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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-8 and 10 in the reply filed on 3/27/2026 is acknowledged. The traversal is on the ground(s) that the cited references do not teach the amended limitations of the common technical feature. This is not found persuasive because, as stated below with respect to the interpretation of claim 1, the common technical feature does not require that air be completely excluded from entering the substrate and flavor carrier, but rather that there be some direct access for external air into the interior of the aerosol generating product through the sidewall through holes.
The requirement is still deemed proper and is therefore made FINAL. Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/27/2026.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it exceeds 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: There is no space between a numerical value and its associated units (page 3, line 21, page 4, lines 8, 9, page 8, lines 19, 20).
Appropriate correction is required.
Claim Objections
Claims 3 and 7 are objected to because of the following informalities: No space is present between a numerical value and its associated units. Appropriate correction is required.
Claims 5 and 6 are objected to because of the following informalities: The extraneous word “with” appears between “carrying” and “flavored.” Appropriate correction is required.
Claim 6 is objected to because of the following informalities: The phrase “moldable” appears without any verb. Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “such that when smoking, the external air does not flow through the aerosol-generating substrate and the flavor carrier, but directly enters into the interior of the aerosol-generating product through the sidewall through holes” (lines 20-23), which is considered to be a limitation regarding the intended use of the claimed aerosol-generating product. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required an aerosol-generating product having sidewall through holes through which external air could flow to directly reach the interior of the product.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, there is insufficient antecedent basis for the limitation “the external air” (line 21) in the claim. It is further unclear as to which external air is referred to by the limitation. The claim is therefore indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to any portion of external air.
There in insufficient antecedent basis for the limitation “the interior” (line 22) in the claim, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited an interior. Claims 2-8 and 10 are indefinite by dependence.
Regarding claim 7, the claim recites the limitations “the first heat supply body is preferably at a temperature of 200-800°C” and “the second heat supply body is preferably at a temperature of 30-500°C,” which are considered to be exemplary language. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Therefore, for the purposes of this Office action, the claim will be interpreted as if it did not further limit claim 1.
Regarding claim 10, there in insufficient antecedent basis for the limitations “the end away from the consumer’s mouth” (line 3), “the consumer’s mouth” (lines 3, 4), and “the end near the consumer’s mouth” (lines 3-4). No consumer is previously claimed, and there is no indication as to which end would be associated with a consumer’s mouth. The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if it did not further limit claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Courbat (WO 2021/001566) in view of Saygili (KR 2020-0031603, English language equivalent US 11,229,235 relied upon) and Lavanchy (WO 2021/044020).
Regarding claims 1, 7 and 10, Courbat discloses an aerosol generating device (figure 5, reference numeral 100) having a device cavity (figure 5, reference numeral 104) that receives an aerosol generating article (page 32, lines 24-31, figure 5, reference numeral 200), which is considered to meet the claim limitation of an aerosol product. The aerosol generating device has a power supply in the form of a rechargeable battery (page 32, lines 32-36, page 33, lines 1-3, figure 5, reference numeral 106), which is considered to meet the claim limitation of a power source, and is controlled by a controller (page 33, lines 4-10, figure 5, reference numeral 108), which is considered to meet the claim limitation of a control module. The device cavity contains an inductive heating arrangement (page 33, lines 4-10, figure 5, reference numeral 110), and the cavity is therefore considered to meet the claim limitation of a heating element. The inductive heating element has first and second inductive heating units that are arranged on side walls of the cavity (page 33, lines 25-34, figure 5, reference numerals 112, 114), which are considered to respectively meet the claim limitations of a first heat supply body and a second heat supply body. The aerosol generating article comprising a cellulose acetate filter at its proximal end (figure 5, reference 204), which is considered to meet the claim limitation of an aerosol filtering section, and an aerosol generating segment (page 34, lines 32-35, figure 5, reference numeral 210). The aerosol generating segment is split into a first aerosol forming substrate without flavoring (figure 5, reference numeral 212), which is considered to meet the claim limitation of an aerosol generating substrate, and a second aerosol forming substrate that contains flavorings (page 35, lines 4-20, figure 5, reference numeral 214), which is considered to meet the claim limitation of a flavor carrier. The proximal end of the article of Courbat is considered to meet the claim limitation of a rear end, and the distal end of Courbat is considered to be the front end. The article is received in the cavity of the device such that the first aerosol forming substrate aligns with the first susceptor, and the second aerosol forming substrate is aligned with the second susceptor (page 35, lines 30-36, page 36, lines 1-3). Courbat does not explicitly disclose (a) a hollow extraction cavity having a sidewall through hole and (b) a sealing element arranged at the open end of the cavity.
