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 have been amended.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 10/27/2025 containing amendments and remarks to the claims.
Applicant has amended claim 7 to require a first and second characteristic instead of a first and second configuration and claim 12 to require the metallic foil be heated by a smoking device instead of one or more heating elements. Therefore, the amendment overcomes the rejection of claims 7, and 12-13 under 35 U.S.C. 112(b).
Response to Arguments
Applicant’s arguments, see pg. 6-7 filed 10/27/2025, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive.
Applicant has amended claim 1 to require the band of overlap is treated in order to increase the resistance along the band of overlap relative the metallic foil not in the band of overlap, which was not previously presented. Fuisz discloses an embodiment where the metallic foil resistive heater (18) comprises voids (24, Fig. 27, Fig. 30) throughout the foil but does not disclose the voids are only present in the band of overlap in a manner that would result in an increased resistance in the band of overlap relative to the metallic foil not in the band of overlap. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a combination of previously applied prior art and newly found prior art.
Applicant’s arguments, see pg. 8 filed 10/27/2025, with respect to the rejection of claim 1 and 3 under 35 U.S.C. 101 have been fully considered and are persuasive. Applicant has amended claim 1 to recite different features than copending Application 18/307,534. Therefore, the rejection has been withdrawn.
The rejections below are maintained and modified where necessitated by Applicant’s amendment.
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.
Claims 1, 3, 5, 7, 9-12, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of
Iadanza (US 20210244079 A1).
Regarding claim 1, Fuisz discloses a tobacco stick (9, “a smoking article/capsule”, Fig. 15), comprising:
A metal foil resistance heater (18’) rolled together with a tobacco substrate (22, “smoking material”, Fig. 15, [0222])
The outer edge of the metallic foil (18) surrounds the tobacco substrate (22, Fig. 15)
The tobacco stick (9) may be wrapped in a paper material (Fig. 15, [0116, 0180]).
The tobacco stick (9) is configured for insertion into a vaporizing device with two semi-rings (14, “a first and second electrode”) that contact the contacts (23) of the tobacco stick (9, Fig. 10, [0183-0184], Fig. 16, [0023-0024]).
Fuisz does not explicitly disclose the paper material is adhered to itself along a band of overlap where the metallic foil is treated along the band of overlap.
However, Iadanza, directed to an aerosol generating article (10, Fig. 2, [0153]), discloses:
An aerosol forming substrate (20) wrapped in a wrapper (3) having an inner foil layer and an outer paper layer ([0148, 0150])
The wrapper (3) comprises an embossed portion (5) on the portion of the inner surface that overlaps with the outer surface (4) of the opposite end of the wrapper (3, Fig. 1a-1e, Fig. 5, [0024, 0148])
The embossed portion (5) ensures the foil has sufficient surface area for adhesion between the inner foil layer and outer paper layer in the area of overlap ([0026, 0030, 0149]).
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 by providing the foil layer with a paper backing, where the paper foil laminate is adhered to itself along a band of overlap comprising an embossed portion as taught by Iadanza because both Fuisz and Iadanza are directed to aerosol generating devices, Iadanza teaches the embossed portion improves adhesion between the overlapping surfaces, and this involves a known means of applying a wrapper to a similar smoking article to yield predictable results.
Iadanza does not explicitly disclose the embossing increases the resistance of the band of overlap relative to the metallic foil not in the band of overlap. However, Iadanza discloses a paper backed foil wrapper (3) that comprising an embossed portion (5) along the band overlap with increased surface area. A person having ordinary skill in the art would recognize that embossing the foil increases the length that the electrical current travels through the foil, thereby increasing the electrical resistance in the embossed portion relative to the rest of the foil.
Regarding claim 3, Fuisz discloses the metallic foil (18) is wound in a spiral through the tobacco substrate (22, Fig. 15, [0222]).
Regarding claim 5, Fuisz discloses the metal foil resistance heater (18) may be adhered to the inside of a cardboard tube ([0115]). A person having ordinary skill in the art would recognize that a carboard tube would prevent the tobacco stick (9) from collapsing and therefore facilitate electrical contact between the electrodes and the resistance heater (18).
