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 1-4, 7-13, 15, 17-18, 20-23, 25, 27, and 30-33 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant's election without traverse of Claims 1-4, 7-13, 15, 17-18, 20 in the reply filed on May 27, 2026 is acknowledged.
Claims 21-23, 25, 27, and 30-33 are withdrawn.
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.
(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 1-4, and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fursa (US 2019/0124981 A1).
Regarding Claim 1, Fursa teaches a susceptor for insertion into an aerosol generating material portion of an article ([0004], According to the invention, there is provided an aerosol-generating article comprising an aerosol-forming substrate element with a susceptor material arranged within the aerosol-forming substrate element; and [0074], Figs. 1-2; Susceptor 25 is configured for insertion into an aerosol-forming substrate element 20 of article 10), the susceptor comprising
a coating on at least 20% of the outer surface of the susceptor ([0018], [0074]-[0075] Figs. 1-2; Susceptor 25 may be entirely coated with the aerosol-forming substrate coating 21),
wherein the coating comprises an aerosol generating and/or aerosol modifying material and which has a thickness of 300 microns or less ([0024], A thickness of the aerosol-forming substrate coating 21 may be between 50 micrometer and 120 micrometer; and [0077], The aerosol-forming substrate coating 21 comprises tobacco and preferably glycerol or propylene glycol as aerosol-former).
Regarding Claim 2, Fursa teaches the susceptor according to claim 1, wherein the coating is provided on 100% of the outer surface of the susceptor ([0018], [0074]-[0075] Figs. 1-2; The outer surface of susceptor 25 may be entirely coated with the aerosol-forming substrate coating 21).
Regarding Claim 3, Fursa teaches the susceptor according to claim 1, wherein the coating has a thickness of between 20 microns and 300 microns ([0024], A thickness of the aerosol-forming substrate coating 21 may be between 50 micrometer and 120 micrometer).
Regarding Claim 4, Fursa teaches the susceptor according to claim 1, wherein the coating comprises at least one of: an amorphous solid, a flavorant, and glycerol ([0077], The aerosol-forming substrate coating 21 comprises tobacco and preferably glycerol or propylene glycol as aerosol-former).
Regarding Claim 8, Fursa teaches the susceptor according to claim 1, wherein the coating is substantially free from water ([0077], The aerosol-forming substrate coating 21 comprises tobacco and preferably glycerol or propylene glycol as aerosol-former; Fursa does not mention the inclusion of water in the coating).
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 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1) as applied to Claim 1, in view of Buehler (US 2024/0023599 A1).
Regarding Claim 7, Fursa does not teach the susceptor wherein the coating comprises 20% - 45% glycerol by weight.
Buehler, directed to susceptors ([0014]), teaches a coating for a susceptor, wherein the coating comprises 20% - 45% glycerol by weight ([0014], there is provided an aerosol-generating article comprising: an aerosol-generating element comprising aerosol-generating substrate; and a susceptor arranged within the aerosol-generating element, the susceptor being coated with a coating composition comprising at least 20 percent by weight of an aerosol former; and [0063], The aerosol former may be glycerol).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa wherein the coating comprises 20% - 45% glycerol by weight as taught by Buehler because Fursa and Buehler are directed to susceptors, Fursa does not disclose a suitable amount of glycerol to provide in the coating, Buehler discloses a suitable range for the amount of glycerol in a susceptor coating (Buehler, [0014), and one of ordinary skill in the art would have been motivated by the disclosures of Buehler to provide the coating having the claimed glycerol content.
The range for the thickness disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 9, As Fursa teaches the susceptor according to claim 1, wherein the coating is provided on 100% of the outer surface of the susceptor ([0018]) as recited in Claim 2, wherein the coating has a thickness of between 20 microns and 300 microns ([0024]) as recited in Claim 3, wherein the coating comprises glycerol ([0077]) as recited Claim 4, wherein the coating is substantially free from water ([0077]), and Fursa can be modified in view of Buehler such that the coating comprises 20% - 45% glycerol by weight as applied to Claim 7, it is reasonably understood that the coating of Fursa in view of Buehler would be necessarily capable of “prevent[ing] the ingress of at least one of oxygen and moisture from an external environment to the outer surface of the susceptor that is coated by the coating” as claimed, because the susceptor of Fursa in view of Buehler is structurally and compositionally equivalent to the present invention.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1) as applied to Claim 1, in view of Butin (US 2022/0369714 A1)
Regarding Claims 10 and 20, Fursa does not teach the susceptor further comprising a susceptor material of ferritic stainless steel, wherein the susceptor comprises one or more portions of a mesh comprising a susceptor material.
Butin, directed to susceptors ([0002]), teaches a susceptor comprising a susceptor material of ferritic stainless steel ([0130]),
wherein the susceptor comprises one or more portions of a mesh comprising a susceptor material ([0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa comprising a susceptor material of ferritic stainless steel as taught by Butin because Fursa and Butin are directed to susceptors, Fursa demonstrates that the susceptor material may be a ferromagnetic stainless steel (Fursa, [0026]), Butin demonstrates that ferritic stainless steel is a suitable susceptor material for insertion into an aerosol generating article (Butin, [0130), and this involves combining prior art elements according to known methods to yield predictable results.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa wherein the susceptor comprises one or more portions of a mesh comprising a susceptor material as taught by Butin because Fursa and Butin are directed to susceptors, Butin demonstrates that a mesh configuration is suitable for a susceptor material for insertion into an aerosol generating article (Butin, [0080]), and this involves combining prior art elements according to known methods to yield predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1).
Regarding Claim 11, Fursa teaches the susceptor according to claim 1, wherein the susceptor has a thickness of approximately 20 to 60 microns, 30 to 50 microns, or approximately 40 microns ([0014], The elongate susceptor may have a thickness between 0.01 mm and 2 mm (10 microns to 2000 microns)).
The range for the thickness disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Claims 12-13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1) as applied to Claim 1, in view of Mironov (US 2021/0161208 A1).
Regarding Claim 12-13, and 17, Fursa does not teach the susceptor wherein the susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material, wherein the joining material comprises at least one of: the same material as the susceptor material, a non-electrically conductive material, weakened portions, a flat sheet, and thread, wherein the joining material between the susceptor elements comprises weakened portions which comprise at least one of a smaller cross-sectional area, and a lower mass than the susceptor elements.
Mironov, directed to susceptors ([0002]), teaches a susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material ([0006], The susceptor element comprises at least one narrower portion along the length extension of the susceptor element, in particular at least one narrower portion at each extreme end of the susceptor element and/or at least one narrower portion between both extreme ends of the susceptor element; and [0099], Fig. 1; In the embodiment shown in FIG. 1, the susceptor element 20 comprises a narrower portion 22 at each of its extreme ends 21. If the narrower portion 22 is provided between the extreme ends 21, the susceptor element 20 is divided into a chain at least two susceptor elements joined by the narrower portion 22 (joining material)),
wherein the joining material comprises weakened portions, wherein the joining material between the susceptor elements comprises weakened portions which comprise at least one of a smaller cross-sectional area, and a lower mass than the susceptor elements ([0006], [0099], Fig. 1; The susceptor element 20 comprises at least one narrower portion 22 along the length extension of the susceptor element 20, in particular at least one narrower portion 22 at each extreme end 21 of the susceptor element 20 and/or at least one narrower portion 22 between both extreme ends 21 of the susceptor element 20. The joining material comprises weakened portions of susceptor element 20 which smaller cross-sectional area than the susceptor elements).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa wherein the susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material, wherein the joining material comprises at least one of: the same material as the susceptor material, a non-electrically conductive material, weakened portions, a flat sheet, and thread, wherein the joining material between the susceptor elements comprises weakened portions which comprise at least one of a smaller cross-sectional area, and a lower mass than the susceptor elements as taught by Mironov because Fursa and Mironov are directed to susceptors, Mironov demonstrates that using a susceptor profile comprising periodically spaced narrower portions (weakened portions) with a reduced transverse cross-section facilitates positioning of the susceptor relative to the aerosol-forming substrate (Mironov, [0052]), and changing the cross section of the susceptor to the shape comprising narrower (weakened) portions disclosed by Mironov constitutes a change in form of shape to another known shape in the art. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Claims 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1) as applied to Claim 1, in view of Rogan (US 2020/0275705 A1).
Regarding Claim 12 and 15, Fursa does not teach the susceptor wherein the susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material, wherein the joining material is a non-conductive material which is at least one of tobacco, cottons or other fibers.
Rogan, directed to susceptors ([0001]-[0002]), teaches a susceptor comprising wherein the susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material, wherein the joining material is a non-conductive material which is tobacco ([0050], Fig. 50; Cartridge 13 includes a vaporisable substance 15 (tobacco) and an induction heatable susceptor arrangement 14. The susceptor arrangement 14 comprises a chain of susceptor plates 14 of an a induction heatable material, the plates 14 being joined by segments of vaporisable substance 15 (tobacco)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa wherein the susceptor comprises a chain of susceptor elements formed of susceptor material, the susceptor elements being joined by a joining material, wherein the joining material is a non-conductive material which is tobacco as taught by Rogan because Fursa and Rogan are directed to susceptors, Rogan demonstrates this arrangement retains the position of the susceptor elements while allowing each susceptor element to provide different heating characteristics within an article (Rogan, [0006]-[0009]), and this involves substituting one susceptor configuration for another to yield predictable results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0124981 A1) in view of Rogan (US 2020/0275705 A1) as applied to Claim 12, and further in view of Sur (US 2020/0237018 A1).
Regarding Claim 18, Fursa in view of Rogan does not teach the susceptor wherein the susceptor elements of the chain of susceptor elements are substantially spherical elements.
Sur, directed to susceptors ([0006]-[0007]), teaches a plurality of susceptor elements having a substantially spherical shape ([0070], Fig. 4; the plurality of susceptor particles 160 may have a substantially spherical shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the susceptor of Fursa in view of Rogan wherein the susceptor elements of the chain of susceptor elements are substantially spherical elements as taught by Sur because Fursa and Sur are directed to susceptors, and changing the cross section of the susceptor elements to the substantially shape spherical disclosed by Sur constitutes a change in form of shape to another known shape in the art. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PHILIP Y. LOUIE can be reached on (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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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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