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, 12-13, 17 and 19, in the reply filed on 5/12/2026 is acknowledged. The traversal is on the ground(s) that (a) claim 30 requires all the limitations of the elected invention and (b) that Mironov does not disclose all the common technical features of applicant’s claims. This is not found persuasive.
Regarding (a), claim 30 is a product claim. Therefore, even though the claim refers back to claim 1, they are not required by claim 30. See MPEP § 2113 I. Furthermore, claim 30 is not a proper dependent claim since the product can be made by a method other than that recited in the base method claim, and thus, does not include the limitations of the base claim. See MPEP § 608.01(n) III.
Regarding (b), since some of the claims are product claims that merely recite a process of making the claimed product, the broadest common feature is only a product-not a method. Applicant’s arguments about Mironov allegedly not disclosing the claimed method are therefore irrelevant.
The requirement is still deemed proper and is therefore made FINAL. Claims 21-23, 25, 27 and 29-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/12/2026.
Drawings
The drawings are objected to because figure 1 and 2 do not use the abbreviation “FIG.” as required by 37 CFR 1.84, and because a smudged reference numeral appears in the left/lower portion of figure 5. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “3” and “15” have both been used to designate a rod (figures 1, 2, 4). Reference characters “25” and “30” have been both used to designate a sheet (figures 5, 7, 8). Reference characters "42 " and "71" have both been used to designate a feeding funnel (figures 5, 7, 8). Reference characters “64” and “65” have been both been used to designate a roller (figure 8). 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.
Specification
The disclosure is objected to because of the following informalities: A space is missing between a comma and the word following it (page 9, lines 6, 7). Appropriate correction is required.
The use of the term Drambuie (page 9, line 34), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claim 8 is 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 8, the claim recites the limitation “feeding the at least one susceptor” but then goes on to recites “the susceptors.” It is unclear whether the claim requires multiple susceptors or a single susceptor, rendering the claim indefinite. For the purposes of this Office action, the claim will be interpreted as if it required multiple susceptors.
The claim recites the limitation “placing the susceptors equidistantly in the feed path of the aerosol-material between longitudinal edges of the aerosol-generating material.” It is unclear the susceptors must be equidistant from, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required two susceptors in any orientation.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 8, 12-13 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanna (US 2020/0107573).
Regarding claim 1, Sanna discloses a method for manufacturing inductively heatable aerosol forming rods [0001] in which a susceptor profile ([0081], figure 1, reference numeral 20) and substrate web (figure 1, reference numeral 30) are passed through a funnel ([0081], figure 1, reference numeral 71), which is considered to define a feed path. The substrate web is gathered around the susceptor profile to form a final rod shape [0084]. The continuous rod is cut into rod segments by a cutting device [0087].
Regarding claim 2, Sanna discloses a strip cutter that cuts the substrate lengthwise into two-sub webs [0066], which must be elongate since the length direction of the strip is elongate (figure 1).
Regarding claim 3, Sanna discloses that the strip cutter is located upstream of rod forming device [0066], the first stage of which is the funnel [0080], indicating that the substrate would be cut before it reaches the funnel.
Regarding claim 5, Sanna discloses that the substrate web is crimped [0033].
Regarding claim 6, Sanna discloses that the susceptor profile is unwound from a bobbin [0076].
Regarding claim 8, the funnel of Sanna is considered to meet the claim limitation of a nozzle since it converges towards its outlet (figure 1). Sanna discloses that the susceptor profile is fed into the funnel [0081].
Regarding claim 12, Sanna discloses that the rod of substrate web is wrapped [0063].
Regarding claim 13, Sanna discloses that the susceptor is in the form of a thread (figure 1).
Regarding claim 19, Sanna discloses that the substrate web is a tobacco web [0075].
Claims 1 and 7 are rejected under 35 U.S.C. 103(a)(1) as being anticipated by Prestia (US 2018/0352851).
Regarding claims 1 and 7, Prestia discloses a method for manufacturing inductively heatable tobacco rods in which a continuous susceptor is cut into individual susceptor segments before the aerosol forming tobacco substrate is converged to its final rod shape (abstract) so that susceptor can be inserted more easily and the final position of the susceptor segments is better defined [0006]. A continuous tobacco sheet is guided along a converging device and then gathered to form a rod [0051]. The tobacco rod is cut into tobacco plugs between the susceptor segments [0061], indicating that each rod has a susceptor.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sanna (US 2020/0107573).
Regarding claim 4, Sanna discloses all the claim limitations as set forth above. Sanna does not explicitly disclose a width of the strips.
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 strips have the claimed width. 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.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Prestia (US 2018/0352851) in view of Woodward (US 1,238,241).
Regarding claim 17, Prestia discloses all the claim limitations as set forth above. Prestia does not explicitly disclose the susceptor having a line of weakness.
Woodward teaches a machine that insures accurate cutting of a strip along scored, perforated, or weakened lines in the strip (page 1, lines 13-18).
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 susceptor strip of Prestia with the line of weakness of Woodward at the points where the susceptor of Prestia is cut. One would have been motivated to do since Woodward teaches that strips are easily separated along lines of weakness.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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