Regarding claim 7, Fuisz discloses the metal foil resistance heater (18) has contacts (23) for contacting a semi-ring (14, “electrodes”) of the vaporizer and a region between the contacts (23) comprising the metallic foil (18”) that surrounds the tobacco substrate (22, Fig. 15, [0222-02224]).
The specification discloses a characteristic may be the presence or absence of holes in the foil (pg. 29).
Fuisz discloses an embodiment where the contacts are free of holes and the foil in between the contacts (23) comprises a mesh with holes (Fig. 19, [0228]) which is considered to meet the limitation of a first characteristic at the locations configured to contact the electrodes, a second characteristics in between the electrode contact points, where the first characteristic is different from the second characteristic.
Regarding claim 9, Fuisz discloses the tobacco stick (9) is configured for insertion into a vaporizing device, where the vaporizing devices comprises a battery (2, Fig. 3, [0181]).
The Examiner notes that claim 9 is directed to an apparatus for use with a smoking device and is limited to the apparatus. The smoking device does not impart patentability to the claim. The overall resistance to the capsule relative to the internal resistance of a battery of the smoking device is claimed as intended use of the capsule. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tobacco stick (9) disclosed by Fuisz is configured for use with a vaporizing device comprising a battery (2) and is considered to be capable of being used with a vaporizing device having substantially the same resistance.
Regarding claim 10, Fuisz discloses:
The tobacco stick (9) may be wrapped in a paper material ([0180]).
The metallic foil resistance heater (18) comprises contacts (23) disposed on the outside of the tobacco stick (9) for contact with semi-rings (14, “electrodes”) of a vaporizer (Fig. 16, [0138, 0222-0224]).
An embodiment where the heater (18) is on the inside of the paper with the contacts (23) on the outside ([0116])
Fuisz does not explicitly disclose openings in the outer paper wrapping where the electrodes of a smoking device can contact the metallic foil. However, Fuisz discloses a tobacco stick where a metallic foil resistance heater (18) is on the inside of a paper wrapping with contacts (23) disposed on the outside of the paper configured for connection with semi-rings (14, “electrodes”) of a vaporing device which reasonably suggests openings would be present in the paper wrapping to allow contact between the semi rings (14) and the metallic foil resistance heater (18).
Regarding claim 11, Iadanza discloses an adhesive is applied to an embossed portion (5, i.e. band of overlap) to adhere the embossed portion (5) to an outer portion (4) of the paper wrapper (Fig. 1a-1e, [0148]).
A person having ordinary skill in the art would reasonably expect an adhesive used in a smoking article to be an electrically insulating material and therefore isolate an inner layer of the metallic foil from the electrodes of the device.
Regarding claim 12, Fuisz discloses a tobacco stick (9) comprising a metallic foil resistance heater (18) and a tobacco substrate (22, Fig. 15, [0222]).
The Examiner notes that claim 12 is directed to an apparatus for use with a smoking device and is limited to the apparatus. The smoking device flattening the capsule does not impart patentability to the claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tobacco stick (9) disclosed by Fuisz comprises a tobacco substrate (22) and metallic foil. A person having ordinary skill in the art would recognize that the tobacco stick is capable of being flattened by a smoking device and therefore the tobacco stick (9) is considered to be capable of being flattened by a smoking device prior to the metallic foil being heated by the smoking device.
Regarding claim 16, Fuisz discloses the user draws on the end of the tobacco stick (9) to draw heated air axially through the length of the tobacco stick (9, [0206]).
Regarding claim 17, Fuisz discloses the tobacco stick (9) is configured to be used with a vaporizer having two contact semi-rings (14) that contact the contacts (23) of the tobacco stick (9, Fig. 10, [0183-0184], Fig. 16, [0023-0024]).
The Examiner notes that claim 17 is directed to an apparatus for use with a smoking device and is limited to the apparatus. The spacing of the electrodes of the smoking device does not impart patentability to the claim. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The tobacco stick (9) disclosed by Fuisz is configured for use with a vaporizing having two semi-rings (14) spaced apart along an axial direction, therefore the tobacco stick (9) is considered to be capable of the first electrode driving current to the second electrode along a length of more than 5mm in the axial direction of the metallic foil.
