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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 17 and 19 in the reply filed on June 30, 2026 is acknowledged. Applicant additionally amended claims 2-4, 8-9 and 11-16 to depend from elected claim 17 and cancelled claims 1 and 24-26 in the reply filed on June 30, 2026
Claims 20-21 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2026.
Response to Amendment
Claims 2-4, 8-9 and 11-17 and 29 are amended. Claims 1 and 24-26 are cancelled. Claims 32-35 are newly added.
Claim Objections
Claim 35 is objected to because of the following informalities: the term “include” in line should read “includes”. Appropriate correction is required.
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.
Claims 2-3, 14, 17, and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (WO 2019/199074, machine translation provided).
Regarding claims 2-3, 17, and 32, Park discloses an aerosol generating article (100) for use in or as part of aerosol provision system (300, aerosol generating device),
the article comprising an aerosol generating substrate (10, anticipates an aerosol generating section), a cooling section (20) downstream of the aerosol generating section and a filter section (30, i.e. a mouthpiece section) (annotated Fig. 6a below, [0041]),
wherein the aerosol generating section comprises aerosol generating material (the aerosol generating substrate (10) may include one or more selected from the group consisting of plate-shaped leaves and spores, and in addition to the above components, components known in the art as aerosol generating substrates may be further included, [0061]),
and a single heating element comprising a helical portion inserted in the aerosol generating material (in one embodiment, the heat transfer member (40) may further include one or more heat transfer pins (46) extending from the surface toward the aerosol generating substrate (10), [0030]; the heat transfer pins (46) may be in a spiral shape coupled to the outer surface of the heat transfer member; Fig. 6a, [0031]) (anticipates a single heating element comprising a helical portion of claim 17; anticipates the spiral limitation of claim 2 and the screw-like limitation of claim 3).
wherein the heating element is positioned centrally in the aerosol generating material (40, heat transfer member provided on the longitudinal central axis of the aerosol generating substrate 10; Fig. 6a, [0041], anticipating the position limitation of claim 17). This anticipates claims 2, 3, and 17.
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Regarding claim 14, Park discloses the heat transfer member (40) may be in the form of a metal rod, any known in the art may be used without limitation, in particular a metal rod with excellent thermal conductivity, such as a stainless steel or aluminum alloy rod, may be preferably used ([0054]). This reads over claim 14.
Regarding claim 32, the arrangement of the filter section (30) and the cooling section (20) as shown in Fig. 6a reads over the mouthpiece includes the cooling section limitation of claim 32.
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.
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 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019/199074, machine translation provided) as applied to claim 32 above, and further in view of Liu et al. (US 2020/0205467).
Regarding claim 33-35, Park discloses all the limitations as set forth above but does not explicitly disclose the cooling section comprises a hollow channel (claim 33), a body of material downstream of the cooling section (claim 34), or a hollow tubular element downstream of the body of material at a mouth end of the article (claim 35).
Liu teaches an article for use in a non-combustible aerosol provision system ([abstract], a smokeless cigarette having a decreased vapor temperature and preventing the heat-caused collapse of a cigarette holder), the article (1) comprises a filter tip (1), a heat-resistant hollow section and a tobacco section (2) sequentially connected, and a perforation treatment is performed at a certain position on the heat-resistant hollow section housing (3), thereby forming a vent hole 5 in communication with the hollow layer for heat-resistant hollow section (4). When such a tobacco rod is consumed via peripheral heating, the hot air flow in the heated tobacco section (2) flows into the hollow layer (reads over a hollow channel) for heat-resistant hollow section (4) along the tobacco rod direction and is mixed with the cold air in the hollow layer (reads over a hollow channel) for heat-resistant hollow section (4), the outer cold air entering from the vent hole (5) is mixed together with the hot air flow in the tobacco section (2). Further, an inner layer of the heat-resistant hollow section housing (3) is coated with a heat-absorbing layer (9) of a phase-change heat-absorbing material (for example, polycarbonate), and the phase-change material absorbs the heat in the hot air flow via phase change, thus the vapor temperature may be further lowered (Embodiment 2, Fig. 2, [0030]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Park to include the heat-resistant hollow section arrangement of Liu as the cooling segment for the advantage of lowering the cigarette vapor temperature as taught by Liu. This reads over claim 33.
In Embodiment 4 Liu teaches the low temperature cigarette holder structure as discussed above and further teaches the outer end of filter tip (1), i.e., the end far from the heat-resistant section, is provided with a hollow section, thereby forming a hollow filter tip, which includes a hollow filter housing (6) and a solid filter tip hollow layer (7). The hollow filter tip may lower the interception of the vapor from the filter tip (1) and lower the vapor temperature, thereby well maintaining the vapor and smoke effect. This cigarette holder structure is marked as E (Fig. 4 reproduced below, [0038]). In the cigarette holder structure shown in Fig. 4, the filter tip (1) reads over a body of material downstream of the cooling section of claim 34 and the hollow filter tip (6, 7) reads over a hollow tubular element downstream of the body of material at a mouth end of the article of claim 35.
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It would have further been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Park to include the hollow filter tip and the hollow channel heat-resistant section of Liu arranged linearly with the filter section downstream of the aerosol generating section of Park and for the advantage of lowering the cigarette vapor temperature, thereby maintaining the vapor and smoke effect as taught by Liu. This reads over claims 34 and 35.
The prior art has the arrangement of a hollow tubular element, a body of material downstream of the cooling section, and a cooling section comprising a hollow channel in a linear arrangement downstream of the aerosol generating material and Applicant has their parts arranged this way therefore the prior art reads over the claimed mouthpiece.
Claims 4, 8-9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019/199074, machine translation provided) as applied to claim 17 above.
