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, 3, 5-6, 9-13, 15-23, and 30 are pending and subject to this Office Action. Claim 1, 3, 5-6, 9-13, and 15-23 have been amended. Claim 30 has been added. Claims 2 and 4 have been cancelled.
Response to Arguments
Applicant’s arguments, see pages 6-9, filed 01 July 2026, with respect to the rejection(s) of claims 1-3, 9, 11-13, 15-20 and 22 under 35 USC § 102 (a)(1) have been fully considered and are not persuasive. Claim 1 has been amended to include features from previously presented claims 2 and 4 which were previously rejected over Garcia Garcia, in view of Mironov. The prior art of record is considered to make obvious amended claim 1 and a modified rejection based on the amendments is made below.
Applicants argues, page 7, that the teachings of Garcia Garcia does not comprise one or more discrete portions of aerosol generating material but rather that the prior art teaches sheets of material that are completely enclosed in a “continuous sandwich” of layers of the consumable.
The Examiner acknowledges that the prior art of Garcia Garcia teaches various processes of manufacture of the aerosol generating article that uses a continuous susceptor that is sandwiched between two sheets of aerosol generating material. [0029-0037] However, the cited “continuous sandwich” is a step for storage of a partially completed product on a bobin before the cutting step has occurred not the product for use. A person having ordinary skill would recognize a continuous sheet of aerosol generating material would not feasible be used in an aerosol generating device. It is noted that the prior art teaches for all manufacturing processes that the material is cut via a cutting tool. ([0029], [0032], claim 14)
However, the Examiner acknowledges that Garcia Garcia does not explicitly teach discrete portions of aerosol generating material. Mironov is used to modify the teachings of Garcia Garcia to teach the use of discrete portions of aerosol generating material located on and in contact with a support layer. ([0016], [0023]) Mironov teaches this advantageously allows the aerosol generating article to comprise two or more different aerosol forming substrates [0023]
Applicant argues, page 8, a person having ordinary skill would not have been motivated to combine the teachings of Garcia Garcia with the teachings of Mironov.
The Examiner respectfully disagrees. Garcia Garcia teaches an aerosol generating material attaches to a susceptor/support where the aerosol generating material is attached (glued) to the support structure. Mironov teaches a similar product but teaches the aerosol generating material can be in discrete portions instead of a single sheet of material that covers the support. Mironov teaches this is advantageous as it allows for multiple aerosol forming substrates to be used in conjunction with the single support/susceptor.
Applicant argues, page 8-9, that Kabirat does not teach a blind end and that one of ordinary skill would not have considered or combined the teachings of Garcia Gargia and Kabirat.
The Examiner notes that Garcia Garcia teaches a perforation that extends through the aerosol generating sheet but not through the support/susceptor material; specifically teaching “The perforations advantageously facilitate air flow through the aerosol generating article during use in an aerosol generating device and may advantageously improve heating efficiency due to the skin effect The perforations allow the porosity, and hence the air permeability, of the resultant aerosol generating article to be carefully controlled and optimised.” [0017] As such a person having ordinary skill would look to other prior art that had an aerosol generating material supported on a support and included perforations in the aerosol generating material for ways to optimize the porosity and permeability of the article while also improving heating efficiency. In view of these teachings Kabirat would certainly be considered as Kabirat teaches these blind perforations, perforations of the aerosol generating material and not the support material (p12 ln 17-23), allow generated vapor to be transferred away from the heating element (susceptor) which aids in preventing the formation of a gap between the susceptor and the aerosol generating material. (p12 ln 10-15)
The following is a modified rejection based on amendments made to the claims.
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, 3, 5-6, 9, 11-13, 15-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia Garcia, et al (US20200359676A1), in view of Mironov, et al (US20170318862A1).
Regarding claim 1, Gracia Garcia teaches a sheet type aerosol generating article comprising:
at least two aerosol generating sheets each comprising aerosol generating material; and
an inductively heatable susceptor;
wherein the inductively heatable susceptor is positioned between the aerosol generating sheets and each of the aerosol generating sheets has an exposed surface. [0005] The susceptor taught by Gracia Garcia is considered to read on the support of the instant claim.
Gracia Garcia teaches that the article, to include both the aerosol generating material and the susceptor (support) can be perforated. ([0017], [0052], [0107])
Further Garcia Garcia teaches that the perforation of the substrate and the susceptor/ support would occur after the aerosol generating material is attached to the susceptor support material. [0107] The perforations in the aerosol generating article would form discrete portions of aerosol generating material that is located between the openings that are the perforations. (Fig.3) As such, when the aerosol generating substrate is completed the susceptor /support material would be solid and impermeable beneath the discrete portions of the aerosol generating material.
