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 1-9 and 12) instead of Group II (Claims 10-11) in the reply filed on 5/28/2026 is acknowledged. The traversal is on the ground(s) that Group I and II each require an article with a substrate and a susceptor element, which Applicant argues is a special technical feature. This is not found persuasive because articles with a substrate and susceptor element are ubiquitous and exceedingly conventional throughout the art. Groups I and II do not share any of the unique limitations that define that Applicant’s invention, and the only shared features of a general article with a substrate and susceptor is not a special technical feature. Mironov (WO2020025562A1, citing to US2021/0161208A1) for example shows in Fig. 12 that the segments “210” are used to form the individual articles [0108] wherein there is contained both a susceptor “220” and substrate “231” [0107]. Applicant further argues that Group II is the product formed from the process for manufacturing the product of Group I. However, the claims as written do not reflect this and do not result in unity in invention between the groups. For example, the method as described in Claim 1 does not in any way require the article to have the end face arrangements which are detailed in claim 10, and this arrangement would not necessarily be the result when the method of Claim 1 is utilized. And similarly for Claim 10, it is lacking each of the specific method steps such that the product of claim 10 may be formed from any other type of method and is not necessarily the result of the method listed. And further, as stated above, there is no special technical feature between the claims that overcomes the prior art such that there is a lack of unity of invention, such that Applicant’s arguments are found wholly unconvincing.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/28/2026.
Applicant's election with traverse of Group III (Claims 1-5) in the reply filed on 5/28/2026 is acknowledged. The traversal is on the ground(s) that Mironov A) does not disclose “partially cutting” a continuous band of susceptor material, B) does not disclose the two-step cutting sequence, C) that Mironov discloses an opposite sequence of operations, and D) there is a typographical error in the reference number. This is not found persuasive.
The Examiner strongly disagrees with point A raised by Applicant. The Applicant’s own specification pg. 5 lines 26-29 and claim 4 detail that step B of partially cutting the continuous band of susceptor material may comprise the step of “producing a plurality of recesses in the band”. The instant specification specifically details “recesses” as reading upon “partially cutting”. Where Mironov provides these recessed portions in the susceptor band [see Figs. 10-11, 14-15 for example], these would clearly be reasonably be considered to be “partially cutting” under the broadest reasonable interpretation when read in light of the specification. And further, the shape and structure of these recesses are identical to the shape/structure as detailed in the instant application (compare Fig. 10-11 of Mironov with Fig. 5 of instant application, for example), such that these recesses are clearly partial cuts.
Regarding point B, the Examiner notes that the Applicant is misconstruing the claims in question with the shared technical features that are shared between the claims. The requirement for unity of invention compares the shared technical features between the claims in question. In this case, Claim 1 is the only claim that specifies that “subsequently the aerosol forming substrate is positioned around the individual susceptor band…”, such that the common technical features involves the steps of pre-cutting the susceptor, cutting the susceptor, and have substrate around the susceptor bands, but it not being required to have the substrate sections be cut by a separate cutting (this appears to be present in dependent claim 3 and thus would implicitly not be a limitation included in claim 1, for example). Mironov Fig. 10 shows the initial precutting/recess forming in the susceptor, and Fig. 12 shows the complete cut at these precut positions to form the individual elements. And further, Mironov Figs. 14-17 show a precutting, followed by full cutting of the susceptor, and followed by the substrate being positioned around the individual susceptor, such that Mironov further makes this obvious. As such, these arguments are not found convincing. See rejections below for further details.
Regarding point C, the Examiner notes that the Applicant is misconstruing the claims in question with the shared technical features that are shared between the claims. The requirement for unity of invention compares the shared technical features between the claims in question in each case. In this case, claim 1 is the only claim that specifies that “subsequently the aerosol forming substrate is positioned around the individual susceptor band…”. Claims 6 and 12 do not detail when the substrate is positioned around the susceptor band as this limitation of “subsequently” is not included in the claims. See MPEP 2111.01 II. “…it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order”. As such, this is not a shared technical feature between the independent claims and it is not necessary to address (although it is noted that this aspect is obvious, see rejections below for further details).
The Examiner acknowledges this inadvertent typographical error, however this bears no weight on overcoming the restriction requirement, as the reference applied is correctly acknowledged by Applicant.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-9 and 12 are 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 5/28/2026.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/16/2023 and 1/14/2025 have been considered by the Examiner.
Drawings
Figure 1A should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. The instant specification pg. 20 lines 20-28 indicates that this Figure describes the prior art wherein the substrate is cut without precuts. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Fig. 2 is missing the label “21” for the precut device as described on pg. 20 lines 35-36 in the instant specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 line 4 should read “…thereby producing the individual substrate sections”, because this was already introduced in claim 1.
Claim 4 line 1 should read “…wherein the partially cutting” because this was already introduced in claim 1 and to make it clear that the same step as previously indicated is being referred to.
Appropriate correction is required.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sanna (US2020/0114097A1) in view of Mironov (WO2020025562A1 of record, citing to English Equivalent US2021/0161208A1).
Regarding claim 1, Sanna teaches a method for producing individual aerosol-generating articles (title, [0001]) each comprising an individual substrate section (the individual substrate sections are considered to be the portions of the tobacco substrate in each article), the substrate section comprising aerosol-forming substrate with a susceptor element (the article may include an aerosol-forming substrate which may be in the form of a sheet of homogenized tobacco material, and there is included a susceptor so as to heat the aerosol-forming substrate [0013-0029]), the method comprising the steps of:
A) providing a continuous band of susceptor material (as in Fig. 5, there is provided a strip of susceptor 10 [0087-0088]).
Sanna teaches that the continuous band of susceptor material has a susceptor cutting unit “80” which is positioned upstream of the rod shaping device “20”, which cuts the susceptor strip into segments “81” [0088, Fig. 5]. The individual susceptor pieces are then transported and continue with the treatment to be covered by the homogenized tobacco sheets which are considered to be the substrate [0087-0088, Fig. 5]. Sanna does not explicitly state that there is first a partial cut of the continuous band of susceptor material before having a complete cut at the predetermined precut positions. However, it is known in the art that utilizing a pre-cut procedure improves the consistency of the finished aerosol-generating article. Mironov, for example, teaches an aerosol generating article that includes a susceptor and an aerosol-generating substrate [abstract, Fig. 1]. The article may be made using the method which begins with a continuous susceptor profile [Fig. 9, Fig. 13], wherein there are formed lateral recesses “226”/”826” which are formed at periodically spaced position “227”/”827” along its length [0107, 0109 Fig. 10, Fig. 14]. These periodically spaced narrower portions caused by the recesses cause a reduction of the mechanical stiffness of the susceptor profile which makes the cutting of the narrow portions much less challenging and requires less mechanical forces, such that they have enhanced positional accuracy and stability [0107-0109].
One of ordinary skill in the art would have found it obvious to modify the method of Sanna so as to have a step of partially cutting the band of susceptor material at predetermined positions, before having the step of completely cutting the susceptor material, as suggested by Mironov. One would have been motivated so as to improve the positional accuracy and stability of the susceptor in the finished article [Mironov, 0107-0109]. It being noted that the instant specification pg. 5 lines 26-29 and claim 4 detail that step B of partially cutting the continuous band of susceptor material may comprise the step of “producing a plurality of recesses in the band”, such that the method/articles of Sanna in view of Mironov would clearly read upon this limitation.
Modified Sanna further makes obvious the susceptor partially cut strip is then completely cut at the predetermined precut position thus producing individual susceptor elements (as noted above, it would be obvious to include the step of having the band of susceptor material be precut via recesses at predetermined lengths according to Mironov. And as in Sanna Fig. 5 and in Mironov, the susceptor would then be fully cut via the susceptor cutting unit “80” into the individual segments “81”),
And wherein subsequently the aerosol-forming substrate is positioned around the individual susceptor bands, thereby producing a continuous substrate section including individual susceptor elements (as in Fig. 5 of Sanna, the individual susceptor segments “81” then are transported to the rod forming device, wherein the tobacco sheets are formed around the susceptor and wherein the tobacco sheets are considered the aerosol-forming substrate [0087-0088, 0035-0036]. The outlet of the rod shaping device “20” would be considered the continuous substrate section, as it would contain the uncut substrate of “2”/”3” with the individual susceptor elements “81” formed within it [Fig. 5, 0087-0088]).
Regarding claim 2, modified Sanna makes obvious at least two precut positions are formed in method step B) (Sanna as modified by Mironov would have the precuts located at each of the locations on the susceptor band wherein there would ultimately be a cut to form the individual susceptor elements “81” [Fig. 5]. As such, there would clearly be well over two precut positions formed [Fig. 5]), and wherein the positions of the precuts on the continuous band of susceptor are set in such a way that one individual substrate section is located between adjacent precut positions (as detailed previously, as the tobacco sheets “2”/”3” would be formed continuously on the susceptor individual elements “81”, there would clearly be formed substrate sections thereon such that “one individual” substrate section may be considered to simply be the substrate section between adjacent precut positions. And further, Sanna suggests that the cutting unit “50” downstream of “20” is synchronized to cut the article in locations where no susceptor “81” is present [0092], such that there would be formed substrate sections between adjacent precuts).
Regarding claim 3, modified Sanna makes obvious during method step C) the individual susceptor elements in the continuous substrate section are each spaced apart by gaps (see Fig. 5 of Sanna and 0087-0088, wherein the individual susceptor elements “81” are clearly spaced apart by gaps in between each, and wherein the substrate “2”/”3” covering the susceptor elements “81” would be covering these gaps), and wherein subsequently the continuous substrate section is cut between the gaps of the individual susceptor bands thereby producing individual substrate sections (Sanna suggests that the cutting unit “50” downstream of “20” is synchronized to cut the article in locations where no susceptor “81” is present [0092], such that the cuts in the cutting unit “50” would be occurring in the gaps of the individual susceptors. The outlet of “50” would thus be individual substrate sections).
Regarding claim 4, modified Sanna makes obvious wherein the partially cutting in step B) comprises one or more of different types of cuts (Mironov suggests there are formed lateral recesses “226”/”826” which are formed at periodically spaced positions “227”/”827” along the susceptor length [0107, 0109 Fig. 10, Fig. 14]. These would clearly be considered at least “a plurality of recesses in the band”, and would also reasonably be considered either a “perforation” or an “incision” under the broadest reasonable interpretation thereof, as the instant specification does not delineate between what is considered to be a “perforation” and a “recess” in the band for example. Under the broadest reasonable interpretation of these terms, the recesses of Mironov would reasonably be considered a perforation or an incision as these are all described in analogous/synonymous terms to mean an indentation/reduction in thickness of the susceptor band at a specified location).
Regarding claim 5, modified Sanna makes obvious during method step B) flat regions on opposing edges of the continuous band of susceptor material are removed as partial cuts thereby creating a central linking part connecting different parts of the partially cut band of susceptor material (the instant specification says that Figs. 5 and Figs. 9A-9B are examples that have this type of structure [pgs. 22-23 of instant specification]. The structure of the lateral recesses of Sanna as modified by Mironov are substantially the same as what is shown and described in the instant specification, as there are recessed flat regions on opposite sides of the band that are removed as a consequence of the lateral “recesses”, and there is a thin central linking part that would connect different parts of the partially cut band [see Figs. 10-11, 14 of Mironov]. Such structure would be obvious to include for the person of ordinary skill in the art because it results in improved positional accuracy and stability in the cutting process [0107-0109]).
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Mironov (WO2020025562A1, citing to English Equivalent US2021/0161208A1) in view of Sanna (US2020/0114097A1).
Regarding claim 1, Mironov teaches a method for producing individual aerosol-generating articles [title, abstract] each comprising an individual substrate section (this would be considered to be the individual substrate that is located in the article in the finished article), the substrate section comprising aerosol-forming substrate with a susceptor element (as in Figs. 17 for example, the aerosol-forming substrate would be “830” and the susceptor would be “820”), the method comprising the method steps of:
A) providing a continuous band of susceptor material (as in Fig. 13, a continuous susceptor profile 825 may be provided),
B) partially cutting the continuous band of susceptor material at a predetermined precut position to produce a partially cut band of susceptor material (as in Fig. 14, the continuous profile may then have lateral recesses “826” introduced into the profile at periodically spaced positions “827” along its length so as to form narrower portions “829” [Fig. 14, 0109], wherein the band after the recesses are present is considered the partially cut band of susceptor material. It being noted that the instant specification pg. 5 lines 26-29 and claim 4 detail that step B of partially cutting the continuous band of susceptor material may comprise the step of “producing a plurality of recesses in the band”, such that the method of Mironov would clearly read upon this limitation of partially cutting),
C) producing the aerosol-generating articles employing the partially cut band of susceptor material, wherein the precut position separates individual aerosol-generating articles from each other, wherein during method step C) the partially cut band of susceptor is completely cut at the predetermined precut position thereby producing individual susceptor elements (subsequently to the step of having the lateral recesses, the susceptor profile “828” is cut at the positions of the narrower poritions “829” so as to form individual susceptor elements “820” having a length corresponding to the period length P between the narrower portions “829” [Fig. 15, 0109]. This susceptor elements corresponds to the susceptor element that is present in the finished article [0109, Figs. 1-2]).