Regarding claim 18, Fuisz discloses the user draws on the end of the tobacco stick (9) to draw heated air axially through the length of the tobacco stick (9, [0206]).
Regarding claims 19 and 20, Fuisz is silent to the thickness of the metallic foil resistance heater (18).
However, Iadanza, directed to an aerosol generating article (10, Fig. 2, [0153]), discloses:
An aerosol forming substrate (20) wrapped in a wrapper (3) having an inner foil layer and an outer paper layer ([0148, 0150]).
The inner foil layer has a thickness of 6.3 microns ([0041, 0148]). The thickness taught by the prior art lies within the claimed ranges and is therefore considered prima facie obvious.
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, in view of Iadanza, by providing the metallic foil in a thickness of 6.3 microns as taught by Iadanza because both Fuisz and Iadanza are directed to aerosol generating devices, Fuisz is silent to the thickness of the foil, Iadanza teaches a known thickness for a metallic foil heater, and one having ordinary skill in the art would be motivated to look to similar smoking articles for a workable metallic foil thickness and this involves applying a known thickness to a similar metallic foil in a similar smoking article to yield predictable results.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of Iadanza (US 20210244079 A1), as applied to claim 1 above, further in view of Bowen (US 20200037669 A1).
Regarding claim 2, Fuisz discloses an embodiment where the metallic foil resistive heater (18) comprises voids (24, Fig. 27, Fig. 30).
Fuisz does not explicitly disclose slits along the band of overlap in order to increase resistance of the metallic foil along the band of overlap.
However, Bowen, directed to a vaporizer cartridge (420), discloses:
A heating element (450) comprising a sheet (448) made out of a thermally conductive material which includes perforations (460) in the shape of slits that can increase the electrical resistance in a desired part of the foil (Fig. 4B, [0071, 0074])
The shape and arrangement of the perforations can vary to create areas with different electrical resistance resulting in heating the areas to different temperatures ([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 Fuisz, in view of Iadanza, by providing perforations in the form of slits as taught by Bowen because both Fuisz and Bowen are directed to aerosol generating devices, Fuisz discloses voids in the metallic foil resistance heater and Bowen discloses perforations in a foil heater in the shape of slits for increasing the electrical resistance, and this involves applying perforations in a known shape in a similar metallic foil heater to yield predictable results.
Since the slits are present throughout the metallic foil, a person having ordinary skill in the art would recognize that the slits would increase the resistance of the metallic foil along the band of overlap.
Regarding 4, Fuisz discloses a tobacco stick (9) comprising a metallic foil resistance heater (18).
Fuisz does not explicitly disclose a plurality of regions with different electrical resistance profiles that results in the regions heating to different temperatures.
However, Bowen, directed to a vaporizer cartridge (420), discloses:
A heating element (450) comprising a sheet (448) made out of a thermally conductive material which includes perforations (460) that can increase the electrical resistance in a desired part of the foil (Fig. 3B, Fig. 4B, [0071, 0074])
The shape, density, and arrangement of the perforations can vary to create areas with different electrical resistance resulting in heating the areas to different temperatures (Fig. 3B, [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 Fuisz, in view of Iadanza, by providing perforations in different shapes, densities, and arrangement throughout the metallic foil taught by Bowen because both Fuisz and Bowen are directed to aerosol generating devices, Bowen discloses varying the shape, density, and arrangement of the perforations in a metallic foil to create areas with different electrical resistance so that they can be heated to different temperatures, and this involves applying perforations in a known manner in a similar metallic foil heater to yield predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of Iadanza (US 20210244079 A1), as applied to claim 1 above, further in view of Saygili (US 20230346019 A1).
Regarding claim 6, Fuisz discloses the tobacco stick (9) comprises electrical contacts (23, Fig. 16, [0023-0024]).
Fuisz does not explicitly disclose an electrical contact coating.
However, Saygili, directed to an aerosol-generating device (abstract, Fig. 1B), discloses:
A resistive heater element (32) formed of a metallic foil having a heater portion (36) connected to two contact portions (25, 37) for connection to electrical contacts (15, 17) of the main unit of the device (Fig. 1B, [0186-0187]); and
The electrical contact portions are coated with an electrically conductive material such as gold or copper to improve contact resistance with the power supply and provide greater strength to the electrical contact portions ([0029, 0068]).
