DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s election filed May 27, 2026. Claims 28-31 and 33-34 have been elected for examination. Claims 1, 3, 5-6, 8-9, 11, 13-15, 18, 20, 25-26, 35 and 37 have been withdrawn.
Election/Restrictions
Claims 1, 3, 5-6, 8-9, 11, 13-15, 18, 20, 25-26, 35 and 37 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected article and methods, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 27, 2026.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 28, 31, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020181358 A1 (hereinafter SELBY). SELBY was made of record on Applicant's information disclosure statement filed December 18, 2023.
Regarding claim 28, SELBY discloses a smoking article for use in a heat not burn cigarette device with a hollow tube (abstract). SELBY discloses 28 a non-combustible aerosol provision device having a heating element (Fig. 28, heating device 190 and heating spike 170, page 16, lines 10-31). SELBY further discloses an article (Fig. 6C, HNB cigarette 10, page 7, line 23-25) comprising a rod of aerosol-generating material (Fig. 6C, tobacco section 20, page 7, lines 25-28) having a distal end (Shown in Fig. 6c where there is a porous material 110 at the bottom end, page 11, lines 20-31) 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, wherein a cavity (Fig. 6C, air flow channel 30, page 7, lines 28-30) extends into the rod of aerosol-generating material in a longitudinal direction from said distal end to receive the heating element. (page 15, lines 7-13). SELBY discloses that the article can be used with a HNB heating element designed to stab into the tobacco section and that the heating element is positioned within the air flow channel 30 to provide heat to the tobacco section.
Regarding claim 31, SELBY discloses the system according to claim 28 as discussed above. SELBY further discloses the heating element and the cavity each have a different cross-sectional shape such that, when the heating element is received in the cavity, a passage remains between the heating element and an inner wall of the aerosol generating material. SELBY discloses the use of a pin or blade heater (page 3, lines 7-10). As shown in at least Fig. 21 the blade heater has a pointed end. Further it is widely known in the art that a blade heater is a pointed, flat (i.e. planar) sheet of metal. Therefore where the blade heater (having a cross sectional area of a rectangle) is inserted into the air flow channel 30 that is shown to be a cylinder (See Fig. 3C), the cavity and the heating element have different cross sectional shapes and air will pass between the wall and the heating element.
Regarding claim 33, SELBY discloses the system according to claim 28 as discussed above. SELBY further discloses wherein the aerosol-generating material has a longitudinal axis and said cavity to receive the heating element is a central cavity extending along said longitudinal axis (shown in at least Fig. 13C).
Claim Rejections - 35 USC § 103
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 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over SELBY as applied to claim 28 above, and further in view of US 20100059070 A1 (hereinafter POTTER).
Regarding claim 29, SELBY discloses the system according to claim 28 as discussed above. SELBY does not disclose wherein the heating element and the cavity each have the same cross-sectional shape.
POTTER teaches a device for delivering volatized material to a user comprising a heat delivery component and a source of volatilizable material (abstract). POTTER discloses a heat pipe 16 (Figs. 2-3, ¶37). The heat pipe is received in a section 22 of the volatilization component (¶42). POTTER teaches that the tobacco section and the heat pipe have approximately the same outside diameter ¶43 (which inherently indicates that they are both circles i.e. the same cross-section shape). POTTER teaches that this complementary shape is for adapting the heat pipe to fit the inside of the tobacco section allowing the sliding of the tobacco onto the pipe(¶43).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified SELBY to wherein the heating element and the cavity each have the same cross-sectional shape as taught in SELBY. One would have been motivated to facilitate the insertion of the article onto the heating element and effect the transfer of heat energy therein (POTTER ¶43).
Regarding claim 30, SELBY discloses the system according to claim 28 as discussed above. SELBY does not disclose the heating element is a snug or interference fit in the cavity.
POTTER teaches a device for delivering volatized material to a user comprising a heat delivery component and a source of volatilizable material (abstract). POTTER discloses a heat pipe 16 (Figs. 2-3, ¶37). The heat pipe is received in a section 22 of the volatilization component (¶42). POTTER teaches that the tobacco section and the heat pipe have approximately the same outside diameter ¶43 (which inherently indicates that they are both circles i.e. the same cross-section shape). POTTER teaches that this complementary shape is for adapting the heat pipe to fit the inside of the tobacco section allowing the sliding of the tobacco onto the pipe(¶43).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified SELBY to provide the heating element is a snug or interference fit in the cavity as taught in SELBY. One would have been motivated to facilitate the insertion of the article onto the heating element and effect the transfer of heat energy therein (POTTER ¶43). The teaching of the tobacco section cavity and the heating pipe having the same outside diameter reads on “snug or interference fit”.
Claims 34 is rejected under 35 U.S.C. 103 as being unpatentable over SELBY
Regarding claim 34, SELBY discloses the system according to claim 33 as discussed above. SELBY further teaches a plurality of additional cavities extending into said aerosol-generating material from said distal end, wherein said additional cavities surround said central cavity and form open passages through the aerosol-generating material when the heating element is received in said central cavity. SELBY discloses that there is at least one air flow channel 30 air flow channel 30 (page 7, lines 28-30). This contemplates the addition of further cavity. SELBY further teaches the inclusion of multiple air flow channels disposed in the tobacco in such a way to evenly heat the tobacco resulting in an efficient vaporizing of the tobacco and lowering the thermal mass of the tobacco (page 18, lines 11-15). As shown in Fig. 32B there are channels 40 around the tobacco.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of SELBY to provide a plurality of additional cavities extending into said aerosol-generating material from said distal end, wherein said additional cavities surround said central cavity and form open passages through the aerosol-generating material when the heating element is received in said central cavity. A person of ordinary skill in the art would obviously provide multiple cavities because doing so would resulting in an efficient vaporizing of the tobacco and lowering the thermal mass of the tobacco (page 18, lines 11-15).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 28-31 and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-19 of copending Application No. 18/571346 (reference application ‘346, PG Pub US 20240277033 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets disclose a system for a non-combustible aerosol provision device wherein a heating element of the device extends into a rod of aerosol-generating material.
Regarding claim 28, ‘346 discloses a system comprising a non-combustible aerosol provision device having a heating element; 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, wherein a cavity extends into the rod of aerosol-generating material in a longitudinal direction from said distal end to receive the heating element. (Claims 15-16)
Regarding claim 29, ‘346 discloses wherein the heating element and the cavity each have the same cross-sectional shape (claim 18).
Regarding claim 30, ‘346 discloses wherein the heating element is a snug or interference fit in the cavity (PG pub of ‘346, ¶134).
Regarding claim 31, ‘346 discloses wherein the heating element and the cavity each have a different cross-sectional shape such that, when the heating element is received in the cavity, a passage remains between the heating element and an inner wall of the aerosol generating material (PG pub of ‘346, ¶125).
Regarding claim 33, ‘346 discloses wherein the aerosol-generating material has a longitudinal axis and said cavity to receive the heating element is a central cavity extending along said longitudinal axis. (claim 16)
Regarding claim 33, ‘346 discloses a plurality of additional cavities extending into said aerosol-generating material from said distal end, wherein said additional cavities surround said central cavity and form open passages through the aerosol-generating material when the heating element is received in said central cavity (PG pub of ‘346, ¶125).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 28-31 and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-28 of copending Application No. 18/571337 (reference application ‘337, PG Pub US 20240277032 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets disclose a system for a non-combustible aerosol provision device wherein a heating element of the device extends into a rod of aerosol-generating material.
Regarding claim 28, ‘337 discloses a system comprising a non-combustible aerosol provision device having a heating element; 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, wherein a cavity extends into the rod of aerosol-generating material in a longitudinal direction from said distal end to receive the heating element. (Claims 18 and 23)
Regarding claim 29, ‘337 discloses wherein the heating element and the cavity each have the same cross-sectional shape (claim 24).
Regarding claim 30, ‘337 discloses wherein the heating element is a snug or interference fit in the cavity (claim 25).
Regarding claim 31, ‘337 discloses wherein the heating element and the cavity each have a different cross-sectional shape such that, when the heating element is received in the cavity, a passage remains between the heating element and an inner wall of the aerosol generating material (PG pub 20240277032 A1, ¶147-¶148).
Regarding claim 33, ‘337 discloses wherein the aerosol-generating material has a longitudinal axis and said cavity to receive the heating element is a central cavity extending along said longitudinal axis. (PG pub 20240277032 A1, Fig. 6)
Regarding claim 33, ‘337 discloses a plurality of additional cavities extending into said aerosol-generating material from said distal end, wherein said additional cavities surround said central cavity and form open passages through the aerosol-generating material when the heating element is received in said central cavity (PG pub 20240277032 A1, ¶153).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20140345634 A1 (hereinafter ZUBER). ZUBER discloses a smoking article with a front end plug for receiving a heating element (abstract). ZUBER discloses various shapes for receiving the front end plug (see Fig. 3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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