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 .
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.
Claim 14 is 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “unheated” in claim 14 is used by the claim to mean “160 to 200 °C” while the accepted meaning is a spectrum of temperatures between the temperature of the heated portion of the device and ambient. The term is indefinite because the specification does not clearly redefine the term. Given the mutually exclusive conditions of being unheated while simultaneously having a temperature of 160-200 C, the Examiner interprets the limitation as a temperature of an unheated part of the smoking article is some temperature in a spectrum of temperatures between ambient and the temperature of the nearby heating part.
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.
Claims 1-4 and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong (WO 2019151688 A1) submitted by Applicant in IDS filed 10-18-2023, English machine translation relied upon; in view of England (US20210022390A1), US version of WO2019101623A1 cited by Applicant in IDS filed 10-18-2023.
Regarding Claim 1, Jeong teaches a smoking article comprising: a medium accommodation portion (320, see FIG 3 and [0052]);
a moisturizer accommodation portion (310) disposed on one side of the medium accommodation portion (see [0052] and FIG 3) and comprising an aerosol generating material (see [0032], the moisturizers are glycerin, propylene glycol and other moisturizers and are used to enrich the amount of aerosol vapor [0033], which meets aerosol generating material); and
a filter portion (330) disposed on another side of the medium accommodation portion (see [0052], and FIG 3), wherein
Jeong teaches the medium accommodation portion as set forth above and teaches three wrappers can be used to wrap the portions [0056] but fails to explicitly disclose the medium accommodation portion is wrapped with a medium accommodation portion wrapper comprising three-ply paper containing aluminum (Al).
However, England teaches the smoking article can be wrapped with a wrapper comprising three-ply paper containing aluminum (Al), see [0044]-[0047], e.g., a 3 layer structure which includes two layers of paper on other side of a foil. England teaches the foil is used as a burn retardant substance [0044] and a non-combustible material and is used to conduct heat to the aerosolizable material in use [0032] and to prevent the material from combusting because the aerosol that results from combustion is less suitable for inhalation than the aerosol that results from heating [0036]. Therefore, it would be obvious to a person of ordinary skill in the art to modify the wrapper of Jeong to modify the wrapper of Jeong to include the 3 ply arrangement of England including the aluminum layer in the 3 ply arrangement to conduct heat to the aerosolizable material and to prevent the material from combusting because the aerosol that results from combustion is less suitable for inhalation than the aerosol that results from heating.
Regarding Claim 2, modified Jeong teaches the claim limitations as set forth above. Additionally, England teaches the three-ply paper comprises outer wrapping paper, intermediate wrapping paper, and inner wrapping paper, and the intermediate wrapping paper comprises aluminum (see [0046] and [0047]).
Regarding Claim 3, modified Jeong teaches the claim limitations as set forth above. England teaches the intermediate wrapping paper comprises aluminum with a thickness of less than 50 μm thick [0033] which overlaps with the claimed range of 15 micrometers (μm) to 25 μm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 4, modified Jeong teaches the claim limitations as set forth above. Additionally, England teaches the aluminum intermediate wrapper has a thickness of less than 50 μm and more than 5 μm [0033] which accordingly teaches a basis weight of 14-135 gsm which overlaps with the claimed range the intermediate wrapping paper has a basis weight of 50 grams per square meter (gsm) to 60 gsm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 6, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches the outer wrapping paper and the inner wrapping paper each have a basis weight of 10 to 50 gsm [0043] which overlaps with the claimed range of 10 gsm to 20 gsm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 7, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches the medium accommodation portion is filled with a plurality (plurality met by slurry leaf sheets [0036]) of tobacco sheets (tobacco leaves, reconstituted tobacco [0035]) and each of the tobacco sheets is formed by folding a flat sheet coated with a tobacco medium multiple times (filled with a wrinkled sheet of reconstituted tobacco leaf, compressed to form wrinkles, see [0035]).
Regarding Claim 8, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches the aerosol generating material comprises at least one of glycerin [0037], propylene glycol [0037], and nicotine (tobacco [0037], an ordinary artisan would appreciate tobacco includes nicotine).
Regarding Claim 9, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches the filter portion comprises:
a first filter portion comprising a cavity therein (tube filter portion with a hollow space inside [0039]); and
a second filter portion filled with a filtration material (e.g., recess filter portion with cellulose acetate filtration material [0039]).
Regarding Claim 10, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches further comprising:
a segment wrapper comprising: the medium accommodation portion wrapper (352, see FIG 3 and [0054]); and
at least one of a moisturizer accommodation portion wrapper (351, see FIG 3 and [0054]),
a plurality of segments comprising the medium accommodation portion and the moisturizer accommodation portion are wrapped with the segment wrapper (see FIG 3, segment wrapper 353, which wraps both the medium accommodation portion and the moisturizer accommodation portion, see also [0054]) and
Jeong fails to explicitly disclose the segment wrapper is wrapped with a total wrapper; however, it would be obvious to a person of ordinary skill in the art to duplicate the segment wrapper and wrap the segment wrapper in another wrapper, thereby meeting the requirement of the segment wrapper is wrapped with a total wrapper. The mere duplication of parts, without any new or unexpected results, is obvious to one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Regarding Claim 11, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches an aerosol generating device (see FIG 5), wherein the aerosol generating device is configured to receive the smoking article of claim 1 (520, see [0065]) and provide an aerosol inhalable by a user by heating an aerosol generating material stored in the smoking article (see FIG 5 and [0068]).
Regarding Claim 12, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches an elongated cavity (511) configured to accommodate the smoking article (520); a heater (512) configured to heat the medium accommodation portion (522) and the moisturizer accommodation portion (521) of the smoking article; and a controller (513) electrically connected to the heater, (see FIG 5 and [0065]-[0066]).
Regarding Claim 13, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches an aerosol generating system comprising: the smoking article of claim 1 (see FIG 5); and an aerosol generating device configured to receive the smoking article of claim 1 and provide an aerosol inhalable by a user by heating an aerosol generating material stored in the smoking article (see FIG 5 and [0068]).
Claim 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong (WO 2019151688 A1) submitted by Applicant in IDS filed 10-18-2023, English machine translation relied upon; and England (US20210022390A1), US version of WO2019101623A1 cited by Applicant in IDS filed 10-18-2023, as set forth above in claim 2 and claim 13 respectively, and further in view of Grishchenko (WO 2020249954 A1).
Regarding Claim 5, modified Jeong teaches the claim limitations as set forth above. However, Jeong and England are silent to the thickness of the outer and inner wrapping papers and therefore fails to explicitly disclose the outer wrapping paper and the inner wrapping paper each have a thickness of 30 μm to 40 μm.
However, Grishchenko teaches a similar article with two paper wrappers and teaches suitable wrapping paper thickness for use and teaches the two wrappers have a thickness of between 30 and 60 μm (page 12 lines 14 and 15).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the thickness of the outer and inner wrapping papers of Jeong to have a thickness of between 30 and 60 μm as taught by Grishchenko, because both Jeong and Grishchenko are drawn to smoking articles with paper wrappers, Jeong is silent in regards to suitable thicknesses of paper wrappers for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Grishchenko teaches known thicknesses for a similar smoking article and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 14, modified Jeong teaches the claim limitations as set forth above. Additionally, Jeong teaches the aerosol generating device comprises a heater configured to heat the medium accommodation portion and the moisturizer accommodation portion of the smoking article [0074], the article is placed inside of the heater of FIG 5, although not explicitly disclosed an ordinary artisan would appreciate that both the medium accommodation portion and the moisturizer portion are heated by the heater (See [0056], when the third wrapper is used (353) no perforation is used and an ordinary artisan would appreciate that without perforation the moisturizer portion is not detached),
Additionally, Jeong teaches that the moisturizer accommodation portion can be transferred to the medium accommodation portion before inserting the cigarette into the aerosol generating device [0053], which also meets the claim limitation the aerosol generating device comprises a heater configured to heat the medium accommodation portion and the moisturizer accommodation portion of the smoking article.
and
Jeong and England teach a heater and an unheated part of the aerosol generating device; however, Jeong and England are silent to specific suitable temperatures for the heater or for heating the aerosol generating material in an aerosol generating device.
However, Grishchenko teaches a similar smoking article and teaches suitable temperatures for heating the aerosol generating material and teaches the aerosol generating article heats the aerosol generating material to at least 200 °C (page 36 lines 13). Therefore, if the aerosol generating material which is in the device is heated to 200 °C an ordinary artisan would appreciate that an unheated part of the smoking article some distance from but in proximity to the heated part is at some temperature close to but less than 200 °C in the unheated part of the smoking article, which overlaps with the claimed range of 160 °C to 200 °C (e.g., less than 200 °C overlaps with 160 °C to 200 °C). In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would be obvious to a person of ordinary skill in the art to modify the heating temperature of the aerosol generating material of Jeong to be at least 200 °C as taught by Grishchenko, because both Jeong and Grishchenko are directed to smoking articles with aerosol generating material, Jeong is silent to suitable temperatures for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable temperatures for a similar smoking article, Grishchenko teaches known temperatures for heating an aerosol generating material, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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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.
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/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747