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 .
Status of the Claims
Claims 1-20 are pending.
Claims 1-20 have been amended.
Claims 3, 7 and 16 have been withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on 2/18/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18303636, Application No. 18303624, Application No. 18303627 and Application No. 18303623 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 2/18/2026 have been fully considered but they are not persuasive.
Regarding the argument that the person of ordinary skill in the art would not modify Fuisz using Reevell since Fuisz explicitly teaches that deformation of the tobacco stick must be avoided, at least in part due to the disposable resistive heaters of the tobacco stick. The applicant argues, see [0079] of Fuisz, that the heaters may be breached due to deformation but Reevell teaches that the article therein should be compressed and deformed (see Fig. 6 and accompanying description). The Applicant argues that Reevell describes that the non-compressible elements 52, 54 are only present due to the desired compression of the article, namely, to ensure that it is placed in the correct location during compression (see page 29 line 33 to page 31 line 13). Therefore, the Applicant argues, the person of ordinary skill in the art would have understood that there is no reason to import the non-compressible elements 52, 54 of Reevell into Fuisz because these elements are only present in Reevell because of the desired compression disclosed therein. The Applicant concludes that since Fuisz teaches that compression and deformation should be avoided, the elements non- compressible elements 52, 54 of Reevell would have no use in Fuisz, and there is no reason for them to be imported into Fuisz.
The Examiner respectfully disagrees. Paragraph [0079] of Fuisz teaches one embodiment of the invention. This embodiment states that it is an object of certain embodiments of the present invention to allow a tobacco stick to be placed into the compound chamber without causing its deformation (or without causing substantial deformation). Thus, in this particular embodiment of Fuisz, some deformation may be possible, which one of ordinary skill in the art at the time of filing would have wanted to prevent by including the claimed cylindrical elements. Regardless, paragraph [0085] of Fuisz teaches that “It is an object of certain embodiments to provide for a compound chamber that is the same, or narrower, in diameter (or width) than the tobacco stick. In some embodiments, the diameter (or width) of the compound chamber and the tobacco stick may be equal, or within small positive differential, or within a small negative differential. By negative differential, we mean that the diameter (or width) of the tobacco stick is wider than the diameter or width of the compound chamber.” Therefore, Fuisz explicitly states that deformation does occur.
Regarding the argument that claim 1 takes note that the feature of the two cylindrical elements can be used to provide an effect not described in the prior art, namely a metered dose of the one or more active agents to a user. The Applicant argues that the present application makes use of the feature of the two cylindrical elements to provide an effect that is not envisaged by the prior art (namely a tamper- detectable metered dose). The Applicant concludes that when considering Fuisz and Reevell, this new effect would not be known to the person of ordinary skill in the art because it is not disclosed therein.
The Examiner respectfully disagrees. While this may be described in the instant specification, this is not a claimed limitation.
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.
Claim(s) 1, 2, 4-6, 8-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023, cited in IDS) in view of Reevell (GB 2534208, cited in IDS).
Regarding claims 1 and 5, Fuisz teaches an article (“botanical stick”, abstract) for use with a smoking device (“vaporizer”, abstract), the article comprising an elongated capsule (9) comprising:
a smoking material containing one or more active agents, such as tobacco and nicotine, disposed along a portion of a length of the capsule ([0180]);
one or more heating elements disposed within the capsule ([0010]), the one or more heating elements (18) being configured to vaporize one or more of the active agents from within the smoking material, by the one or more heating elements being heated by the smoking device ([0190] and [0203]).
Fuisz does not expressly teach that two cylindrical elements at respective ends of the length of the capsule that contains the smoking material, such that a predefined quantity of smoking material is disposed between the two cylindrical elements, wherein the two cylindrical elements are configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material.
