DETAILED ACTION
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive.
Applicant argues “Batista's substrate 424 is a consumable, tobacco-containing block that is held by a structure (first heater 426) in a cavity 434 of the intermediate layer 423. Thus, Applicant submits that Batista's substrate 424 is not a frame or part of a frame "configured as an underlying support structure for the capsule," as recited by claim 1, as Batista does not disclose or fairly suggest that the substrate 424 is configured as such”. The Examiner disagrees. Firstly, it is noted that this is not an argument against Batista teaching claim 1. Batista teaches “one or more intermediate layers” [0021], thus disclosing a frame in a form of a multi-layer structure even if the substrate of Batista cannot be considered part of the frame. Secondly, it is maintained that a block of tobacco leaf 424 having substantially the same thickness as intermediate layer 423 in which it is held as shown in Fig. 4B, would provide some degree of underlying support in combination with intermediate layer for the surrounding heaters, thus reading on the broadest reasonable interpretation of the claims.
Applicant argues “FIGS. 4A/4B and corresponding paragraphs [0104]-[0105] of Batista disclose that the base layer is formed from an intermediate layer 423 and the first heater 426, thus any alleged "multi-layer" base structure in Batista would include the first heater 426 such that Batista's alleged "multi-layer" base structure would not be sandwiched between the first heater 426 and the second heater 427 as Batista's alleged "frame" would include the first heater 426.” The Examiner disagrees. Intermediate layer 423 of Batista does not include heater 426. A multi-layer intermediate layer [0021] would be sandwiched between the first heater 426 and the second heater 427.
Applicant argues “the modification of Raichman in view of Yamada to require Raichman's central portion 31 to be a multi-layer structure of flavor generating sheets that are paper, cast films, and/or nonwoven fabrics would render Raichman's central portion 31 unsatisfactory for its intended purpose of reducing heat loss and preventing heating of surrounding areas”. The Examiner disagrees. The proposed modification of Raichman in view of Yamada does not require Raichman's central portion 31 to be a multi-layer structure of flavor generating sheets that are paper, cast films, and/or nonwoven fabrics. The proposed modification involves providing multiple layers of the frame of Yamada, which comprises tobacco and plant material, in view of the suggestion of Yamada of multiple flavor-generating layers. A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Applicant argues that absent hindsight, one of ordinary skill in the art would not have been motivated to arbitrarily incorporate the cardboard density of Usui into Raichman. The Examiner disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). One of ordinary skill in the art would appreciate that the density of the protective cardboard of Usui would be applicable to the cardboard frame of Raichman and would have found it obvious to include to achieve predictable results.
Applicant argues the Office Action has not established how the "changing the basis weight, sheet density or casting thickness of the sheet" to selectively control aerosol and flavor generation of Counts is applicable to the central portion of Raichman which reduces heat loss from the capsule to the surrounding area and heating of the surrounding area during the vaporization process. Raichman specifically teaches a tobacco frame [0060]. This tobacco would be involved in aerosol generation. Counts recognizes that density is a result-effective variable for a tobacco sheet involved in aerosol generation, establishing a prima facie case of obviousness. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. Applicant has not shown the criticality of the claimed range.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 6-12, and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Batista (US 2017/0164657).
Regarding claim 1, Batista [Fig. 4A-4B] teaches a capsule for an aerosol-generating device, comprising: a first heater 426; a second heater 427; and a frame (combination of intermediate layer 423 and substrate 424) sandwiched between the first heater and the second heater, the frame configured as an underlying support structure for the capsule [0104-0105]. The frame is in a form of a multi-layer structure [0021, 0022].
Regarding claims 2-3, Batista teaches at least one of the first heater or the second heater is in a form of a mesh or perforated foil [0040, 0106, 0107].
Regarding claim 6, Batista teaches the frame includes tobacco [0026], which contains nicotine.
Regarding claims 7-10, Batista teaches the frame defines a through-hole cavity 434, an aerosol-forming substrate in the cavity of the frame, the aerosol-forming substrate configured to produce an aerosol when heated by at least one of the first planar heater or the second planar heater, the aerosol-forming substrate includes a fibrous material configured to release a compound as part of the aerosol, the substrate comprising tobacco fibrous material [0026, 0027, 0105].
Regarding claim 11, as Batista teaches PEEK [0023] corresponding to the instant specification [0032-0033 of published application 2022/0030944], the frame is interpreted to be non-conductive and electrically isolates the first planar heater and the second planar heater as claimed.
Regarding claim 12, Batista teaches the frame is in a form of a multi-layer structure that includes different layers configured to impart distinct flavors [0021, 0022, 0029].
Regarding claims 14-17, Batista teaches the substrate carrier formed of natural cellulose fibers in an elongate rectangular planar shape, i.e. paperboard of consolidated fibers, or tobacco fibers in a form of a tobacco sheet [0026, 0027, 0030]
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Batista as applied to claim 1 above, and further in view of Davidson (US 2017/0095624).
Batista does not specify a frame thickness. However, a frame thickness of 1 mm is taught in the drug dose cartridge of Davidson [0118]. As this is a conventional frame thickness known in the art, it would have been obvious to one of ordinary skill in the art to apply to the frame of Batista to achieve predictable results, e.g. supporting the heaters.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Batista optionally further in view of Litten (US 2017/0347711).
