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’s Response of 03/20/2026 to the Election / Restriction Requirement is entered. Applicant's election of Species C in the reply filed on 03/20/26 is acknowledged.
The Response of 03/20/2026 withdraws claims 2-3, 5, and 7-9 as drawn to unelected Species. Examiner thanks Applicant for identifying duplicate Species D, apologies for the lack of clarity caused by including the duplicate Species, and appreciates Applicant’s clear response.
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) 1, 4, 6, and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089119 A1) Ferrie 1, and further in view of Ferrie et al. (WO 2020/089095 A1) (Ferrie 2).
Regarding claim 1, Ferrie 1 discloses:
An aerosol-generating article, ([pg 10 lines 10-11] Fig 1), comprising:
a tobacco medium portion, ([pg 10 lines 14-15] Fig 1 ref 2); and
a filter portion disposed to be spaced apart from the tobacco medium portion, (pg 10 line 22] Fig 1 ref 5 the terminal filter element); and
Ferrie 1 depicts a tubular cooling portion disposed between the tobacco medium portion and the filter portion comprising two additional segments, ([pg 10 line 22] Fig 1 ref 4 the upstream filter element and [pg 11 lines 3-5] Fig 1 ref 6 the cooling element, where the two interior segments are considered to be a tubular cooling portion because this portion of the aerosol generating article is unheated and the aerosol generated in the tobacco medium portion identified as ref 2 would cool as it passes through the article before flowing through the terminal filter element).
Ferrie 1 discloses the tubular cooling portion comprises an inner peripheral surface, ([pg 4 line 24] the cooling element may have a bore extending longitudinally through it), with a nicotine component, ([pg 4 lines 1-6] describing that the cooling may include tobacco flavor, reasonably understood to include a nicotine component,
where the additive may be sprayed or coated onto the cooling element, ([pg 4 line 9]) reasonably understood to anticipate the tobacco flavor comprising a nicotine component is disposed on at least the inner peripheral surface of the cooling element bore.
Ferrie 2 teaches a similar aerosol generating article, ([pg 3 lines 21-24]), and is thus within the inventor’s field of endeavor. Ferrie 2 teaches that in order for the aerosol-cooling element to increase the concentration of a volatile compound in the vapor, the aerosol cooling element comprises at least one volatile compound additive, and the list of possible compounds includes nicotine, ([pg 4 lines 24-30]). Ferrie 2 teaches that increasing the amount of nicotine in the consumable, will increase the nicotine hit experienced by the user, which provides the user with an enhanced recreational and or medicinal effect when inhaled, and improve the nicotine hit experienced by the user, ([pg 4 lines 3-5]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ferrie 1 that already includes a tobacco flavor according to the teachings of Ferrie 2, including a nicotine compound with the tobacco flavor, to provide a user with an improved nicotine hit. One of ordinary skill in the art would have expected adding the nicotine compound to a tobacco flavor would have the expected result of further enhancing the tobacco flavor to have the sensory outcome expected from nicotine.
Regarding claim 4 and 6, modified Ferrie 1 discloses the aerosol generating article of claim 1. Ferrie discloses that the additive within the downstream interior segment may be non-uniformly dispensed throughout the cooling element, included in isolated locations and/or varying concentrations throughout the cooling element, (pg 4 lines 6-8]). Ferrie 1also discloses the upstream interior segment, ([pg 8 lines 12-15]), which is not disclosed as comprising any flavoring or nicotine component. Because Fig 1 (see annotations below) comprises a tobacco medium portion, a filter portion, and a composite cooling portion between the two end portions, where the first interior cooling portion is not disclosed as having any nicotine additive, and the second interior cooling portion is disclosed as having tobacco flavoring (considered to include nicotine), thus disclosing both an aerosol generating article where the nicotine component is non-uniformly disposed on the inner peripheral surface along a longitudinal direction of the tubular cooling portion and also disclosing a concentration of the nicotine component of the inner peripheral surface at an inlet side of the tubular cooling portion adjacent to the tobacco medium portion is less (considered to be zero) than at an outlet side of the tubular cooling portion adjacent to the filter portion.
