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 the Claims
Claims 1-12 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant's election without traverse of Claims 1-9 in the reply filed on February 9, 2026 is acknowledged. Claims 10-12 are withdrawn.
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.
Claims 1-4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Poynton (US 2023/0284677 A1).
Regarding Claim 1, Poynton, directed to smoking articles ([0002]-[0004]), teaches a smoking article ([0002]-[0004], [0209]-[0210], Fig. 2; Article 1 is a consumable for use in a non-combustible aerosol provision system. The system heats the article to generate an aerosol for inhalation or smoking) comprising:
a medium receiver filled with a plurality of medium granules ([0209]-[0210], Fig. 2; Article 1 comprises a portion of an aerosol-generating material 4 (medium receiver). [0105], [0116], the portion of the consumable comprising at least one aerosol-generating material comprises tobacco material. The tobacco material may be provided in the form tobacco granules. Tobacco is a medium; see instant specification, [40]);
a humectant receiver located on one side of the medium receiver and configured to generate an aerosol ([0209]-[0210], Fig. 2; Article 1 comprises a section or plug of an amorphous solid material 3 (humectant receiver) located on one side of the portion of an aerosol-generating material 4 (medium receiver). [0056]-[0057], the amorphous solid material may comprise 20-70 wt % of an aerosol-former material. The aerosol-former material may comprise one or more of glycerine, glycerol, propylene glycol. Glycerine, glycerol, propylene glycol are common humectants, as would be understood by one of ordinary skill in the art); and
a filter located on another side of the medium receiver ([0209]-[0210], Fig. 2; Article 1 comprises a mouthpiece 2 located on another side of the portion of an aerosol-generating material 4 (medium receiver). Mouthpiece 2 is formed from a plug of filamentary tow 6 at the mouth end of the mouthpiece, and a hollow tubular element 7 at the distal end. [0157], the hollow tubular element is formed from filamentary tow. [0163]-[0164], Mouthpiece 2 is therefore a filter because elements 6 and 7 may be formed from common filter materials such as filamentary tow),
wherein the medium can be provided in the form of cut rag tobacco at 0.25 mm or more in width ([0105]-[0106], the portion of the consumable comprising at least one aerosol-generating material comprises tobacco material. The tobacco material may be provided in the form of cut rag tobacco having a cut width of 0.5 mm to 20 mm),
but does not teach the article wherein the plurality of medium granules are 0.25 mm or more in diameter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the medium granules of Poynton having a diameter of 0.25 mm or more because Poynton states that the medium received may comprises medium granules but does not disclose a suitable diameter for the granules (Poynton, [0105], [0116]), Poynton discloses that the medium can be provided in the form of cut rag tobacco at 0.25 mm or more in width (Poynton, [0105]-[0106]), and one of ordinary skill in the art would have been motivated by the disclosures in Poynton to apply the width size of a cut rag tobacco to the granules.
Regarding Claim 2, Poynton teaches the smoking article of claim 1, wherein the plurality of medium granules comprise tobacco granules ([0105], [0116], the portion of the consumable comprising at least one aerosol-generating material comprises tobacco material. The tobacco material may be provided in the form tobacco granules).
Regarding Claims 3-4, Poynton teaches the smoking article of claim 1, wherein the medium can be provided in the form of cut rag tobacco 0.60 mm or less in width, and 0.425 mm or more in width ([0105]-[0106], the portion of the consumable comprising at least one aerosol-generating material comprises tobacco material. The tobacco material may be provided in the form of cut rag tobacco having a cut width of 0.5 mm to 20 mm),
but does not teach the article wherein the medium granules are 0.60 mm or less in diameter, wherein the medium granules are in diameter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the medium granules of Poynton having a diameter of 0.60 mm or less, and a diameter of 0.425 mm or more because Poynton states that the medium received may comprises medium granules but does not disclose a suitable diameter for the granules (Poynton, [0105], [0116]), Poynton discloses that the medium can be provided in the form of cut rag tobacco at 0.60 mm or less in width, and 0.425 mm or more in width (Poynton, [0105]-[0106]), and one of ordinary skill in the art would have been motivated by the disclosures in Poynton to apply the width size of a cut rag tobacco to the granules.
([0105]-[0106], the portion of the consumable comprising at least one aerosol-generating material comprises tobacco material. The tobacco material may be provided in the form of cut rag tobacco having a cut width of 0.5 mm to 20 mm).
The range for the diameter disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 8, Poynton teaches the smoking article of claim 1, wherein the filter comprises: a first filter having a cavity therein; and a second filter fully filled with a filtration material ([0209]-[0210], Fig. 2; Mouthpiece 2 is formed from a plug of filamentary tow 6 at the mouth end of the mouthpiece, and a hollow tubular element 7 at the distal end. [0157], the hollow tubular element is formed from filamentary tow. Hollow tubular element 7 is a first filter having a cavity therein. The plug of filamentary tow 6 is a second filter fully filled with a filtration material).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Poynton (US 2023/0284677 A1) as applied to Claim 1, and further in view of Aoun (US 2023/0413896 A1).
Regarding Claims 5-7, Poynton does not teach the smoking article wherein the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, multiple times, wherein a humectant is applied to one surface of the flat sheet, wherein the medium receiver is formed by a method comprising applying a humectant to one surface of a flat sheet, disposing the plurality of medium granules on the one surface of the flat sheet, to which the humectant is applied, folding the one surface of the flat sheet to face each other, additionally folding the flat sheet multiple times, and wrapping, with a wrapper, the flat sheet folded multiple times.
Aoun, directed to smoking articles ([0002]), teaches a smoking article ([0190], Fig. 1; Article 1 for use in an aerosol delivery system) comprising
a medium receiver ([0190], Fig. 1; Article 1 comprises a plug 7 (medium receiver) comprising a combustion retarding additive at the distal end)
wherein the medium receiver comprises a flat sheet which is folded ([0009], the plug 7 is formed from a sheet material. [0082], the plug comprising a combustion retarding additive is formed from a sheet of amorphous solid material. In particular, the plug may be formed from a gathered sheet, or a gathered and crimped (folded) sheet comprising an amorphous solid material),
wherein a humectant is applied to one surface of the flat sheet ([0108], the combustion retarding additive is incorporated into or added to the precursor material which is used to form the coating. [0113], precursor material may be sprayed, printed, painted or otherwise locally applied onto the sheet. [0125]-[0126], the precursor material comprises one or more solvents such as glycerol (a humectant)),
wherein medium granules are applied to the surface to which the humectant is applied ([0115], the precursor material and/or subsequent coating comprises or is in the form of an amorphous solid. [0171], The amorphous solid (coating upon the surface to which the humectant is applied) may comprise flavors. [0175], The flavor may be a tobacco powder (medium granules)); and
a wrapper surrounding the medium receiver ([0190], Fig. 1; Article 1 comprises a wrapper 6 surrounding plug 7 (medium receiver)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the medium receiver taught by Aoun as the medium receiver of Poynton because Poynton and Aoun are directed to aerosol generating articles, Poynton demonstrates that the medium receiver can comprise medium granules and a humectant (Poynton, [0057], [0105]-[0106]), and the medium receiver is located at a distal end of the article (Poynton, [0209]-[0210], Fig. 2; Aerosol-generating material 4 (medium receiver) is located at a distal end of the article 1), Aoun demonstrates that the medium receiver is located at a distal end of the article to prevent combustion of the article during use (Aoun, [0049], [0052]), and this involves combining prior art elements according to known methods to yield predictable results.
Claim 7 is considered a product-by-process claim. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Poynton has been modified in view Aoun to disclose a structurally and compositionally equivalent product as the granules are necessarily capable of being formed by a method comprising applying a humectant to one surface of a flat sheet, disposing the plurality of medium granules on the one surface of the flat sheet, to which the humectant is applied, folding the one surface of the flat sheet to face each other, additionally folding the flat sheet multiple times, and wrapping, with a wrapper, the flat sheet folded multiple times as recited in Claim 7.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Poynton (US 2023/0284677 A1) as applied to Claim 1, and further in view of Koide (US 2024/0245089 A1).
Regarding Claim 9, Poynton does not teach the smoking article wherein the plurality of medium granules are manufactured by a fluidized bed granulation process in which a spraying direction of a liquid binder and a flow direction of fluidized air face each other.
Koide, directed to smoking articles ([0002]-[0004]), teaches a plurality of medium granules comprising a binder ([0099], The tobacco molded body may be a plurality of tobacco (medium) granules manufactured by a fluidized bed granulation process. [0100], The tobacco molded body may comprise a binder),
wherein the plurality of medium granules manufactured by a fluidized bed granulation process ([0099], The tobacco molded body may be a plurality of tobacco (medium) granules manufactured by a fluidized bed granulation process).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the medium granules of Poynton with the plurality of medium granules of Koide because Poynton and Koide are directed to smoking articles, Poynton states that tobacco granules may be included in the medium receiver but does not provide a composition or manufacturing process for the granules (Poynton, [0116]) and Koide discloses a composition and manufacturing process for medium granules which can be heated to generate an aerosol (Koide, [0096]-[0100]).
Claim 9 is considered a product-by-process claim. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Poynton has been modified in view Koide to disclose a structurally and compositionally equivalent product as the granules are necessarily capable of being formed by the claimed fluidized bed granulation process in which a spraying direction of a liquid binder and a flow direction of fluidized air face each other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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, PHILIP Y. LOUIE can be reached on (571) 270-1241. 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.
/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755