Regarding (a), Saygili teaches an aerosol generating system (abstract) having ventilation air inlets that provide communication between an exterior of the cartridge and a mixing chamber (column 1, lines 46-67, column 2, lines 1-9) so that a desired concentration of aerosol is provided to a user (column 1, lines 26-35). The mixing chamber is located immediately upstream of the downstream end (column 10, lines 10-14), which is considered to meet the claim limitation of a hollow aerosol extraction cavity. The air inlets are positioned so that they cannot be obstructed during use (column 10, lines 21-38). It is evident that air could flow directly from the outside through the air inlets and then into the mixing chamber since Saygili teaches that there is no obstruction around the air inlets (figure 1), which is considered to meet the claim limitation of external air directly entering the interior of the product without flowing through the substrate and flavor carrier.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the article of Courbat with the mixing chamber and ventilation air inlets of Saygili such that the ventilation air inlets are located beyond the end of the cavity of Courbat. One would have been motivated to do so since Saygili teaches that ventilating an aerosol generating system provides a desired aerosol concentration to a user by using air inlets that are not obstructed.
Regarding (b), Lavanchy teaches an aerosol generating device having a cavity that receives an aerosol generating article that has a second sealing element located at a downstream portion of the cavity (abstract). Lavanchy additionally teaches that the second sealing element prevents undesired hot air from reaching a user (page 2, lines 13-27).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Courbat with the second sealing element of Lavanchy. One would have been motivated to do so since Lavanchy teaches that the second sealing element prevents undesired hot air from reaching a user.
Regarding claim 2, Courbat discloses that the device has a device housing (page 32, lines 24-31, figure 5, reference numeral 102) that contains a power supply in the form of a rechargeable battery and a controller within it (page 32, lines 32-36, page 33, lines 1-3), which is considered to meet the claim limitation of a control module. The inductive heating arrangement is located in the device cavity (page 32, lines 32-36, page 33, lines 1-3, figure 5, reference numeral 104) and is communicated with the battery via the controller, which controls device operation (page 33, lines 4-10).
Regarding claim 3, modified Courbat teaches all the claim limitations as set forth above. Saygili additionally teaches that there is no obstruction around the air inlets blocking access to the device interior (figure 1). Modified Courbat does not explicitly teach a diameter of the air inlets.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the air inlets have the claimed diameter. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 4, Courbat discloses that the aerosol forming substrate comprises tobacco (page 25, lines 29-36, page 36, lines 1-2).
Regarding claim 5, Courbat discloses that the aerosol forming substrate comprises flavorants (page 26, lines 3-15), which is considered to meet the claim limitation of carrying.
Regarding claim 8, Saygili teaches an aerosol generating system (abstract) having ventilation air inlets that provide communication between an exterior of the cartridge and a mixing chamber (column 1, lines 46-67, column 2, lines 1-9), indicating that there are multiple air inlets.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Courbat (WO 2021/001566) in view of Saygili (KR 10-2020-0031603, English language equivalent US 11,229,235 relied upon) and Lavanchy (WO 2021/044020) as applied to claim 1 above, and further in view of Murray (WO 2021/037694).
Regarding claim 6, modified Courbat teaches all the claim limitations as set forth above. Courbat additionally discloses that the aerosol forming substrate comprises flavorants (page 26, lines 3-15), which is considered to meet the claim limitation of carrying. All materials are either organic or inorganic, so any material of the substrate is considered to meet the claim limitation of an organic or inorganic material. The aerosol forming substrate is a crimped sheet (page 25, lines 29-36, page 26, lines 1-2), and is considered to be heat resistant since it does not disintegrate when the heater is activated. Modified Courbat does not explicitly teach the substrate being moldable and porous.
Murray teaches a heat not burn consumable having an aerosol forming substrate (abstract) that is made from a moldable porous freeze dried mixture comprising a plant material (page 31, fifth paragraph) that is freeze dried to remove all moisture from the mixture and form a self sustaining body (page 32, eleventh paragraph, page 33, first paragraph) that has a desired cross sectional shape (page 32, ninth paragraph) and allows air to flow through it to entrain the substrate components (page 31, ninth paragraph).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the substrate of Murray as the substrate of modified Courbat. One would have been motivated to do so since Murray teaches a substrate that allows air to flow through it to entrain the substrate components.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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