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 and are subject to this Office Action. Claims 1-20 are amended.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 12/17/2025 containing
amendments and remarks to the claims.
Terminal Disclaimer
The terminal disclaimer filed on 12/17/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Applications 18/307516, 18/307534, 18/308162, 18/308173, 18/312058, 18/312061, 18/312063, 18/312070 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The rejection of claims 1 and 4-20 on the ground of non-statutory double patenting have therefore been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 5-6, filed 12/17/2025, with respect to the rejection of claims 8, 12, and 13 under 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 8, 12, and 13 under 35 USC 112(b) has been withdrawn.
Applicant's arguments, see pages 6-7, filed 12/17/2025 have been fully considered but they are not persuasive. The Applicant argues that Fuisz in view of Ademe does not teach an inner layer of the metallic foil overlaps with an outer layer of the metallic foil along the band of overlap. The Examiner does not find this to be persuasive because Ademe teaches for the embodiment shown, the metal foil 60 is formed into a generally circular shape such that each laterally extending end abuts the other. For example, those lateral ends can abut one another (as shown in FIG. 2) or one of the lateral ends can slightly overlap the other (emphasis added) (see [0047] of Ademe). As such, the lateral ends of the metal foil slightly overlap the other would thus read on an inner layer of the metallic foil overlaps with an outer layer of the metallic foil along the band of overlap.
On pages 7-8, the Applicant further argues that there is no disclosure of the electrically insulating material disposed along the band of overlap as Ademe does not disclose that the adhesive material is an electrically insulating material. The Examiner does not find this to be persuasive because Ademe teaches that the adhesive may be configured as a cold glue adhesive ([0076]) and that a suitable adhesive material is applied such as Code 2010-57 from Henkel Corporation and Code 32-220B from Henkel Corporation ([0048]). As most general adhesives act as an electrical insulator, as evidenced by Electrically Conductive Adhesives (https://permabond.com/electrically-conductive-adhesives/#:~:text=Depending%20on%20the%20gap%20between,act%20 as%20an%20electrical%20insulator), it would be obvious to one of ordinary skill in the art that the general adhesives listed in Ademe would be electrically insulating, absent evidence to the contrary.
Applicant’s arguments, see pages 8-9, filed 12/17/2025, with respect to the rejection of claims 1 and 4-20 on the ground of non-statutory double patenting have been fully considered and are persuasive. The Applicant has filed a Terminal Disclaimer on 12/17/2025. The rejection of claims 1 and 4-20 on the ground of non-statutory double patenting) has been withdrawn.
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, 8, and 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) and further in view of Ademe (US2015/0157052).
Regarding claim 1, Fuisz discloses:
An article (tobacco stick 9, [0181]) for use with a smoking device (vaporizer, figure 3) that includes at least first and second electrodes (electrical contacts, [0136]) the article comprising:
A capsule (tobacco stick 9) comprising: a smoking material containing one or more active agents (nicotine aerosolized from the tobacco substrate, [0078]).
Metallic foil surrounding the smoking material (heater 10 made of foil, [0188]), the metallic foil being configured to be heated via resistive heating by the electrodes driving a current into the metallic foil ([0190]).
A paper covering that covers the metallic foil (where in certain embodiments the stick has the heater on the inside of the tipping paper, [0116]).
Fuisz does not appear to disclose wherein the paper covering is adhered to itself along a band of overlap, such as to form a cylindrical shape and such that an inner layer of the metallic foil overlaps with an outer layer of the metallic foil along the band of overlap, and wherein an electrically insulating material is disposed along the band of overlap, to isolate the inner layer of the metallic foil from the electrodes.
Ademe, directed to a smoking article, teaches:
An elongate paper sheet 80 is arranged forming an overlap zone 95. A suitable adhesive material is applied in the region of overlap zone 98 so as to secure those lateral end portions together and hence secure the outer wrapping material in a generally tubular fashion around the heat conductive foil 60 of the heat generation segment 55 [0048]. The paper forming an overlap zone defines a paper covering adhered to itself along a band of overlap, such as to form a cylindrical shape. The suitable adhesive defines an electrically insulating material disposed along the band of overlap.
