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 1-13 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 5, and 10-12 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Batista (WO 2020020748 A1, with equivalent US 20210212364 A1 used for the purpose of citations).
Regarding Claim 1, Batista discloses an aerosol generating article for use with an aerosol generating device ([0001]-[0005]), the aerosol generating article comprising:
a substantially planar aerosol generating substrate (Article 1 and substrate 2 are substantially flat. [0075], Fig 1);
at least one airflow channel extending along the substantially planar aerosol generating substrate (Element 3 may be a hollow metal rod which extends through the substrate such that at least one airflow channel extends through the substrate. [0026], [0093], Fig 6); and
a wrapping member surrounding the substantially planar aerosol generating substrate and the at least one airflow channel (Article 1 may optionally comprise a wrapper or cover layer. [0027], [0079]).
Regarding Claim 2, Batista discloses an aerosol generating article wherein
the aerosol generating article includes a distal end, a mouth end, a longitudinal axis extending between the mouth end and the distal end (the article includes an upstream end, a downstream end, a longitudinal axis extending between the upstream end and the downstream end. [0015], [0076]), and
the at least one airflow channel extends in a first direction substantially parallel to the longitudinal axis (A hollow metal rod element 3 may extend through the substrate parallel to the longitudinal axis. [0026], [0093], Fig 6).
Regarding Claim 5, Batista discloses an aerosol generating article wherein the at least one airflow channel comprises at least one airflow passage formed internally within the aerosol generating substrate (Wherein element 3 is a hollow metal rod which extends through the substrate, at least one airflow channel extends through the substrate. [0026], [0093], Fig 6).
Regarding Claim 10, Batista discloses an aerosol generating article wherein
the substantially planar aerosol generating substrate has a flat rectangular shape having a pair of main surfaces (The article may have a parallelepiped shape such that it has at least four rectangular faces. [0013], [0076], Fig 1) and
the wrapping member comprises a pair of rectangular sheets attached, respectively, to the pair of main surfaces (Wherein the wrapper circumscribes the periphery of the substrate, the wrapper comprises at least two rectangular sides. [0027]).
Regarding Claim 11, Batista discloses an aerosol generating article further comprising a support member forming a mouth-end portion of the article, and the support member has a tubular form to receive a downstream end of the aerosol generating substrate and the at least one airflow channel ("an aerosol-cooling element (which may be formed from a gathered sheet of polylactic acid, for example) may be located within the article, between the aerosol-forming substrate and the filter at one end of the article. A support element (for example formed from a hollow acetate tube) may additionally be positioned between the aerosol-forming substrate and the aerosol-cooling element." [0004]).
Regarding Claim 12, Batista discloses an aerosol generating article wherein
the wrapping member has a porous inner surface facing towards the aerosol generating substrate (The cover layer may be formed from any suitable material such as porous materials including paper, abaca fibers, meshes, or cellulose; or non-stick materials such as food grade polymers/plastics. [0027]) and
an anti-stick outer surface facing away from the aerosol generating substrate ("one or more metal elements may comprise a metallic shell or cover layer of any suitable shape (for example as described above) surrounding a non-metallic material" [0026]).
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 3, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Batista as applied to Claim 1 above, in view of Link (US 20220110361 A1).
Regarding Claim 3, Batista teaches that increasing the surface area of the substrate increases the efficiency of thermal energy transfer to the substrate and thereby the volatile compounds are more readily extracted ([0010], [0084]) but does not explicitly disclose wherein the at least one airflow channel comprises at least one groove formed in a surface of the substantially planar aerosol generating substrate.
Link teaches utilizing channels on a surface of an aerosol generating article to increase the surface area of the substrate ([0065]-[0066], [0105]-[0109], Figs 2d-2e), and that increasing the surface area of the substrate increases the surface area to volume ratio of the structure and increases the volatiles released during heating ([0064]-[0066]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the surface of the article of Batista with a series of surface channels as taught by Link because Batista and Link are both directed to aerosol generating articles, Link teaches the use of surface channels to increase the surface area of the heatable substrate ([0064]-[0066]), and this merely involves applying a known component to a similar aerosol generating article to yield predictable results.
Regarding Claim 4, Link discloses an aerosol generating article wherein the aerosol generating substrate includes a plurality of grooves arranged side by side to form a fluted surface (A series of parallel channels cut into the surface of the substrate creates an inner fluted surface of the substrate. [0105]-[0109], Figs 2d-2e).
Regarding Claim 6, Batista discloses wherein the aerosol generating substrate comprises a plurality of aerosol generating strips extending in a first direction (the solid aerosol-forming substrate may comprise: shreds, strands, strips or sheets. ([0017])), but does not explicitly disclose that a channel is formed between intermittently arranged aerosol generating strips. However, Link teaches utilizing a plurality of channels on a surface of an aerosol generating article to increase the surface area of the substate ([0065]-[0066], [0105]-[0109], Figs 2d-2e).