Reevell teaches an aerosol-generating article for use with an aerosol-generating device, wherein the article has a capsule (“aerosol forming substrate”, abstract). Reevell teaches that the capsule (“aerosol-forming substrate”) may be compressed, or collapsable, by a compressor in an aerosol-generating device (page 4, lines 34- page 5, line 5). Reevell teaches two cylindrical elements (“non-compressible elements”, 52 and 54 and page 11, lines 8-9) disposed at respective ends of a portion of the length of the capsule that contains the smoking material (10), such that a predefined quantity of smoking material is disposed between the two cylindrical elements (page 29, line 24- page 30, line 13 and 10, Fig. 11). Reevell teaches that the cylindrical elements may act to prevent a region of the aerosol-generating article from being compressed by an aerosol-generating device which ensures that the aerosol-generating article is compressed in the required region and not in the non-compression region (page 11, lines 18-22), thus the cylindrical elements are configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material.
It would have been obvious to one of ordinary skill in the art at the time of filing to have included collapse- prevention elements in the article of Fuisz, as suggested by Reevell, because the non-compressible elements may act to prevent a region of the aerosol-generating article from being compressed by an aerosol-generating device which ensures that the aerosol-generating article is compressed in the required region and not in the non-compression region (Reevell, page 11, lines 18-22).
Regarding the limitation, “wherein the predefined quantity of smoking material disposed between the two cylindrical elements is configured to provide a metered dose of the one or more active agents to a user,” this is an intended use of the predefined quantity, which is any quantity, of smoking material (Reevell, 10) disposed between the two cylindrical elements. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the predefined quantity of smoking material (Reevell, 10) is capable of providing a metered dose, which is any dose, of the one or more active agents to a user, the claimed predefined quantity of smoking material is not differentiated from the prior art.
Regarding claim 2, modified Fuisz teaches that the one or more heating elements comprise a metallic foil (Fuisz, [0122]) that is configured to be heated via resistive heating.
Regarding claim 4, modified Fuisz teaches that the capsule (“botanical stick,” 9) has a circular cross- sectional shape (Fuisz, “cylindrical,” [0180]).
Regarding the limitation that the capsule, “is manufactured such as to define a cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape,” it has been 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” (See MPEP § 2144.04(IV)(A)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the capsule have a cross sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape with a reasonable expectation of success and predictable results.
Regarding claim 6, regarding the limitation, “wherein at least part of the portion of the capsule that contains the smoking material is configured to be flattened by the smoking device,” this limitation is an intended use of the capsule. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the capsule is capable of being flattened by the smoking device, the claimed capsule is not differentiated from the prior art.
Regarding the limitation, “wherein the cylindrical elements are configured to prevent the portion of the capsule that contains the smoking material from collapsing when at least part of the portion of the capsule that contains the smoking material is flattened by the smoking device,” this limitation is also an intended use of the capsule. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the cylindrical collapse-prevention elements are capable of preventing the portion of the capsule that contains the smoking material from collapsing when at least part of the portion of the capsule that contains the smoking material is flattened by the smoking device, the claimed capsule is not differentiated from the prior art.
Regarding claim 8, modified Fuisz teaches a tube-shaped collapse-prevention element (“support”) located within the capsule (“aerosol forming substrate”) (Reevell, page 7, lines 13-14 and page 8, lines 8-10). Modified Fuisz teaches that the support element may be made from a material selected to give structural support, the support element may be rigid and the support element may be substantially non-compressible (Reevell, page 8, lines 11-14).
Regarding the limitation, “the tube-shaped collapse-prevention element being configured to prevent the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material,” this limitation is a functional limitation of the tube-shaped collapse-prevention element. See MPEP 2114. If the prior art structure is capable of performing the functional limitation, then it meets the claim. Therefore, since the tube-shaped collapse-prevention element is capable of preventing at least a portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material, the claimed capsule is not differentiated from the prior art.