Regarding claim 4, Park does not explicitly disclose the helical portion cross-sectional profile, however, a person having ordinary skill in the art would be reasonably suggested the cross-sectional profile of the heat transfer fins (46) is circular when viewed in the linear axial direction of the heat transfer member (40) (Fig. 6a). This reads over the listing of claim 4.
Additionally, Park discloses the shape of the heat transfer fin (46) is not particularly limited, and forms known in the art may be used without restriction ([0059]). Therefore, Park is open to a helical portion cross-sectional profile that is triangular, square, rectangular, or flat in addition to the circular profile discussed above.
Regarding claim 8, Park discloses in the drawings a representative length of the heat transfer member (40) as being about 85% the length of the aerosol generating substrate (10) (see Figs. 6a and 6b for example) but does not explicitly disclose a heating element length as a percentage of the length of the aerosol generating material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the heat transfer member length to ensure effective heating of the aerosol generating substrate and to select a length of 15% to 85% of the length of the aerosol generating substrate (10) as a change in size (in this case the length of the heat transfer member compared to the length of the aerosol generating substrate) is generally recognized as being within the level of one of ordinary skill in the art absent evidence that a change in size results in a difference in performance. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). This reads over claim 8.
Applicant presents no evidence of unexpected results to prove otherwise.
Regarding claim 9, Park does not explicitly disclose the diameter of the heating element. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the diameter of the heating element to ensure effective heating of the aerosol generating substrate and to select a diameter of 2.5 – 6.75 mm as a change in size (in this case the diameter of the heating element) is generally recognized as being within the level of one of ordinary skill in the art absent evidence that a change in size results in a difference in performance. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). This reads over claim 9.
Applicant presents no evidence of unexpected results to prove otherwise.
Regarding claim 11, Park does not explicitly disclose the diameter of the heating element as a percentage of the width of the aerosol generating material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the diameter of the heating element to ensure effective heating of the aerosol generating substrate and to select a diameter of the heating element is 15-85% of the diameter of the aerosol generating material as a change in size (in this case the diameter of the heating element) is generally recognized as being within the level of one of ordinary skill in the art absent evidence that a change in size results in a difference in performance. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). This reads over claim 11.
Applicant presents no evidence of unexpected results to prove otherwise.
Regarding claim 12, Park does not explicitly disclose the width of the helical portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the width of the helical portion to ensure effective heating of the aerosol generating substrate and to select a width of 0.3 – 4.75 mm as a change in size (in this case the width of the helical portion) is generally recognized as being within the level of one of ordinary skill in the art absent evidence that a change in size results in a difference in performance. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). This reads over claim 12.
Applicant presents no evidence of unexpected results to prove otherwise.
Regarding claim 13, Park does not explicitly disclose the diameter of the pitch of the helical portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the pitch of the helical portion to ensure effective heating of the aerosol generating substrate and to select a pitch of 0.6 – 9.5 mm as a change in size (in this case the pitch of the helix) is generally recognized as being within the level of one of ordinary skill in the art absent evidence that a change in size results in a difference in performance. See In re Rose, 105 USPQ 237 (CCPA 1955) (see MPEP § 2144.04). This reads over claim 13.
Applicant presents no evidence of unexpected results to prove otherwise.
Claims 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019/199074, machine translation provided) as applied to claim 17 above, and further in view of Mironov et al. (US 2017/0086508).
Regarding claim 15, Park discloses all the limitations as set forth above but does not explicitly disclose the heating element is formed from or includes a non-metal.
Mironov teaches an aerosol-generating article comprising an aerosol-forming substrate for generating an inhalable aerosol when heated, an elongate susceptor in thermal contact with the aerosol-forming substrate ([0001]). Mironov teaches a susceptor (reads over a heating element) may comprise a protective coating formed by glass, a ceramic, or an inert metal, formed over a core of susceptor material ([0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Park to include a coating formed by the glass or a ceramic of Mironov for the advantage of protecting the susceptor as taught by Mironov. This reads over claim 15.
Regarding claim 19, Park discloses all the limitations as set forth above, but does not explicitly disclose the heating element is a susceptor.
Mironov teaches the susceptor may be formed from any material that can be inductively heated to a temperature sufficient to generate an aerosol from the aerosol-forming substrate. Mironov teaches preferred susceptors compromise a metal or carbon; a preferred susceptor may comprise a ferromagnetic material, for example ferritic iron, or a ferromagnetic steel or stainless steel. Further, Mironov teaches a suitable susceptor may be, or comprise, aluminum.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the heat transfer member (40) of Park formed of a stainless steel or aluminum alloy rod, as discussed in the rejection of claim 14 above, is capable to be a susceptor as taught by Mironov.
“Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (WO 2019/199074, machine translation provided) as applied to claim 17 above, and further in view of Tyuuman (US 4,405,160).
Regarding claim 16, Park discloses all the limitations as set forth above but does not explicitly disclose the helical portion is corrugated.
Tyuuman, in the field of radiating heat from a high temperature apparatus source, similar to radiating heat from a heating element in a non-combustible aerosol provision system, teaches a hose joint for connecting a hose to a high temperature apparatus, the hose joint comprising a cooling portion having a plurality of cooling fins in the middle of two portions, whereby the heat applied to the threadably attachable portion can be radiated or diffused through the cooling fins (col. 1 lines 1-7, 40-56). Tyuuman teaches on cooling joint (1) of the embodiment of Figs. 11 and 12 (reproduced below), circular fins (17) being respectively radially corrugated to form concentrical waves and that each fin in this type hose joint (1) provides a larger surface area for good heat radiation (col 3 lines 46-55).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Park to include the fin corrugation arrangement of Tyuuman for the advantage of providing a larger surface area for good heat radiation as taught by Tyuuman. This reads over claim 16.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, F.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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