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 election with traverse of group I, claims 1-11 in the reply filed on 5/5/2026 is acknowledged. The traversal is on the ground(s) that the dual-layer wrapping structure defining an overlapping region in which the dual-layer wrapping structure overlaps itself is the common technical feature as claimed and this common technical feature is not taught by Iadanza. This is not found persuasive because Iadanza discloses an overlapping region in which the dual-layer wrapping structure overlaps itself (Abstract, [0026] and figs. 1d- 1e).
Applicant further argues that Iadanza has a preferred embodiment wherein the layers are attached by adhesive in lamination process and conclude that the lamination adhesive of Iadanza fails to attaches a distinct outer wrapper to a distinct inner wrapper at their respective internal and external surfaces in the manner recited by the pending claims. This argument is not persuasive because the lamination adhesive of Iadanza attached the outer wrapper internal surface and the inner wrapper external surface to form a sheet meets the claimed structure. Furthermore, as explained above, Iadanza discloses using an adhesive at the overlapping region in which the dual-layer wrapping structure overlaps itself (Abstract, [0026] and figs. 1d- 1e).
Regarding, the arguments about the thickness and basis weight features. These features are Malgat (U.S 20180116275) (see table I).
In summary, Iadanza discloses attachment of the outer wrapper internal surface to the inner wrapper external surface by a first adhesive in lamination process. Malgat discloses the outer wrapper having basis weight within the claimed range and an inner wrapper having a thickness within the claimed range.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 2, 5 and 7-8 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation of about 10 gsm to 28gsm, and the claim also recites 10 gsm to 16 gsm, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 5 recites the broad recitation of about 20 micrometers to 100 micrometers and also recites 25 micrometers to about 75 micrometers, and the claim further recites about 30 micrometers to about 50 micrometers, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 7 recites the broad recitation of about 30 and about 80 Coresta units and also recites about 30 and about 50 Coresta units, and the claim further recites about 30 and about 40 Coresta units, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 8 recites the broad recitation of about 50 Bekk seconds and about 1000 Bekks seconds, and the claim also recites 100 Bekk seconds and about 200 Bekk seconds, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-2, 5-6, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (U.S 20180116275) in view of Iadanza (WO 2020002165).
Regarding claim 1, Malgat discloses an aerosol-generating article comprising:
an aerosol-forming substrate (Abstract);
a dual-layer wrapping structure (Table I), comprising:
an inner wrapper that circumscribes the aerosol-forming substrate, the inner wrapper comprising an inner wrapper internal surface and an inner wrapper external surface opposite the inner wrapper internal surface (Abstract and Table I);
an outer wrapper that circumscribes the inner wrapper, the outer wrapper comprising an outer wrapper internal surface and an outer wrapper external surface opposite the outer wrapper internal surface, wherein the outer wrapper internal surface and the inner wrapper external surface are attached to one another by means of a first adhesive;
wherein the outer wrapper has a basis weight is 18 gsm (Table I) between about 10 grams per square metre and 28 grams per square metre as claimed; and
wherein the inner wrapper has a thickness is 64.6 micrometers between about 20 micrometres and about 100 micrometres as claimed.
Malgat does not expressly discloses an overlapping region. Iadanza discloses a dual-layer wrapping structure defines an overlapping region in which the dual- layer wrapping structure overlaps itself, the overlapping region comprising a first section and a second section externally disposed on the first section (figs. 1d-1e); wherein the first section and the second section are attached to one another by means of a second adhesive ([00127] and figs. 1c-1e);
Regarding claim 2, Iadanza discloses wherein the inner wrapper has a basis weight is about 17 gsm [0040] between about 10 grams per square metre and 28 grams per square metre as claimed.
Regarding claim 5. Malgat discloses wherein both the inner wrapper and the outer wrapper have a thickness is 70.9 micrometers between about 25 micrometres and about 75 micrometres as claimed.
Regarding claim 6. Iadanza discloses wherein the inner wrapper, the outer wrapper or both the inner wrapper and the outer wrapper comprise an embossed pattern [0020].
Regarding claim 9, Malgat discloses the aerosol-generating article wherein a diameter of the aerosol-generating article is 7.8 mm (Table I) between about 3 mm and about 8 mm as claimed.
Regarding claim 10, Malgat discloses the aerosol-generating article further comprising a filter disposed downstream of the aerosol-forming substrate [0205].
Regarding claim 11, Malgat discloses the aerosol-generating article wherein a length of the aerosol-generating article is 84 mm (Table I) between about 30 mm and about 100 mm as claimed.
Claim(s) 3-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (U.S 20180116275) in view of Iadanza (WO 2020002165) and further in view of Grishchenko et al. (WO 2020249950).
Regarding claim 3, Malgat does not expressly disclose a heating element within the aerosol-forming substrate. Joyeux discloses an aerosol-generating article further comprising a heating element embedded within the aerosol-forming substrate (page 38). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the heating element as taught by Aoun for controlled heating. Furthermore, rearrangement of parts would be unpatentable because it would not have modified the operation of the device (see In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)).
Regarding claim 4, Grishchenko discloses wherein the heating element is a susceptor (page 38).
Regarding claim 7. Malgat does not expressly disclose the porosity of the outer wrapper. Grishchenko discloses the outer wrapper has a porosity is less than 100 Coresta (claim 14) corresponding to the claimed range of between about 30 and about 80 Coresta units as claimed. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the wrapper with the porosity as taught by Grishchenko.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (U.S 20180116275) in view of Iadanza (WO 2020002165) and further in view of Hideshima (WO 2021008916).
Regarding claim 8. Malgat does not expressly disclose the roughness of the wrapper. Hideshima discloses a preferred surface smoothness greater than about 100 Bekk (overlapping with the claimed range; and therefore it would be obvious to pick the claimed range) gives sufficient machine run ability (page 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the ranges taught by Hideshima for the efficiency advantage.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/ Examiner, Art Unit 1747
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