PNG
media_image1.png
372
523
media_image1.png
Greyscale
Regarding claim 10, modified Ferrie 1 discloses the aerosol generating article of claim 1. Ferrie 1 discloses that the tubular cooling portion comprises cellulose acetate tow, ([Pg 8 lines 1-2] see annotate Fig 1 above).
Regarding claim 11, modified Ferrie 1 discloses the aerosol generating article of claim 1. Ferrie 1 discloses a flavoring material, ([pg 4 lines 1-3] disclosing the interior segment 6 may include an additive in the form of a flavorant that is dispersed from the element to vapor/aerosol flowing through the element), and the additive may be applied by way of impregnating the additive in the element, ([pg 4 lines 13-14] reasonably understood to disclose the flavoring material is further comprised in a wall constituting the tubular cooling portion).
Regarding claim 12, modified Ferrie 1 discloses the aerosol generating article of claim 1. Ferrie 1 discloses tobacco flavoring as an additive, where the additive may be provided as a liquid, ([pg 4 lines 1-8]).
Regarding claim 13, modified Ferrie 1 discloses the aerosol generating article of claim 1. Ferrie 1 discloses a flavoring material is further comprised in a wall constituting the tubular cooling portion, ([pg 4 lines 1-8] disclosing the interior segment 6 may include an additive in the form of tobacco flavoring that is dispersed from the element to vapor/aerosol flowing through the element, and the additive may be applied by way of impregnating the additive in the element, ([pg 4 lines 13-14] reasonably considered to dispose the nicotine component in a wall constituting the tubular cooling portion).
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferrie et al. (WO 2020/089119 A1) Ferrie 1 and Ferrie et al. (WO 2020/089095 A1) (Ferrie 2), as applied to claim 1 above, and further in view of Ferrie et al. (US 2020/089071 A1) Ferrie 3.
Regarding claim 14-15, modified Ferrie 1 discloses the aerosol generating article of claim 1. Although Ferrie 1 discloses the tobacco medium portion comprises tobacco, ([pg 10 lines 10-11] Fig 1), Neither Ferrie 1 nor Ferrie 2 discloses that the tobacco medium portion comprises a plurality of segments.
Ferrie 3 teaches a similar heat not burn consumable, ([pg 3 lines 2-8] Fig 1), and is thus within the inventor’s field of endeavor. Ferrie 3 teaches that the aerosol forming substrate may comprise a first aerosol forming material and a second aerosol forming material, where the first and second aerosol forming materials are axially and/or radially segregated within the aerosol forming substrate, (pg 3 lines 4-8] Fig 1 refs 13 and 14). Ferrie 3 teaches that having an aerosol generating substrate having at least two different aerosol forming materials that are axially and/or radially segregated, the user experience can be tailored and enhanced, because during the smoking of a single consumable the user is exposed to a mix of vapors and aerosols having different properties, ([pg 3 lines 9-12]). Ferrie 3 teaches that in the first and/or second aerosol forming material may comprise a plant material, and that preferrable both the first and second aerosol generating materials will comprise tobacco which will contain nicotine, ([pg 4 lines 11-28]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Ferrie 1 according to the teachings of Ferrie 3. Ferrie 1 has a tobacco medium portion depicted as comprising a single segment. Ferrie 3 teaches that by segmenting the tobacco medium portion in at least two segments, the different segments may comprise different materials to provide an advantage to the user in the form of a mix of vapors and aerosols having different properties (than a tobacco medium portion comprising only a first aerosol generating material. One of ordinary skill in the art would have no difficulty adapting the teachings of Ferrie 3 into the disclosure of Ferrie 1, and would have reasonably expected the combination to be successful.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lord et al. (US 2021/0315264 A1) teaching the inclusion of nicotine in downstream portions of an aerosol generating article to enhance the delivery of nicotine to a user.
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.
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.
/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights