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 the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-32 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, claims 1, 18, 30, and 32 have been amended to include “the hollow center free of any material or structure before insertion into the aerosol-generating device”. The originally filed application does not provide support for the hollow center being free of any material or structure before insertion into the aerosol-generating device in that air is necessarily present in the hollow center wherein air is considered a material that has a structure.
Claims 1-32 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, claims 1, 18, 30, and 32 have been amended to include “the hollow center free of any material or structure before insertion into the aerosol-generating device”. A material free and structure free hollow center indicates that the hollow center is under vacuum – void of air pressure. Such a rod would not function as intended in that air flow through the rod would not be possible. The specification does not provide a description of how to use the compressible rod under such a condition (void of air pressure) – either by explanation, drawings, or working examples. One skilled in that art, in light of the instant disclosure, would not know how to make and use the compressible rod without undue experimentation.
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 1-2, 14-20, and 28-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reevell (GB 2534210 A).
Claims 1-2, 14-20, and 28-32, Reevell teaches a compressible rod 2 for insertion into an aerosol-generating device (abstract; pg23 L26; pg26 L10-11), the compressible rod 2 comprising: a first layer 10 including a first material including shredded tobacco (thermally conductive also) which is fibrous; and a wrapper 8 (having an aluminum metallic foil portion; and a tipping paper) circumscribing the first layer 10 (pg7 L21-23; pg24 L5-10), the compressible rod 2 having a circular cross-sectional shape (Fig1) and a hollow center (when pierced as in Figure 9 – and at areas around elements 52 and 54 as in Figure 13) (pg4 L10-12; pg15 L18 to pg16 L26; pg26 L30-36; pg28 L32 to pg29 L3), the compressible rod 2 configured to be compressed (pg24 L5-10), such that the compressible rod 2 has a non-circular cross-sectional shape after compression (Fig8). The compressible rod 2 includes a filter at an end without a hollow portion (pg23 L26-33). Reevell teaches an aerosol-generating device having an outer housing defining a cavity to receive the compressible rod 2 – and a heater with a blade heater (pg22 L24-25; pg24 L12 to pg25 L34; Fig5). Reevell teaches a power source, for heating, which is an electric battery – which has electrodes (pg20 L21-26).
Claim Rejections - 35 USC § 103
Claims 3-13 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell, as applied to claims 1-2, 14-20, and 28-32 above, and further in view of Hopkins (US 1,796,522).
Claims 3-13 and 21-27, Reevell does not teach a second layer (and third) layer of tobacco fibers between under the wrapper 8.
Hopkins teach a tobacco cigarette, with a wrapper, having area with two layers of tobacco fiber wherein one layer is stronger than the other layer which helps yield a uniform quality – wherein the layers are spaced along the cigarette providing at least three layers (pg1 c1 L18; pg2 L16-32).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Reevell a second layer (and third) of tobacco fibers under the wrapper 8 (areas with two layers of tobacco fibers where one layer is stronger than the other layer – wherein the layers are spaced along the cigarette providing at least three layers) in that Hopkins teaches that such helps yield a uniform quality.
Reevell teaches a flavor material of encapsulated flavor beads (pg29 L22 to pg30 L19; Figs14-15). In Reevell modified each layer of tobacco has a different permeability and a different density given that the strength of each layer varies. In Reevell modified tobacco is present in each layer.
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 LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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