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, in view of Iadanza, by coating the contacts of the tobacco stick with an electrically conductive material such as gold or copper as taught by Saygili because both Fuisz and Saygili are directed to aerosol generating devices, Saygili teaches the electrical contact coating improves contact resistance and strength of the electrical contact portion, and this involves applying a known coating to an electrical contact in a similar device to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of in view of Iadanza (US 20210244079 A1), as applied to claim 1 above, further in view of Althorpe (US 20170367407 A1).
Regarding claim 8, Fuisz is silent to an inner lining on the metallic foil for diffusing heat generated by the metallic foil.
However, Althorpe, directed to electronic nicotine delivery system (abstract), discloses:
An electric resistance heater (14) contained in a heat diffusing material to prevent hot spots of the surface of the heater (14, Fig. 2A, [0042]); and
The heater is in the form of metallic foil between two layers of a heat diffusing material such as polyimide ([0059]).
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, in view of Iadanza, by providing a polyimide heat diffusing layer on the metallic foil as taught by Althorpe because both Fuisz and Althorpe are directed to aerosol generating devices, Althorpe teaches polyimide heat diffusing material prevents hot spots on the heater, and this involves applying a known heat diffusing layer to metallic foil heater in a similar device to yield predictable results.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of Iadanza (US 20210244079 A1), as applied to claim 1 above, further in view of Jang (US 20220110368 A1, as cited on IDS dated 08/12/2024).
Regarding claim 13, A person having ordinary skill in the art would recognize that the tobacco stick (9) disclosed by Fuisz is capable of being flattened by a smoking device and therefore the tobacco stick (9) is considered to be capable of being flattened by a smoking device prior to the metallic foil being heated by the smoking device, as discussed above.
Fuisz does not explicitly disclose the tobacco stick (9) can be flattened to have a cross-sectional shape where the ratio of the long side of the cross-section to the short side of the cross-section is more than 2:1.
However, Jang, directed to an aerosol generating device (abstract), discloses:
An aerosol generating article (2) where the aerosol generating substrate portion (21) is pressed so that the diameter is 10% to 50% of the diameter of the aerosol generating article (2) prior to pressing (Fig. 5, [0057]). A person having ordinary skill in the art would recognize that pressing an aerosol generating article to 10 to 50% of the diameter of the unpressed article (2) would result in a cross-sectional shape where the ratio of the long side of the cross-section to the short side of the cross-section is in a range that overlaps with the ratio of more than 2:1.
Pressing the aerosol-generating substrate (21) results in minimizing the temperature differences between portions of the aerosol-generating substrate (21) allowing the aerosol-generating substrate (21) to be rapidly heated to a target temperature ([0017]).
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, in view of Iadanza, by pressing the tobacco stick to have a diameter that is 10-50% less as taught by Jang because both Fuisz and Jang are directed to aerosol generating devices, Jang teaches pressing the smoking article allows for faster heat up time, and this involves pressing a smoking article in a known manner to yield predictable results.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fuisz (US 20220218023 A1, as cited on IDS dated 05/04/2023) in view of Iadanza (US 20210244079 A1), as applied to claim 1 above, further in view of Ademe (US 20150157052 A1).
Regarding claims 14 and 15, Fuisz and Iadanza are silent to the length of the smoking article.
However, Ademe, directed to a smoking article (abstract, 10, Fig. 1), discloses:
A smoking article (10) comprising an aerosol generating segment (55) circumscribed by a metal foil (60, Fig. 1, [0038])
The smoking article (10) has a length of 70-120 mm ([0045]). The claimed ranges overlap with the range taught by the prior art and are therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Fuisz in view of Iadanza, by providing the tobacco stick in a length of 70 -120 mm as taught by Ademe because both Fuisz and Ademe are directed to aerosol generating devices, Fuisz is silent to the length of the tobacco stick, Ademe teaches a known range of lengths for a smoking article having a metallic foil heater, and one having ordinary skill in the art would be motivated to look to similar smoking articles for workable ranges of length and this involves applying a known length to a similar smoking article 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.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755