The metal foil 60 is formed into a generally circular shape such that each laterally extending end abuts the other. For example, those lateral ends can abut one another (as shown in FIG. 2), or one of the lateral ends can slightly overlap the other ([0047]). The lateral end of the metal foil slightly overlapping would define an inner layer of the metallic foil overlaps with an outer layer of the metallic foil along the band of overlap.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the paper covering of Fuisz to be arranged around the conductive foil forming an overlap zone as taught by Ademe, and thus the paper covering is adhered to itself along a band of overlap and an inner layer of the metallic foil overlaps with an outer layer of the metallic foil along the band of overlap, because both Fuisz and Ademe are directed to aerosol generating articles with paper coverings surrounding a heating foil, Ademe teaches this secures the paper covering around the heating foil, and this merely involves incorporating a known way to secure a paper wrapper around a similar aerosol generating article to yield predictable results.
As modified Fuisz has the suitable adhesive along the band of overlap and is therefore in-between an inner later of the metallic foil and the electrodes, this defines wherein an electrically insulating material is disposed along the band of overlap to isolate the inner layer of the metallic foil from the electrodes.
Regarding claim 2, modified Fuisz further teaches wherein the electrically insulating material comprises an adhesive that is used to adhere the paper covering to itself along the band of overlap (Ademe, A suitable adhesive material is applied in the region of overlap zone [0048]).
Regarding claim 4, another embodiment of Fuisz teaches wherein the metallic foil is shaped such that at least a portion of the metallic foil is embedded within the smoking material (where the metal foil resistance heater is rolled together with the tobacco substrate, [0222], figure 15). This allows to increase the contact area of the heater with the tobacco substrate [0222].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fuisz to have the metal foil resistance heater also rolled together with the tobacco substrate as taught by another embodiment of Fuisz to increase the contact area of the heater with the tobacco substrate.
Regarding claim 8, Fuisz teaches:
Wherein the metallic foil has a first characteristic at locations at which the electrodes are configured to contact the metallic foil (the shape and surface area size of contact rings 17, [0186], figure 1).
A second characteristic along a region in which the metallic foil surrounds the smoking material that is between the locations at which the electrodes are configured to contact the metallic foil (the shape and surface area size of heating surface 18, [0186], figure 1).
Wherein the second characteristic is different to the first characteristic (as the contact ring 17 is a different shape and covers a different amount of surface area than the heating surface 18, as shown in figure 1).
Regarding claim 10, Fuisz teaches:
The paper covering defining openings via which the electrodes are configured to make electrical contact with the metallic foil (the tipping paper may be pierced by electrical contacts to create an electrical circuit between the electrical contacts of the stick and the device electrical connections, [0121]).
Regarding claim 12, the smoking device itself is not a positively claimed limitation. The limitation of wherein at least a portion of the capsule is configured to be flattened by the smoking device prior to the metallic foil being heated by the smoking device, is dependent on the smoking device with which the capsule is intended to be used and is therefore an intended use of the capsule. If the prior art structure is capable of performing the intended use, then it meets the claim.
Therefore as the capsule (tobacco stick 9) is capable of being flattened by a 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, Fuisz teaches wherein the capsule has a circular cross-section shape (the tobacco stick may be cylindrical, [0180]).
The limitation of 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, is an intended use of the capsule. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore as the capsule (tobacco stick 9) is capable of being flattened to define a non-circular cross-sectional shape, the claimed capsule is not differentiated from the prior art.
Regarding claims 14-15, Fuisz teaches wherein the capsule comprises an elongate capsule (as shown in figure 1) having a length of 45.2 mm [0086] or 83 mm [0087], which falls within the claimed range of between 15 mm and 150 mm as recited in claim 14, and the claimed range of between 50 mm and 90 mm as recited in claim 15.
Regarding claim 16, it is apparent that airflow through the capsule is substantially in an axial direction along a length of the capsule of Fuisz (figures 1-2).
Regarding claim 17, Fuisz teaches wherein the metallic foil is configured to be heated via resistive heating by the first electrode driving a current to the second electrode [0190]. As the tobacco stick length is 45.2 mm [0086] or 83 mm [0087], it would be obvious to one of ordinary skill in that art that a length in an axial direction along the metallic foil between contact rings 17 is more than 5 mm. Alternatively, where the only difference between the prior art and the claims was 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 was not patentably distinct from the prior art device. See MPEP § 2144.04.IV.A.
Regarding claim 18, it is apparent that airflow through the capsule is substantially in an axial direction along a length of the capsule of Fuisz (figures 1-2).
Regarding claims 19-20, Fuisz is silent to the thickness of the metallic foil.
However Ademe further teaches a foil strip with a thickness of about 0.0005 mm to about 0.05 mm [0076], or 0.5 micron to 50 microns. As this is a conventional foil thickness known in the art, it would have been obvious to one of ordinary skill in the art to apply to the foil of Fuisz to achieve predictable results. The range taught by the prior art overlaps the claimed range of between 1 micron and 20 microns as recited in claim 19 and between 3 microns and 10 microns as recited in claim 20 and is therefore prima facie obvious.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) in view of Ademe (US2015/0157052) as applied to claim 1 above, and further in view of Hon (US2017/018863).
Regarding claim 3, modified Fuisz does not appear to disclose wherein the electrically insulating material comprises polyimide.
Hon, directed to an electronic cigarette, teaches:
A heat-curable adhesive (e.g. epoxies, urethanes, and polyimides based adhesives) may alternatively be used in combination with heat resistant films, such as heat-resistant polymer films (e.g. PE), metal alloy films (e.g. FeCrAl, stainless steel alloys, copper alloys, and stainless steel-copper alloys), and paper [0020].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the adhesive of modified Fuisz be a polyimides based adhesive as taught by Hon, and thus the electrically insulating material would comprise polyimide, because both modified Fuisz and Hon are directed to an adhesive to be used with metal films and paper, Hon teaches this is a heat-curable adhesive, and the selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claim(s) 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) in view of Ademe (US2015/0157052) as applied to claim 1 above, and further in view of Bowen (US2020/0037669).
Regarding claim 5, Fuisz discloses wherein the metallic foil comprises a plurality of regions (where the heating surface 18 of the foil is in the form of several longitudinal stripes, [0186]).
Fuisz does not appear to explicitly disclose each of the regions having a respective, different electrical resistance profile, such that upon a given current being driven through the metallic foil each of the regions heats to a respective, different temperature.
However, Bowen, directed to a vaporizer cartridge, teaches:
A heating element that includes an electrically resistive area made out of an electrically conductive material, such as an electrically conductive foil material [0071].
The foil material can be treated to increase its electrical resistance in a desired part of the electrically conductive foil (e.g., by perforating, varying a thickness or other dimension of a conducive cross-section, etc.). Thereby creating different areas of electrical resistance. Such different areas of electrical resistance can affect the temperature reached when the electrically resistive part is caused to be heated [0071). Thus the foil material has a plurality of regions with each of the regions having a respective, different electrical resistance profile, such that upon a given current being driven through the metallic foil each of the regions heats to a respective, different temperature.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the metallic foil of Fuisz to be treated to increase its electrical resistance in a desired part of the electrically conductive foil as taught by Bowen, because both Fuisz and Bowen are directed to metallic foil heaters of articles to be vaporized, Bowen teaches this creates different areas of electrical resistance which can affect the temperature reached, and this merely involves incorporating a known metallic foil heater to a similar article to yield predictable results.
Regarding claim 11, modified Fuisz does not appear to disclose wherein the metallic foil is treated along the band of overlap, in order to increase resistance of the metallic foil along the band of overlap.
Bowen, directed to a vaporizer cartridge, teaches:
A heating element that includes an electrically resistive area made out of an electrically conductive material, such as an electrically conductive foil material [0071].
The foil material can be treated to increase its electrical resistance in a desired part of the electrically conductive foil (e.g., by perforating, varying a thickness or other dimension of a conducive cross-section, etc.). Thereby creating different areas of electrical resistance. Such different areas of electrical resistance can affect the temperature reached when the electrically resistive part is caused to be heated [0071).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the metallic foil of Fuisz to be treated to increase its electrical resistance in a desired part of the electrically conductive foil as taught by Bowen, because both Fuisz and Bowen are directed to metallic foil heaters of articles to be vaporized, Bowen teaches this creates different areas of electrical resistance which can affect the temperature reached, and this merely involves incorporating a known metallic foil heater to a similar article to yield predictable results.
It would be obvious to one having ordinary skill in the art to treat the metallic foil along the band of overlap as this is merely choosing from a finite number of locations to treat the metallic foil. Choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See MPEP § 2143, E.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) in view of Ademe (US2015/0157052) as applied to claim 1 above, and further in view of Worm (US2019/0289908).
Regarding claim 6, Fuisz does not appear to explicitly disclose the capsule further comprises a collapse-prevention element configured to facilitate electrical contact between the electrodes and the metallic foil, by preventing the capsule from collapsing.
Worm, directed to an aerosol delivery device, teaches:
Where a heating member is located around the outside of a hollow aerosol source member, it may be desirable to support the interior portion of the aerosol source member to prevent the aerosol source member from collapsing due to any outward pressure of the heating member exerted on the outside of the aerosol source member [0058].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the capsule of Fuisz to support the interior portion of the capsule as taught by Worm, and thus facilitate electrical contact between the electrodes and the metallic foil, because both Fuisz and Worm are directed to aerosol generating articles with heating members around the outside, Worm teaches this would prevent the article from collapsing, and this merely involves incorporating a known element (i.e. interior support) to a similar aerosol generating article to yield predictable results.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) in view of Ademe (US2015/0157052) as applied to claim 1 above, and further in view of Saygili (US2023/0346019).
Regarding claim 7, Fuisz does not appear to explicitly disclose wherein the capsule further comprises an electrical-contact coating that coats the metallic foil at locations at which the electrodes are configured to contact the capsule.
Saygili, directed to an aerosol-generating system, teaches:
A heater element that may comprise a first electrical contact portion and a second electrical contact portion positioned on opposite sides of the heater portion so that an electrical current flowing from the first electrical contact portion to the second electrical contact portion passes through the heater portion [0018]. The heater sheet may be a foil [0020].
The heater portion may be coated or plated with an electrically conductive material, such as gold, silver, copper or zinc. This may provide improved resistance to corrosion. It may also provide an improved thermal conductivity (for faster heating and faster cooling) [0030].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the metallic foil of Fuisz to be coated with an electrically conductive material as taught by Saygili, and thus coat the metallic foil at locations at which the electrodes are configured to contact the capsule, because both Fuisz and Saygili are directed to metallic foils that contacts electrodes, Saygili teaches provides an improved resistance to corrosion, and this merely involves incorporating a known metallic foil element to a similar metallic foil heater to yield predictable results.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US2022/0218023, cited in IDS dated 4/26/2023) in view of Ademe (US2015/0157052) as applied to claim 1 above, and further in view of Tasselli (US2023/0107605).
Regarding claim 9, Fuisz does not appear to disclose the capsule further comprises an inner lining that lines an inside of the metallic foil, the inner lining being configured to diffuse heat that is generated by the metallic foil.
Tasselli, directed to a nicotine cartridge, teaches:
An electrically resistance heater element contained in a heat diffusing material. The diffusion of the heat through the heat diffusing material generally evens out heat profile generated by the heating element(s) to prevent the formation of localized hot spots on the heater (32) surface [0088].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the metallic foil of Fuisz to be contained in a heat diffusing material as taught by Tasselli, and thus comprise an inner lining that lines an inside of the metallic foil, because both Fuisz and Tasselli are directed to heating elements to generate an aerosol, Tasselli teaches it prevents the formation of localized hot spots, and this merely involves incorporating a known heater element to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755