However, Garcia Garcia does not explicitly teach the aerosol generating material would be a discrete portions of material on the susceptor/ support.
Mironov, directed to the design of aerosol generating article with a support, teaches an aerosol generating article that is comprised of a base layer (support) and an aerosol generating material that can be attached to the surface of the base layer.([0005], [0016]) Mironov teaches that the aerosol forming substrate can comprise a plurality of aerosol-forming substrates arranged separately on the base layer. [0023]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia by having a substrate with discrete portions of aerosol generating material on the susceptor material as taught by Mironov because both Garcia Garcia and Mironov are directed to heated aerosol generating articles, Mironov teaches this allows the aerosol generating article to comprise two or more different aerosol forming substrates [0023], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 3, Gracia Garcia teaches that the aerosol generating sheets may be adhered to the inductively heatable susceptor by an adhesive.[0013] The aerosol generating material is disclosed to be adhered to the susceptor/ support on both the top, first surface, and the bottom, second surface, of the susceptor sheet. (Fig 1)
Regarding claim 5, as discussed in claim 1, a modified Garcia Garcia teaches both discrete portions of aerosol generating material and aerosol generating material on both sides of the susceptor since a person having ordinary skill would consider applying the teachings of Mironov to both sides of the aerosol generating materials and having the aerosol generating materials on the same portions of the susceptor.
Regarding claim 6, a modified Garcia Garcia teaches that the discrete portions of the aerosol generating material would have one aerosol generating material is on one side of the susceptor/support material and a second aerosol generating material is on the opposite side of the susceptor/support material. This would allow the perforations to extend through both the first and the second aerosol generating material as well as the susceptor/ support material.
Regarding claim 9, a modified Garcia Garcia teaches the perforations extend through the aerosol generating material to facilitate airflow through the aerosol generating article during use. [0017] The use of a perforation that allows air to flow into and subsequently through the article is considered to read on the opening through the aerosol generating material of the consumable.
Regarding claim 11, as discussed in claim 1, Garcia teaches that the perforation in the aerosol generating article can extend through the aerosol generating sheet and the susceptor/support. ([0017], [0052], [0107])
Regarding claim 12, Garcia Garcia teaches that the perforation extend fully through the aerosol generating material [0017] and as such is considered to read on the limitation that the perforations extend at least partially through an aerosol-generating material.
Regarding claim 13, Garcia Garcia teaches that the support/susceptor can comprise a metal foil. [0079]
Regarding claim 15, Garcia Garcia provides an example of the metal foil being aluminium foil. [0079]
Regarding claim 16, Garcia Garcia teaches that the aerosol generating material is attached to a susceptor/support that is used to heat the aerosol generating article. [0003]
Regarding claim 17, a modified Garcia Garcia teaches that the susceptor may comprise a plurality of strips of susceptor material. [0019] The prior art teaches that the inductively heatable susceptor can comprise a plurality of strips positioned in an adhesive layer between the first and second aerosol generating sheets. ([0081], Fig 4)
Regarding claims 18 and 19, a modified Garcia Garcia teaches that the perforation of the substrate and the susceptor/ support would occur after the aerosol generating material is attached to the susceptor support material. [0107] The perforations in the aerosol generating article would form discrete portions of aerosol generating material that is located between the openings that are the perforations.(Fig.3) As such, when the aerosol generating substrate is completed the susceptor /support material would be solid and impermeable beneath the discrete portions of the aerosol generating material.
Regarding claim 20, as discussed in claim 1 and 13, Garcia Garcia teaches the perforations extend through the aerosol generating material and the impermeable susceptor material. [0017] The use of perforations that extend through the aerosol generating material and the susceptor to facilitate airflow through the aerosol generating article during use [0017] is considered to read on the open end extending through the susceptor/ impermeable material.
Claims 10, 21, 23, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Garcia Garcia, et al (US20200359676A1) in view of Mironov, et al (US20170318862A1) as applied to claims 1 and 13 above, and further in view of Kabirat (WO2021105473A1).
Regarding claim 10, Garcia Garcia in view of Mironov teaches that the perforation/ opening that extends through the article and fails to teach that the perforation would only extend through the aerosol generating material
Kabirat, directed to the design of an article for use in a non-combustible aerosol provision system, teaches an aerosol generating article that is comprised of a support element with a cavity that holds an aerosol generating material. (p12 ln 1-3, Fig 7) The prior art teaches that the aerosol generating material may include one or more perforations that do not extend through the support material and only through the aerosol generating material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia and Mironov by having the perforations that extend only through the aerosol generating material as taught by Kabirat because Garcia Garcia, Mironov, and Kabirat are directed to aerosol generating articles for heating, Kabirat teaches contact between the support material and the aerosol generating material can improve heating efficiency (p12 ln 26-28), and this involves the use of known technique to improve similar products in the same way.
Regarding claim 21, a modified Garcia Garcia teaches that the perforation/ opening that extends through the article and fails to teach that the perforation would only extend through the aerosol generating material
Kabirat, directed to the design of an article for use in a non-combustible aerosol provision system, teaches an aerosol generating article that is comprised of a support element with a cavity that holds an aerosol generating material. (p12 ln 1-3, Fig 7) The prior art teaches that the aerosol generating material may include one or more perforations that do not extend through the support material and only through the aerosol generating material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia and Mironov by having the perforations that extend only through the aerosol generating material as taught by Kabirat because Garcia Garcia, Mironov, and Kabirat are directed to aerosol generating articles for heating, Kabirat teaches contact between the support material and the aerosol generating material can improve heating efficiency (p12 ln 26-28), and this involves the use of known technique to improve similar products in the same way.
Regarding claim 23, Garcia Garcia teaches that the perforations are used to control and optimize the air permeability of the aerosol generating article. [0017]
Garcia Garcia and Mironov are silent with respect to the positions of one or more perforations being determined by the position of the aerosol generating material.
Kabirat teaches the perforations maybe of any appropriate size and number, advantageously disposed substantially centrally on the portion(s) of amorphous solid material, or may comprise a plurality of perforations disposed in an array across the portion(s) of amorphous solid material. Kabirat teaches that the location of the perforation can be taken into account so that the perforations are located in a desired position, such as the center of the aerosol generating material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia and Mironov by having the perforations located in a specific location based on the aerosol generating material as taught by Kabirat because Garcia Garcia, Mironov, and Kabirat are directed to aerosol generating articles for heating, Kabirat teaches this allows the aerosol generating material to remain in contact with the substrate improving heating (p12 ln 10-15 and ln 25-29), and this involves the use of known technique to improve similar products in the same way.
Regarding Independent Claim 30, Gracia Garcia teaches a sheet type aerosol generating article comprising:
at least two aerosol generating sheets each comprising aerosol generating material; and
an inductively heatable susceptor;
wherein the inductively heatable susceptor is positioned between the aerosol generating sheets and each of the aerosol generating sheets has an exposed surface. [0005] The susceptor taught by Gracia Garcia is considered to read on the support of the instant claim.
Gracia Garcia teaches that the article, to include both the aerosol generating material and the susceptor (support) can be perforated. ([0017], [0052], [0107])
Further Garcia Garcia teaches that the perforation of the substrate and the susceptor/ support would occur after the aerosol generating material is attached to the susceptor support material. [0107] The perforations in the aerosol generating article would form discrete portions of aerosol generating material that is located between the openings that are the perforations. (Fig.3) As such, when the aerosol generating substrate is completed the susceptor /support material would be solid and impermeable beneath the discrete portions of the aerosol generating material.
However, Garcia Garcia does not explicitly teach the aerosol generating material would be a discrete portions of material on the susceptor/ support.
Mironov, directed to the design of aerosol generating article with a support, teaches an aerosol generating article that is comprised of a base layer (support) and an aerosol generating material that can be attached to the surface of the base layer.([0005], [0016]) Mironov teaches that the aerosol forming substrate can comprise a plurality of aerosol-forming substrates arranged separately on the base layer. [0023]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia by having a substrate with discrete portions of aerosol generating material on the susceptor material as taught by Mironov because both Garcia Garcia and Mironov are directed to heated aerosol generating articles, Mironov teaches this allows the aerosol generating article to comprise two or more different aerosol forming substrates [0023], and this involves the use of known technique to improve similar products in the same way.
Garcia Garcia in view of Mironov teaches that the perforation/ opening that extends through the article and fails to teach that the perforation would only extend through the aerosol generating material
Kabirat, directed to the design of an article for use in a non-combustible aerosol provision system, teaches an aerosol generating article that is comprised of a support element with a cavity that holds an aerosol generating material. (p12 ln 1-3, Fig 7) The prior art teaches that the aerosol generating material may include one or more perforations that do not extend through the support material and only through the aerosol generating material.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Garcia Garcia and Mironov by having the perforations that extend only through the aerosol generating material as taught by Kabirat because Garcia Garcia, Mironov, and Kabirat are directed to aerosol generating articles for heating, Kabirat teaches contact between the support material and the aerosol generating material can improve heating efficiency (p12 ln 26-28), and this involves the use of known technique to improve similar products in the same way.
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 VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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