Moreover, given that the arrangement of secondary channels of Link between the strips of Batista merely involves a change in shape of the surface texture and/or rearrangement of the channels providing increased surface area, the modification would be obvious to one having ordinary skill in the art. A person having ordinary skill in the art would find the particular shape of the surface texture to increase the surface area of the article an obvious design choice. See MPEP 2144.04(IV)(B). Moreover, a person of ordinary skill in the art would find the rearrangement of the channels an obvious matter of design choice. See MPEP 2144.04(VI)(C). It follows that a person having ordinary skill in the art, through reshaping of the surface texture and/or rearrangement of the channels disclosed in Link onto the surface of the article of Batista, would arrive at the at least one perpendicular airflow channel formed between each pair of intermittently arranged aerosol generating strips and in fluid communication with said pair of intermittently arranged aerosol generating strips similarly as claimed, absent evidence to the contrary.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the surface of the article of Batista with channels as taught by Link such that at least one channel is perpendicular to the first direction, because Batista and Link are both directed to aerosol generating articles, Link teaches the use of surface channels to increase the surface area of the heatable substrate ([0064]-[0066]), a person of ordinary skill in the art would find the particular arrangement of channels an obvious matter of design choice, and this merely involves applying a known component to a similar aerosol generating article to yield predictable results.
Regarding Claim 7, Batista further discloses an aerosol generating article wherein each of the plurality of aerosol generating strips comprises a same aerosol generating material (the solid aerosol-forming substrate may comprise one or more of herb leaf, tobacco leaf, tobacco ribs, expanded tobacco and homogenized tobacco. [0017]).
Regarding Claim 8, Batista further discloses an aerosol generating article wherein
at least a first one of the plurality of aerosol generating strips comprises a first aerosol generating material (The aerosol-forming substrate may comprise a first region 2020 and a second region 2021. [0009], [0091]-[0093], Fig 6) and
at least a second one of the plurality of aerosol generating strips comprises a second aerosol generating material that differs from the first aerosol generating material ("the first and second regions may comprise aerosol-forming substrate formed of or comprising different materials, different combinations of materials or different relative proportions of materials" [0025]).
Regarding Claim 9, Batista further discloses an aerosol generating article wherein at least one of the plurality of aerosol generating strips includes a flavorant ("the solid aerosol-forming substrate may contain tobacco or non-tobacco volatile flavour compounds" [0018]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Batista as applied to Claim 12 above, in view of Liu (US 20200367562 A1).
Batista discloses an outer metallic cover as discussed above in regard to Claim 12 and that the article is inserted between heating surfaces ([0005]), but does not explicitly disclose wherein the cover/wrapping member comprises an anti-stick coating on the outer surface.
Liu teaches an aerosol-generating article wherein the a sliding member comprises an anti-stick coating on the outer surface ("The non-stick coating can effectively prevent the atomizing medium such as tobaccos and the curing residues thereof from being adhered to the curing and heating element in curing and heating, so as to avoid carbon deposits, tar, nicotine and other harmful substances easily generated in repeatedly curing." [0017]. The non-stick coating may comprise polytetrafluoroethylene (PTFE) or a nano coating. [0006]-[0007]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the surface of the article of Batista with a non-stick coating as taught by Liu because Batista and Liu are both directed to aerosol generating systems, Liu teaches the use of a non-stick coating on a surface of an aerosol-generating system component such that tobacco residue does not stick to the surface and cause device fouling, and this merely involves applying a known coating to a similar aerosol generating system to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Rejection 1
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 10 of copending Application No. 18/287391. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol delivery article comprising 1) a substantially planar aerosol generating substrate; 2) at least one airflow channel extending along the substantially planar aerosol generating substrate; and 3) a wrapping member surrounding the substantially planar aerosol generating substrate and the at least one airflow channel.
The claims differ in that rejected Claim 1 recites a wrapping member whereas conflicting Claim 1 is silent on a wrapping member. However, Claim 10 of copending Application No. 18/287391 discloses that the article may comprise a wrapping member. Therefore, all the elements of rejected Claim 1 are present and obvious over the conflicting claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Rejection 2
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 3 of copending Application No. 18/285612. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol delivery article comprising 1) a substantially planar aerosol generating substrate; 2) at least one airflow channel extending along the substantially planar aerosol generating substrate; and 3) a wrapping member surrounding the substantially planar aerosol generating substrate and the at least one airflow channel.
The claims differ in that rejected Claim 1 recites a channel whereas conflicting Claim 1 disclosed a channel-forming strip. However, Claim 3 of Application No. 18/285612 discloses that the channel-forming strip may be positioned in a groove. Therefore, all the elements of rejected Claim 1 are present and obvious over the conflicting claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Rejection 3
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of copending Application No. 18/287770. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol delivery article comprising 1) a substantially planar aerosol generating substrate; 2) at least one airflow channel extending along the substantially planar aerosol generating substrate; and 3) a wrapping member surrounding the substantially planar aerosol generating substrate and the at least one airflow channel.
The claims differ in that rejected Claim 1 recites an airflow channel whereas conflicting Claim 1 discloses a channel and wherein the channel comprises two or more portions having different cross-sections. Therefore, all the elements of rejected Claim 1 are present and obvious over the conflicting claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755