Although Batista does not specifically teach a third heater within the multi-layer structure of the frame, this limitation is interpreted as a duplication of parts. It has been held that mere duplication of parts has no patentable significance unless anew and unexpected result is produced, in re Harza, 274 F.2d 669, 124 LISPO 378 (COPA 1960}. Alternatively, Litten teaches a capsule for an aerosol generating device comprising two layers 421/422 of an aerosol-forming substrate and a heater 410 within the multi-layer structure to achieve progressive heating progressive generation of aerosol [Fig. 15; 0138, 0145]. It would have been obvious to one of ordinary skill in the art to modify the capsule of Batista such that the base layer/substrate is replaced with two base layer/substrate layers and a heater (third heater] within the multi-layer structure to achieve progressive heating progressive generation of aerosol.
Claims 1-3, 6-12, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Raichman (US 2018/0104214) in view of Yamada (US 2020/0120981).
Regarding claims 1, 18, and 20, Raichman [Fig. 4] teaches a capsule for an aerosol-generating device, comprising: a first heater 60; a second heater 60; and a frame 31 sandwiched between the first heater and the second heater, the frame configured as an underlying support structure for the capsule [0060]. The frame comprises tobacco and plant material [0059-0060]. Yamada does not teach the frame is in a form of a multi-layer structure. Yamada teaches a flavor generating article comprising an aerosol generating or tobacco component is in a form of a multi-sheet (layer) structure comprising three or more layers (members), each layer having different compositions or physical properties [0058]. It would have been obvious to one of ordinary skill in the art to modify the capsule of Raichman such that the frame comprises three layers (members), wherein each member is different, to achieve the predictable result of producing an aerosol with the combination of properties from the different layers.
Regarding claims 2-3, Raichman teaches at least one of the first planar heater or the second planar heater is in a form of a mesh or perforated foil [0060, 0066].
Regarding claims 6 and 14-17, Raichman teaches the consolidated fibers are tobacco (comprising nicotine) fibers in the form of a tobacco sheet [0060, Fig. 4], or formed of cardboard [0060], i.e. in the form of paperboard.
Regarding claims 7-10, Raichman teaches the frame defines a cavity through-hole, an aerosol-forming substrate 32 in the cavity of the frame, the aerosol-forming substrate configured to produce an aerosol when heated by at least one of the first planar heater or the second planar heater, the aerosol-forming substrate includes a fibrous material configured to release a compound as part of the aerosol [Fig. 4; 0058, 0059, 0063].
Regarding claim 11, Raichman teaches the frame is non-conductive and electrically isolates the first planar heater and the second planar heater [0060].
Regarding claim 12, Raichman suggests using different types of plant materials [0069], i.e. in modified Raichman different layers configured to impart distinct flavors.
Regarding claim 19, Raichman teaches the frame comprises tobacco (aerosol-forming substrate) and plant material (aerosol-forming substrate), i.e. formed entirely of an aerosol-forming substrate [0059-0061]. In providing three frame members in view of Yamada as applied to claims 1 and 18 above, each frame member is formed entirely of an aerosol-forming substrate.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Raichman and Yamada as applied to claim 1 above, and further in view of Usui (US 2002/0060815).
Raichman is silent to a frame density. As Raichman teaches using cardboard [0060], one of ordinary skill in the art would have looked to the conventional densities used for cardboard. Usui teaches cardboard with a density of 0.72 g/cm3. As this is a conventional cardboard density, one of ordinary skill in the art would have found it obvious to use this density for the cardboard of Raichman to achieve predictable results.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Raichman and Yamada as applied to claim 1 above, and further in view of Counts (US 5,369,723).
Raichman does not specify a frame density. Counts teaches a selectively controlling aerosol and flavor generation of a tobacco sheet by changing the density [col. 7, l. 61-67]. As Raichman teaches a tobacco frame [0060] and density is recognized as a result-effective variable, it would have been obvious to one of ordinary skill in the art to optimize the density of frame of modified Raichman as a matter of routine experimentation to achieve the desired effects.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Raichman and Yamada as applied to claim 1 above, and further in view of Davidson.
Raichman does not specify a frame thickness. However, a frame thickness of 1 mm is taught in the drug dose cartridge of Davidson [0118]. As this is a conventional frame thickness known in the art, it would have been obvious to one of ordinary skill in the art to apply to the frame of Raichman to achieve predictable results, e.g. supporting the heaters.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Raichman and Yamada as applied to claim 12 above, and further in view of Litten (US 2017/0347711).
Modified Raichman does not teach a third heater within the multi-layer structure of the frame. Litten teaches a capsule for an aerosol generating device comprising two layers 421/422 of an aerosol-forming substrate and a heater 410 within the multi-layer structure to achieve progressive heating progressive generation of aerosol [Fig. 15; 0138, 0145]. It would have been obvious to one of ordinary skill in the art to modify the capsule of modified Raichman such that the base layer/substrate is replaced with two base layer/substrate layers and a heater (third heater] within the multi-layer structure to achieve progressive heating progressive generation of aerosol.
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.
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/ERIC YAARY/Examiner, Art Unit 1755