Regarding claim 9, regarding the limitation “wherein the cylindrical elements are configured to facilitate adequate airflow through the capsule by preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material,” this limitation is a functional not structural limitation. See MPEP 2114. If the prior art structure is capable of performing the functional limitation, then it meets the claim. Therefore, since the cylindrical elements are capable of preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material, the prior art structure inherently possesses the functionally defined limitation of facilitating adequate airflow through the capsule, which is a result of the cylindrical elements preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material.
Regarding claim 10, modified Fuisz teaches that the smoking device includes two or more electrodes (Fuisz, “electrical contacts”, [0136]), and wherein the one or more heating elements comprise a metallic foil (Fuisz, [0122]) that is configured to be heated via resistive heating via the two or more electrodes (Fuisz, [0190]).
Regarding claim 11, regarding the limitation, “wherein the cylindrical elements are configured to facilitate electrical contact between the two or more electrodes and the metallic foil by preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material,” this limitation is a functional not structural limitation. See MPEP 2114. If the prior art structure is capable of performing the functional limitation, then it meets the claim. Therefore, since the cylindrical elements are capable of preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material, the prior art structure inherently possesses the functionally defined limitation of facilitating electrical contact between the two or more electrodes and the metallic foil, which is a result of the cylindrical elements preventing the portion of the capsule that contains the smoking material from collapsing when mechanical pressure is applied to the portion of the capsule that contains the smoking material.
Regarding claim 12, regarding the limitation, “at least a portion of the capsule is configured to be flattened by the smoking device prior to the one or more heating elements being heated by the smoking device,” this limitation is an intended use of the capsule. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since at least a portion of the capsule is capable of being flattened by the smoking device prior to the one or more heating elements being heated by the smoking device, the claimed capsule is not differentiated from the prior art.
Regarding claim 13, regarding the limitation “wherein the cylindrical elements are configured to facilitate adequate airflow through the capsule by preventing the portion of the capsule that contains the smoking material from collapsing when the portion of the capsule that contains the smoking material is flattened,” this limitation is a functional not structural limitation. See MPEP 2114. If the prior art structure is capable of performing the functional limitation, then it meets the claim. Therefore, since the cylindrical elements are capable of preventing the portion of the capsule that contains the smoking material from collapsing when the portion of the capsule that contains the smoking material is flattened, the prior art structure inherently possesses the functionally defined limitation of facilitating adequate airflow through the capsule, which is a result of the cylindrical elements preventing the portion of the capsule that contains the smoking material from collapsing when flattened.
Regarding claims 14 and 15, modified Fuisz teaches that the capsule (“botanical stick,” 9) has a circular cross- sectional shape (Fuisz, “cylindrical,” [0180]).
Regarding the limitation that the capsule, “is configured to be flattened to define a non-circular cross-sectional shape having a ratio of more than 2:1 between a long side of the cross-sectional shape and a short side of the cross-sectional shape,” this limitation is an intended use of the capsule. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the capsule is capable of being flattened to define a non-circular cross-sectional shape, the claimed capsule is not differentiated from the prior art.
Regarding claim 17, modified Fuisz teaches that the one or more heating elements comprise a metallic foil (Fuisz, [0122]) that is configured to be heated via resistive heating via the two or more electrodes (Fuisz, [0190]).
Regarding claim 18, modified Fuisz discloses that the smoking device includes two or more electrodes that are configured to drive an electrical current through the metallic foil (Fuisz, [0188] and [0190]).
Regarding the limitation, “wherein the capsule is configured to be flattened by the two or more electrodes,” this limitation is an intended use of the capsule. See MPEP 2114. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, since the capsule is capable of being flattened by the two or more electrodes, the claimed capsule is not differentiated from the prior art.
Regarding claims 19 and 20, modified Fuisz teaches that the capsule comprises an elongate capsule (“botanical stick”) having a length of 42.5 mm (Fuisz, [0086]) or 83 mm ([0087]), which falls within the claimed range of between 15 mm and 150 mm.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755