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.
Claims 1-10 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.
Regarding independent claim 1 (and, therefore, those that depend therefrom), it recites an “exothermic wrapper comprising a heat source”, and claim 6 specifies that “the heat source comprises a susceptor material”. However, an “exothermic” material chemically generates heat on its own via an exothermic reaction; whereas, a “susceptor material” is passive and generates heat by induction only when exposed to an external electromagnetic field. As such, a “susceptor” is not inherently exothermic, so calling an inductive susceptor an “exothermic wrapper” creates confusing claim language.
Regarding claim 5, it recites “the heat source is disposed between the medium and the wrapper or outside the wrapper (emphasis added). The phrase” or outside the wrapper” is an open-ended limitation. Since the thermal insulating wrapper surrounds the exothermic wrapper (per claim 1), placing the heat source “outside the wrapper” leaves it open as to whether the heat source is between the exothermic wrapper and insulating wrapper, or outside the insulating wrapper entirely. Under MPEP 2173.05(d), alternative recitations that leave the physical bounds of the assembly vague render the claim indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN113699830A) (hereinafter referred to as “Tang et al”; see Mechanical English Translation).
Regarding independent claim 1, Tang et al discloses every element of this claim, as it teaches:
Medium segment: Heating section (10) comprising an aerosol generating matrix (1) (see paras. [0027],[0035]. Fig. 7)
Medium: Aerosol generating matrix (1) (see para. [0027])
Exothermic wrapper comprising a heat source and surrounding the medium: Heating layer (2) surrounding the matrix (1), composed of induction heating sensor material (see paras. [0006],[0027],[0029]).
Thermal insulating wrapper surrounding the exothermic wrapper: Heat insulation layer (3) (and outer layer (4)) surrounding the heating layer (2) (see paras. [0006],[0027]).
Regarding claim 4, Tang et al discloses:
First wrapper surrounding the medium: Thermally conductive fixing layer (5) in direct contact with and surrounding matrix (1) (see paras. [0007],[0032], Fig. 3).
Second wrapper surrounding the first wrapper: Heat insulation layer (3) (or outer layer (4)) surrounding fixing layer (5) (see paras. [0007],[0032], Fig. 3)
Heat source disposed between the first and second wrappers: Heating layer (2) is disposed between fixing layer (5) and heat insulation later (3) (see paras. [0007],[0032], Fig. 3).
Regarding claim 5,
Tang et al discloses heating layer (2) surrounding the medium, located between fixing layer (5) and heat insulation layer (3) (outside fixing layer (5)) (see para. [0007],[0032]).
Regarding claim 6, Tang et al discloses:
Tang recites that heating layer (2) is composed of sensor materials that generate heat under an alternating magnetic field, such as ferrite, ferromagnetic steel, or stainless steel (i.e., susceptor materials) (see paras. [0008],[0029]).
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.
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.
Claims 2-3 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over CN113699830A (hereinafter referred to as “Tang et al”; see Mechanical English Translation) in view of Besso et al (US. Pat. App. Pub. 2025/0031749).
Regarding claim 2, Tang et al discloses paper/insulation layers but does not explicitly recite the specific numerical range for the basis weight (40-80g/m2); however, Besso et al teaches an aerosol-generating article having a (insulating) paper wrapper (10) that covers an aerosol-generating substrate (112) having a basis weight of from 60-100 g/m2 (see abstract and Fig. 1). It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen a basis weight for the Tang et al thermal insulating wrapper in order to ensure the prevention of unwanted loss of heat form the aerosol-generating article as taught in Besso et al (see para. [0030]; Note: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05).
Regarding claim 3, Besso et al also states that having both a thick and a high basis weight wrapper can be more effective at providing the desirable effects, i.e. improved structural integrity (see paras. [0006],[0038]). Based on this disclosure, selecting a thickness specifically lying within the range of 60-100 microns would have constituted routine optimization of design parameters.
Regarding claim 7, it requires that the 1st segment (filter) be upstream of the 2nd segment (medium). Tang et al’s primary embodiment (Fig 7) shows heating section (10) (medium) at the upstream end, followed downstream by cooling section (20) and filter section (30) (filter is downstream, not upstream). However, in Tang et al’s “Background” section (see para. [0004], Tang et al discusses prior art (CN10949762) having a filter tip section abutting against the upstream end of the aerosol-forming matrix. As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have placed a filter segment upstream of the medium segment to modify airflow or retain matrix material.
Regarding claim 8, Tang et al teaches a (3rd segment) cooling section (20) downstream of heating section (10) (see para. [0035]).
Regarding claim 9, Tang et al teaches filter section (30) downstream of cooling section (20), however it does not disclose a 4th segment downstream of the 3rd segment; however, the 4th section would have been routine design choices made by one having ordinary skill in the art.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over CN113699830A (hereinafter referred to as “Tang et al”; see Mechanical English Translation) in view of WO 2015/1766898 (hereinafter referred to as “Mironov et al”).
Regarding independent claim 10, Tang et al discloses an aerosol generating article having all the structure that is recited in the claim as already stated above with respect to the rejection of claim 7. In sum, Tang et al focuses primarily on the aerosol generating article and multi-layer wrapper, but it references induction heating devices and surrounding induction coils generally (see paras. [0002]-[0004]). It does not explicitly disclose the specific double-housing structure; however, Mironov et al does (first housing (200), second housing (230, 231) within first housing, heater (210) disposed around second housing; see page 14, line 25 - page 15, line 11). As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to form a complete aerosol generating system in order to accommodate and heat the aerosol generating article of Tang et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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