 6 as discussed above. NAPPI does not disclose wherein the support element comprises a third fold line of the sheet.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). In modified Fig. 1 below, PARTOUCHE teaches the shaping of the filter. As shown in the figure the lobes are formed with folds that have a first, second, and third fold line.
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide wherein the support element comprises a third fold line of the sheet as taught in PARTOUCHE. A person of ordinary skill in the art would form the support element with many fold lines to points on the peripheral portion to form lobes because doing so would support the cigarette (PARTOUCHE ¶16) and overcome the disadvantages detailed in PARTOUCHE (¶11-¶13).
Regarding claim 10, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI does not disclose wherein the support element comprises a plurality of peaks and troughs, when viewed from the upstream end of the hollow tubular element.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). In modified Fig. 1 below, PARTOUCHE teaches the shaping of the filter. As shown in the support element comprises a plurality of peaks and troughs.
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to provide wherein the support element comprises a plurality of peaks and troughs, when viewed from the upstream end of the hollow tubular element as taught in PARTOUCHE. A person of ordinary skill in the art would form the support element with many peaks and troughs to form lobes because doing so would support the cigarette (PARTOUCHE ¶16) and overcome the disadvantages detailed in PARTOUCHE (¶11-¶13).
Regarding claim 14, modified NAPPI discloses the aerosol-generating article according to claim 1 as discussed above. NAPPI does disclose, wherein the hollow tubular element comprises an adhesive.
PARTOUCHE teaches a cardboard filter for cigarettes formed by folding a cardboard strip (abstract). PARTOUCHE teaches that the sheets are attached with glue (¶35). PARTOUCHE further teaches that the strip is folded, wound, and then glued (¶50).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified NAPPI to wherein the hollow tubular element comprises an adhesive as taught in PARTOUCHE. A person of ordinary skill in the art would obviously use glue a well-known method for joining paper. Doing so would provide the three dimensional shape of the filter/support element (PARTOUCHE ¶50).
Double Patenting
Claim 1-11, 13-15, and 20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-11 and 13-15 of copending Application No. 18267250 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose an aerosol generating article with a first element and a hollow tubular element comprising a peripheral portion and a support element with points along the peripheral portion.
Regarding claim 1, Application No. 18267250 claims an aerosol-generating article comprising: a first element comprising an aerosol-forming substrate; and a hollow tubular element disposed downstream of the first element, wherein the hollow tubular element comprises: a peripheral portion defining a hollow inner region of the hollow tubular element; and a support element formed from a paper sheet and extending from a first point at the peripheral portion across the hollow inner region to a second point at the peripheral portion in claim 1. Regarding the amended limitations of a single support element (page 15, lines 36-37) and through a radial center (page 14, lines 29-30) and wherein the hollow tubular element has a substantially constant cross section along the entire length of the hollow tubular element (page 14, lines 13) these limitations are supported the written description as filed in application 18267250.
Application No. 18267250 further discloses a susceptor element arranged within the first element (page 25, lines 7-10).
Application No. 18267250 further discloses a single support (page 15, lines 36-37).
Application No. 18267250 claim 14 recites wherein the support element extends through the radial centre of the hollow tubular element.
Application No. 18267250 further discloses wherein the hollow tubular element has a substantially constant cross section along the entire length of the hollow tubular element (page 19, lines 11-22).
Regarding claim 2, Application No. 18267250 claim 2 recites wherein the peripheral portion is formed from a sheet.
Regarding claim 3, Application No. 18267250 claim 3 recites wherein the peripheral portion and the support element are integrally formed from a sheet.
Regarding claim 4, Application No. 18267250 claim 6 recites wherein the first point at the peripheral portion and the second point at the peripheral portion are adjacent to each other
Regarding claim 5, Application No. 18267250 claim 7 recites wherein the support element comprises a tip, the tip being positioned within the hollow inner region.
Regarding claim 6, Application No. 18267250 claim 8 recites wherein the support elements depends from the peripheral portion along a first fold line of the sheet, wherein the first fold line resides at the first point at the peripheral portion.
Regarding claim 7, Application No. 18267250 claim 9 recites wherein the support element depends from the peripheral portion along a second fold line of the sheet, wherein the second fold line resides at the second point at the peripheral portion.
Regarding claim 8, Application No. 18267250 claim 10 recites wherein the support element comprises a third fold line of the sheet.
Regarding claim 9, Application No. 18267250 claim 11 recites wherein a cross section of the support element comprises a curved portion.
Regarding claim 10, Application No. 18267250 claim 12 recites wherein the support element comprises a plurality of peaks and troughs, when viewed from the upstream end of the hollow tubular element.
Regarding claim 11, Application No. 18267250 claim 13 recites wherein the support element is configured so that the hollow inner region consists of a single channel.
Regarding claim 13, Application No. 18267250 discloses wherein the hollow tubular element comprises a plurality of support elements (page 15, line 36 to page 16 all).
Regarding claim 14, Application No. 18267250 discloses wherein the hollow tubular element comprises an adhesive (page 5, lines 18-20 and page 6, lines 19-28).
Regarding claim 15, Application No. 18267250 discloses wherein the susceptor is arranged within the aerosol-forming substrate (page 25, lines 7-10).
Regarding claim 15, Application No. 18267250 discloses wherein the susceptor is arranged within the aerosol-forming substrate (page 25, lines 7-10).
Regarding claim 20, Application No. 18267250 discloses the susceptor element extends to a downstream end of the first element (page 26, lines 12-15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed December 16, 2025, with respect to the rejection(s) of claims 1-11, 13-15 under 35 USC 103 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 WO 2019063737 A1 (hereinafter NAPPI) in view of US 20170086508 A1 (hereinafter MIRONOV)..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 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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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747