CTNF 18/571,346 CTNF 85496 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-30-02 AIA 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. 07-34-01 Claim 19 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. Claim 19 recites the limitation "the cavity" in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears claim 19 should depend on 16 instead of claim 15. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1, 2, 6, 10-12, and 15 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Zuber (US 2014/0345634) . Regarding claim 1, Zuber discloses an article for use in a non-combustible aerosol provision system that includes an aerosol provision device (see article 1 in Fig. 1), the article comprising a rod of aerosol-generating material having a distal end for insertion into the non-combustible aerosol provision device such that a heating element of the device extends into the rod of aerosol-generating material through said distal end (see rod 15 having distal end 30 for insertion of heating element 8; Fig. 1), wherein the article comprises a plug at said distal end of said aerosol-generating material, the plug being configured such that the heating element extends into the rod of aerosol-generating material through said plug (see front-plug 2 in Fig. 1; [0064]). Regarding claim 2, Zuber discloses paper ([0024]). Regarding claim 6, Zuber discloses the plug abuts a distal end of aerosol-generating material (see front-plug 2 adjacent aerosol forming substrate 7 in Fig. 1). Regarding claim 10, Zuber discloses a mouth end 20 ([0067]). Regarding claim 11, Zuber disclose a cooling segment (volatile substances cool within transfer section 4, [0058]). Regarding claim 12, Zuber discloses a filter 3 ([0059]). Regarding claim 15, Zuber discloses a system comprising a non-combustible aerosol provision device having a heating element (see Fig. 1 with article 1 and heating element 8); and an article comprising a rod of aerosol-generating material having a distal end for insertion into a non-combustible aerosol provision device such that the heating element of the device extends into the aerosol-generating material through said distal end (see rod 15 having distal end 30 for insertion of heating element 8; Fig. 1), wherein the article comprises a plug at said distal end of the aerosol-generating material, the plug being configured such that the heating element extends into the rod of aerosol-generating material through said plug (see front-plug 2 in Fig. 1; [0064]) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-22-aia AIA Claim s 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 2014/0345634) as applied to claim s above, and further in view of Courderc (US 2019/0343175) . Regarding claims 3-5, Zuber discloses the front-plug may be formed of paper and may be made from a filter material that allows air to be drawn through the front plug ([0023-0024]). Zuber does not expressly disclose the plug as formed from gathered and crimped paper; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the plug as claimed since Couderc, similarly directed towards rod-shaped smoking articles, teaches forming paper-based filter materials by gathering and crimping strips to form a plug ([0047], Fig. 5). One would have been motivated to use a paper structure known to be suitable for forming paper plugs . 07-22-aia AIA Claim s 7-9, 13, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 2014/0345634) as applied to claim s above, and further in view of Potter (US 20100059070) . Regarding claims 7-9, Zuber discloses front-plug 2 has a through-hole 103 or slit 203 ([0072-0077]), but does not expressly disclose a cavity extending into the rod of aerosol-generating material. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the aerosol-generating material rod with a cavity to receive a heating element since Potter, similarly directed towards a rod-shaped smoking article, teaches providing a channel 28 at the end of a volatilization component 20 to receive the end of a heat pipe 16 ([0043,0046]). Potter discloses the channel section has the same diameter as the heat pipe, making it complementary in shape ([0043]). One would have been motivated to facilitate the insertion of the article onto the heating element and effect the transfer of heat energy therein ([0043]). As to claims 8 and 9, Zuber discloses a hole or slit ([0072-0077]) for the heating element and one having ordinary skill in the art would have obviously aligned the hole extending through the plug and rod so that the heating element can extend therein. Regarding claims 13 and 14, Zuber does not disclose holes downstream of the plug; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the article with holes as claimed since Potter, similarly directed towards a rod-shaped smoking article, teaches providing perforations in the cylindrical housing of the tobacco section 22 to facilitate volatilization and air flow through the device ([0043]). As to claim 14, both Zuber and Potter disclose a wrapper and Potter discloses forming a ring of perforations in the housing/wrapper 38 ([0043]). Regarding claims 16-19, Zuber discloses front-plug 2 has a through-hole 103 or slit 203 ([0072-0077]), but does not expressly disclose a cavity extending into the rod of aerosol-generating material. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the aerosol-generating material rod with a cavity to receive a heating element since Potter, similarly directed towards a rod-shaped smoking article, teaches providing a channel 28 at the end of a volatilization component 20 to receive the end of a heat pipe 16 ([0043,0046]). Potter discloses the channel section has the same diameter as the heat pipe, making it complementary in shape ([0043]). One would have been motivated to facilitate the insertion of the article onto the heating element and effect the transfer of heat energy therein ([0043]). As to claim 17, Zuber discloses a hole or slit ([0072-0077]) for the heating element and one having ordinary skill in the art would have obviously aligned the hole extending through the plug and rod so that the heating element can extend therein. Regarding claim 18, It would have been obvious to a person having ordinary skill in the art at the time prior to the effective filing date of the invention to have configured the passage in the plug and the cavity in the aerosol-generating material to have the same cross-sectional shape since the heating element must pass through the plug and the aerosol-generating material in Zuber (Fig. 1) and Potter discloses the channel section within the article should have a complementary shape to the heating element ([0043])--thus, one would obviously form the plug and rod with the same channel shape that is complementary to the heating element. One would have been motivated to facilitate the insertion of the article onto the heating element and effect the transfer of heat energy therein ([0043]). Regarding claim 19, Potter discloses the channel section within the article should have a complementary shape to the heating element ([0043]) . 07-21-aia AIA Claim s 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 2014/0345634) in view of Courderc (US 2019/0343175) and Barnes (US 4903714) . Regarding claims 20 and 21, Zuber discloses a method for manufacturing an article comprising a rod of aerosol-generating material having a distal end for insertion into a non-combustible aerosol provision device (cylindrical elements assembled in sequence and wrapped; [0007]), the article comprising a plug at said distal end of said aerosol-generating material (see front-plug 2, Fig. 1). Zuber discloses the front-plug may be formed of paper and may be made from a filter material that allows air to be drawn through the front plug ([0023-0024]). Zuber does not expressly disclose the plug as formed from gathered and crimped paper; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have formed the plug as claimed (1) since Couderc, similarly directed towards rod-shaped smoking articles, teaches forming paper-based filter materials by gathering and crimping strips to form a plug ([0047], Fig. 5); and (2) Barnes, similarly directed towards making rod-shaped smoking articles, teaches forming webs into plugs by first crimping with grooves rolls, gathering material into a cone to form the plug, wrapping the rod, and then cutting to size (col 5, lines 4-37). One would have been motivated to look towards the prior art and employ well-known and conventional techniques to achieve the expected and predictable result of forming paper plug/filter materials as desired by Zuber. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc. , 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) . 07-22-aia AIA Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 2014/0345634) in view of Courderc (US 2019/0343175) and Barnes (US 4903714) as applied to claim 20 above, and further in view of Yanchev (EP 3785549) . Regarding claim 22, Zuber discloses forming the front-plug 2 with a through-hole 103 or slit 203 ([0072-0077]), but does not disclose gathering a sheet/web around a former to form the hole. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have formed the plug hole in Zuber with a former as claimed since Yanchev, similarly directed towards forming rod-shaped smoking articles, teaches forming a filter by feeding a fibrous bundle (e.g., paper sheet) into a forming nozzle with guide pin contained therein to shape the paper into a desired shape and provide internal shapes with voids ([0008,0009,0015]). One would have been motivated to introduce a void into the plug as desired by Zuber. Examiner notes that Zuber discloses the front-plug may be formed of paper and may be made from a filter material that allows air to be drawn through the front plug ([0023-0024]). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST. 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, Anna Momper can be reached at (571) 270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT C DYE/Primary Examiner, Art Unit 3619 Application/Control Number: 18/571,346 Page 2 Art Unit: 3619 Application/Control Number: 18/571,346 Page 4 Art Unit: 3619 Application/Control Number: 18/571,346 Page 5 Art Unit: 3619 Application/Control Number: 18/571,346 Page 6 Art Unit: 3619 Application/Control Number: 18/571,346 Page 7 Art Unit: 3619 Application/Control Number: 18/571,346 Page 8 Art Unit: 3619
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