After providing the susceptor elements “820”, Mironov further details that the substrate may be provided around the rod [0110, Fig. 16]. Mironov does not explicitly first provide a continuous substrate section including individual susceptor elements. However, this is a known alternative to the formation of aerosol-generating articles. Sanna details a method of producing an aerosol generating article, wherein Fig. 5 details a susceptor cutting unit “80” is present which cuts the susceptor into individual elements “81” [0088]. After the individual susceptor pieces are obtained, there is then formed a continuous substrate around the individual susceptors, wherein the tobacco sheets “2”/”3” are the continuous substrate [Fig. 5, 0087-0088]. After the tobacco rods are formed in the machine “20”, a cutting unit “50” downstream then cuts the continuous substrate into a plurality of components of the desired length [0086], wherein the cuts would be made at locations where no susceptor is present [0092].
One of ordinary skill in the art would have found it obvious to modify the method of Mironov so as to provide a continuous substrate web around the individual susceptor elements as suggested by Sanna. One would have been motivated so as to ensure that the susceptor is substantially evenly surrounded by the aerosol forming substrate so as to provide a consistent smoking experience [0035-0042]. And in this modification, this would be no more than a simple substitution of one known element (inserting a individual susceptor into an individual substrate segment) for another (that of a continuous substrate web formed around the individual susceptor elements which then subsequently have the substrate web cut into individual substrate sections) to obtain predictable results (that being the improved consistency and smoking performance listed above). See MPEP 2143 I. Providing this known alternative would have been well within the level of ordinary skill in the art.
When Mironov is in view of Sanna, method step C would have the individual susceptor elements subsequently be surrounded by a continuous web of substrate around the individual susceptor elements.
Regarding claim 2, modified Mironov makes obvious wherein at least two precut positions are formed in step B) (precuts would be located at each of the positions as in Fig. 14 of Mironov, ofwhich there are clearly at least 2), and wherein the positions of the precuts on the continuous band of susceptor are set in such a way that one individual substrate section is located between adjacent precut positions (as detailed previously, as the tobacco sheets “2”/”3” would be formed continuously on the precut/individual susceptor elements, there would clearly be formed substrate sections thereon such that “one individual” substrate section may be considered to simply be the substrate section between adjacent precut positions. And further, Sanna suggests that the cutting unit “50” downstream of “20” is synchronized to cut the article in locations where no susceptor “81” is present [0092], such that there would be formed substrate sections between adjacent precuts).
Regarding claim 3, modified Mironov makes obvious wherein during method step C) the individual susceptor elements in the continuous section are each spaced apart by gaps (see Fig. 15 of Mironov wherein after the complete cutting the individual susceptor elements are all separated by a gap. See also Fig. 5 of Sanna, wherein the individual susceptor elements “81” are clearly spaced apart by gaps in between each, and wherein the substrate “2”/”3” covering the susceptor elements “81” would be covering these gaps), and wherein subsequently the continuous substrate section is cut between the gaps of the individual susceptor bands thereby producing individual substrate sections (Sanna suggests that the cutting unit “50” downstream of “20” is synchronized to cut the article in locations where no susceptor “81” is present [0092], such that the cuts in the cutting unit “50” would be occurring in the gaps of the individual susceptors. The outlet of “50” would thus be individual substrate sections).
Regarding claim 4, modified Mironov makes obvious wherein the partially cutting in step B) comprises one or more of different types of cuts (Mironov suggests there are formed lateral recesses ”826” which are formed at periodically spaced positions ”827” along the susceptor length [0109 Fig. 14]. These would clearly be considered at least “a plurality of recesses in the band”, and would also reasonably be considered either a “perforation” or an “incision” under the broadest reasonable interpretation thereof, as the instant specification does not delineate between what is considered to be a “perforation” and a “recess” in the band for example. Under the broadest reasonable interpretation of these terms, the recesses of Mironov would reasonably be considered a perforation or an incision as these are all described in analogous/synonymous terms to mean an indentation/reduction in thickness of the susceptor band at a specified location).
Regarding claim 5, modified Mironov makes obvious during method step B) flat regions on opposing edges of the continuous band of susceptor material are removed as partial cuts thereby creating a central linking part connecting different parts of the partially cut band of susceptor material (the instant specification says that Figs. 5 and Figs. 9A-9B are examples that have this type of structure [pgs. 22-23 of instant specification]. The structure of the lateral recesses of Mironov are substantially the same as what is shown and described in the instant specification, as there are recessed flat regions on opposite sides of the band that are removed as a consequence of the lateral “recesses”, and there is a thin central linking part that would connect different parts of the partially cut band [see Figs. 10-11, 14 of Mironov]. Such structure would be obvious to include for the person of ordinary skill in the art because it results in improved positional accuracy and stability in the cutting process [0107-0109]).
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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