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 election with traverse of Group I (claims 1-11 and 15-18) in the reply filed on 2026 March 10 is acknowledged. The traversal is on the grounds that (A) Evans in view of Grabau does not teach an outer adhesive between a folded section and a second, outer section and (B) Evans teaches that crimping wheels and paste are not equivalent. Applicant’s arguments have been carefully considered but are not persuasive.
Applicant argues (p. 4, [final paragraph] – p. 5, [2]) that applying an adhesive to Evans’s seam (Evans fig. 5-9, protruding portion) would hinder subsequent folding and rolling. However, the examiner’s proposed modification substitutes an adhesive-applying step for Evans’s crimping step (Evans fig. 6) which occurs between a rolling step (Evans fig. 5) and a uniting step (Evans fig. 9). A seam which has been rolled but not pressed or folded (Evans fig. 6) can receive adhesive and thereafter be united with the body (Evans fig. 8-9), and applicant’s assertion that applying adhesive to the seam (Evans fig. 6) would break the following steps appears to be speculation that cannot be followed. Grabau teaches that a seam can be sealed together by alternatives of adhesive-applying and crimping (Grabau p. 3, lines 110-121), so one of ordinary skill would expect to succeed in applying adhesive to Evans’s seam (Evans fig. 6).
Applicant argues (p. 6) that Grabau teaches adhesive-applying and crimping at generic locations, rather than between a folded section and a second, outer section. However, Evans’s crimping step seals together (Evans fig. 6) a folded section and a second, outer section by crimping, and Grabau teaches that adhesive-applying and crimping are alternatives, so one of ordinary skill would be motivated to substitute Grabau’s adhesive-applying for Evans’s crimping.
Applicant argues (p. 7, [2] – p. 8, [1]) that Evans teaches that sealing by rolling (Evans fig. 5), crimping (fig. 7), and adhesive-applying (fig. 9) yields a stronger seam than sealing by adhesive-applying alone. However, substituting Grabau’s adhesive-applying step for Evans’s crimping step (Evans fig. 7) would preserve Evans’s rolling (fig. 5) and adhesive-applying (fig. 9) steps, so Evans’s teaching would still consider the examiner’s proposed modification as yielding a stronger seam than sealing by adhesive-applying alone.
Moreover, Gill (WO 2019224068 A1) in view of Moore (US 2190479 A) teaches claim 1 as in the below analysis, so the shared technical feature is non-special over Gill in view of Moore.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2026 March 10.
Claim Objections
Claims 3 and 9 are objected to because of the following informalities:
Claim 3: “starch and varnish” is suggested to be “starch, and varnish”.
Claim 9: “a gel composition and a flavor substrate” is suggested to be “a gel composition, and a flavor substrate”.
Appropriate correction is required.
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.
Claims 1-2, 4-6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gill (WO 2019224068 A1) in view of Moore (US 2190479 A).
Claims 1-2: Gill teaches an aerosol-generating article (fig. 1-2 and p. 15, line 22 – p. 17, line 23) comprising:
an aerosol-forming substrate (26);
and a wrapper (28) that circumscribes the aerosol-forming substrate (26);
wherein the wrapper (28) defines an overlapping region (portion of 28 which abuts 32) in which the wrapper (28) overlaps itself, the overlapping region (portion of 28 which abuts 32) comprising a first section (radially innermost end of 28) and a second section (radially outermost end of 28) externally disposed on the first section (radially innermost end of 28);
and wherein an inner adhesive (32) is disposed between the first section (radially innermost end of 28) and the second section (radially outermost end of 28).
PNG
media_image1.png
223
507
media_image1.png
Greyscale
Gill does not explicitly teach that the second section comprises a fold which defines a folded section at one end of the wrapper, wherein the folded section is sandwiched between the first section and the second section, and wherein an outer adhesive is disposed between the folded section and the second section.
Moore teaches a wrapper (fig. 5) comprising an overlapping region (13) comprising a folded section (middlemost layer) at one end of the wrapper, wherein the folded section (middlemost layer) is sandwiched between a first, inner section (bottommost layer) and a second, outer section (topmost layer);
wherein an outer adhesive (p. 2 left column, lines 34-38, a thermoplastic adhesive is applied to the hemmed portions of #10 to secure the fold) is disposed between the folded section (middlemost layer) and the second, outer section (topmost layer);
wherein an inner adhesive (p. 2 left column, lines 18-22, thermoplastic lacquer is applied to the outer foil surface of #11),
such that the overlapping region is made strong, durable, and impervious to air and moisture by a cheap and consistent method (p. 1 right column, lines 4-12).
PNG
media_image2.png
353
507
media_image2.png
Greyscale
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to fold Gill’s second, outer section and add Moore’s outer adhesive between Gill’s second, outer section and the new folded section, because doing so would make the overlapping region strong, durable, and impervious to both air and moisture by a cheap and consistent method.
PNG
media_image3.png
273
755
media_image3.png
Greyscale
Claim 4: modified Gill teaches the aerosol-generating article of claim 1, further comprising a heating element (fig. 2 and p. 15, line 27 – p. 16, line 5, #24) embedded within the aerosol-forming substrate (26).
Claim 5: modified Gill teaches the aerosol-generating article of claim 4, wherein the heating element (fig. 2 and p. 15, line 27 – p. 16, line 5, #24) is an inductive susceptor (#24 is an inductive susceptor).
Claim 6: modified Gill teaches the aerosol-generating article of claim 4, wherein the heating element (fig. 2 and p. 15, line 27 – p. 16, line 5, #24) is completely surrounded by the aerosol-forming substrate (26) and extends along an entire length of (p. 17, lines 1-6, #24 and #26 have the same axial length) the aerosol-forming substrate (26).
Claim 9: modified Gill teaches the aerosol-generating article of claim 1, wherein the aerosol-forming substrate (fig. 2, #26) comprises tobacco (p. 17, line 15).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gill (WO 2019224068 A1) in view of Moore (US 2190479 A) as applied to claim 1 and evidenced by Hartz (US 2342580 A).
Claim 3: modified Gill teaches the aerosol-generating article of claim 1, wherein the outer adhesive is a resin (Moore p. 2 left column, lines 34-38, the thermoplastic adhesive is exemplified as Pliolite; Hartz p. 2 left column, line 19, Pliolite is known to be a resin).
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Gill (WO 2019224068 A1) in view of Moore (US 2190479 A) as applied to claim 1 in further view of Mironov (US 20160150825 A1).
Claims 7 and 11: modified Gill teaches he aerosol-generating article of claim 1.
Modified Gill does not explicitly teach that a diameter of the aerosol-generating article is between about 3 mm and about 8 mm,
and a length of the aerosol-generating article is between about 30 mm and about 100 mm.
Mironov teaches an aerosol-generating article (fig. 3 and [126-127], #10) having a diameter in a range between 5mm and 12mm and exemplified at 7.2mm [92 and 127] and having a length in a range between about 30mm and about 100mm and exemplified at 45mm [93 and 127].
Gill’s aerosol-generating article is heated by an elongate susceptor (Gill fig. 2 and p. 15, lines 27-29, #24) embedded within an aerosol-generating substrate (Gill #26), and Mironov’s aerosol-generating article is heated by an elongate susceptor (Mironov fig. 3 and [126], #4) embedded within an aerosol-generating substrate ([Mironov 132], susceptor #4 is embedded in aerosol-forming substrate #20 during manufacture). Gill and Mironov are considered similar aerosol-generating articles used with similar heating means. Where Gill does not teach specific dimensions of the article, one of ordinary skill would look to similar devices in the art for said specific dimensions.
Moreover, the instant specification ascribes no functional meaning to the claimed diameter and length [applicant 66, 73, 110-111]. Absent evidence to the contrary, dimensioning Gill’s diameter and length to the dimensions exemplified by Mironov would maintain Gill’s functionality. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify Gill with the dimensions of Mironov, such as exemplified diameter of 7.2mm and length of 45mm, because doing so would apply Mironov’s known dimensions to Gill’s similar aerosol-generating article heated by an embedded susceptor, wherein Gill is silent to specific dimensions.
Claims 8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Gill (WO 2019224068 A1) in view of Moore (US 2190479 A) as applied to claim 1 in further view of Zhao (US 20190373948 A1) and “Rolling Paper Sizes” (hereinafter S&R).
Claims 8 and 15-18: modified Gill teaches the aerosol-generating article of claim 1.
Modified Gill does not explicitly teach that the wrapper has a thickness between about 60 micrometers and about 200 micrometers,
between about 78 micrometers and about 160 micrometers,
between 78 micrometers and about 140 micrometers,
between about 100 micrometers and about 140 micrometers,
and between about 125 micrometers and about 140 micrometers.
Zhao teaches an aerosol-generating article (fig. 2 and [38]) comprising a wrapper (5) exemplified as paper having a thickness of 150 microns [40], which is close to 140 microns.
Gill’s article is heat-not-burn (Gill p. 16, lines 11-12) and wrapped in a material preferred to be paper (Gill lines 17-18), and Zhao’s article is heat-not-burn (Zhao title) and wrapped in a material exemplified as paper [Zhao 40] to yield expectation to succeed. Where Gill does not teach specific dimensions of the wrapper, one of ordinary skill would look to similar devices in the art for said specific dimensions.
S&R teaches a wrapper (p. 1-2, “ROLLING PAPER THICKNESS”) made of paper and having a thickness that is a result-effective variable which balances slower burning, when the wrapper is thin, against easier handling and rolling, when the wrapper is thick.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use, as Gill’s generic wrapper thickness, Zhao’s specific wrapper thickness of 150 microns, which is close to 140 microns, and thereafter routinely optimize the wrapper to a thickness between about 125 microns and about 140 microns as motivated by S&R, because doing so would apply Zhao’s known thickness to Gill’s similar heat-not-burn aerosol-generating article wrapped in a material preferred to be paper and would thereafter optimize slower burning against easier handling and rolling.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gill (WO 2019224068 A1) in view of Moore (US 2190479 A) as applied to claim 1 in further view of Tang (US 5611360 A).
Claim 10: modified Gill teaches the aerosol-generating article of claim 1.
Modified Gill does not explicitly teach a filter disposed downstream of the aerosol-forming substrate.
Gill teaches, in an alternate embodiment, a cellulose acetate element (fig. 6 and p. 20, lines 16-17, #50) disposed downstream (p. 15, lines 3-5, fig. 10 shows an alternate view of fig. 6; fig. 10, #50 is at a downstream end of the article) of an aerosol-forming substrate (26).
Tang teaches a mouthpiece (fig. 2 and col. 4, lines 25-29, #20) comprising a cellulose acetate filter (26) disposed downstream of an aerosol-forming substrate (col 2, lines 60-61, #12), such that the cellulose acetate filter captures large particles from being inhaled by a user (col. 4, lines 25-29).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Gill’s alternately-embodied cellulose acetate filter (Gill fig. 6) to Gill’s article (Gill fig. 2) as motivated by Tang, because doing so would capture large particles from being inhaled by a user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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.
/TOBEY C LE/Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights