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 .
Response to Amendment
Amendment filed 7/6/2026 has been entered and fully considered. Claims 1-17 are pending. Claims 1, 7 and 16 are amended. No new matter is added.
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant argues that while Lauenstein expressly discloses embossing for influencing airflow, it is not disclosed for increasing friction.
Examiner respectfully disagrees. The courts have generally held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). MPEP 2144, IV.
The claimed reason for the 2-dimensional embossing (e.g., to increase inter-strip friction) is not a required motivation to modify REEVELL in view of LAUENSTEIN. In the instant case, the 2-dimensional embossing is for influencing airflow (LAUENSTEIN; Paragraph [0015] and [0046])
It is further noted that “to increase inter-strip friction” is an intended use/function of the embossing. The courts have generally held that the functional limitations/intended use does not impart patentability to the claims. See, MPEP 2114, I and II.
Also note, MPEP 2103 I, C, A identifies statements of intended use as being features that do not limit the scope of the claims.
In response to applicant's argument that the cited art does not teach “to increase inter-strip fiction”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that LAUENSTINE does not teach strips, and instead teaches gathering the embossed web into a rod.
Examiner respectfully disagrees. LAUENSTINE discloses a preferential step of cutting the web prior to embossing (Paragraph [0070]). However, this preferred step necessarily suggest an unpreferred step of cutting after embossing. LAUENSTINE also explicitly discloses cutting after embossing and gathering (Paragraph [0079]). Thus, cutting an embossed web is within the scope of LAUENSTINE.
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.
Claim(s) 1-4 and 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over REEVELL (US 2018/0206553) in view of LAUENSTEIN et al. (US 2021/0244080).
With respect to claim 1, REEVELL discloses an aerosol generating article (Abstract) comprising a solid aerosol-generating substrate (e.g., precursor) (Paragraph [0021]) of gathered strips of homogenized tobacco (Paragraphs [0027], [0047]). The precursor is embossed (Paragraph [0028]).
It is noted that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . MPEP 2113. Thus, “being formed of a sheet” “having a longitudinal length and transverse width”, the step of “embossing” and the step of separating into strips and then gathering are directed to the process by which the product is formed. The final claimed product appears to be gathered strips of embossed solid aerosol precursor material. Wherein the embossing is two dimensional.
As seen in REEVELL, the solid precursor is a gathered set of strips that are embossed.
REEVELL does not explicitly disclose that the embossing is two-dimensional LAUENSTEIN et al. discloses an aerosol-generating article (Abstract; Paragraph [0004]) having embossing thereon. The embossing pattern influences the air that flows through the aerosol generating article (Paragraph [0015]). The embossed pattern comprises a two dimensional pattern in the longitudinal direction, 241, and transverse direction, 242 (Paragraph [0141]; Figure 4) (e.g., two-dimensional embossed pattern). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a two-dimensional embossed pattern on the solid aerosol precursor of REEVELL, as taught by LAUENSTEIN et al. so as to affect the airflow through the aerosol generating material.
“[T]o increase inter-strip fiction”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, MPEP 2114, I and II and MPEP 2103 I, C, A
With respect claim 2, LAUENSTEIN et al. discloses that the two-dimensional pattern of embossed regions has a transverse periodicity in the transverse dimension and a longitudinally periodicity in the longitudinal direction (Figure 4; Paragraph [0140]).
With respect to claim 3¸ LAUENSTEIN et al. discloses that the pitch between ridges of the embossed pattern is between 50 and 1000 percent of the thickness of the web (Paragraph [0059]) which has a thickness of 100 microns (Paragraph [0066]). Thus, the pitch is between 50 and 1000 microns. LAUENSTEIN et al. does not indicate what the pitch of each periodicity embossed region is (e.g., longitudinal vs. transverse). However, there are only two options; whether the pitch is the same or different. Given only two options to choose from, such a modification is obvious to try. See MPEP 2143, I, E.
Moreover, LAUENSTEIN et al. discloses that the patterns affect the efficiency of the air flow through the aerosol generating article (Paragraphs [0008], [0015]). Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, too have a different periodicity between the two patters of LAUENSTEIN et al. so as to influence the way in which the air flows through the aerosol substrate.
With respect to claim 4¸ LAUENSTEIN et al. discloses that the pitch between ridges of the embossed pattern is between 50 and 1000 percent of the thickness of the web (Paragraph [0059]) which has a thickness of 100 microns (Paragraph [0066]). Thus, the pitch is between 50 and 1000 microns. LAUENSTEIN et al. does not indicate what the pitch of each periodicity embossed region is (e.g., longitudinal vs. transverse). However, there are only two options; whether the pitch is the same or different. Given only two options to choose from, such a modification is obvious to try. See MPEP 2143, I, E.
Moreover, LAUENSTEIN et al. discloses that the patterns affect the efficiency of the air flow through the aerosol generating article (Paragraphs [0008], [0015]). Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, too have a same periodicity between the two patters of LAUENSTEIN et al. so as to influence the way in which the air flows through the aerosol substrate.
With respect to claims 5, 16 and 17, REEVELL discloses that the strips have a width of between 0.2 mm and 2 mm) (e.g., 200 to 2000 microns (Paragraph [0047]). The pitch of the embossed patter is between 50 and 1000 microns (see rejection of claim 4). The ranges for each overlap and thus, the scope of REEVELL in view of LAUENSTEIN et al. includes a periodicity of the transverse ridges being equal to the width of the strips.
With respect to claim 11, REEVELL discloses that the strips have a width of between 0.2 mm and 2 mm) (e.g., 200 to 2000 microns (Paragraph [0047]). The pitch of the embossed patter is between 50 and 1000 microns (see rejection of claim 4). The ranges for each overlap and thus, the scope of REEVELL in view of LAUENSTEIN et al. includes a periodicity of the transverse ridges being equal to the width of the strips.
It is noted that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . MPEP 2113. Given that the strips are cut from the sheet, their placement relative to each other, such that the embossed pattern is offset, is a manner of manipulating the strips during the processing of the precursor. It is noted that the final solid precursor is not necessarily required to have offset sequences in the final product.
With respect to claim 12¸ LAUENSTEIN et al. shows that the sheets have a repeating unit (Figure 4) embossed thereon, and includes longitudinal and transverse repeating ridges. Thus, when cut into strips, the strips themselves would implicitly have these repeating units.
With respect to claim 13, REEVELL discloses an aerosol forming article including the aerosol generating precursor (Abstract). The aerosol forming article having an upstream end, at 12, and a downstream end, at 18 (Figure 1; Paragraph [0078]).
With respect to claims 14 and 15¸ REEVELL discloses an aperture (e.g., hollow tube having an upstream opening/lumen to the tube), in 14, immediately downstream of the precursor, 12 (Figure 1; Paragraph [0078]).
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Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over REEVELL (US 2018/0206553) in view of LAUENSTEIN et al. (US 2021/0244080) as applied to claims 1-4 and 11-17 above, and further in view of GHANOUNI et al. (US 2020/00460270.
With respect to claim 6, modified REEVELL does not explicitly disclose the shape of the embossed region. GHANOUNI et al. discloses an aerosol forming agent that is embossed (Abstract; Paragraph [0041]). The embossed regions have generally circular shapes (Paragraphs [0039]; Figure 7A) so that the aerosol forming agent will be less likely to separate from a support layer (Paragraph [0044]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide each embossed region as circular in modified REEVELL, as taught by GHANOUNI et al., so that the aerosol forming agent will be less likely to separate from a support layer.
With respect to claim 7, modified REEVELL does not explicitly disclose the shape of the embossed region. GHANOUNI et al. discloses an aerosol forming agent that is embossed (Abstract; Paragraph [0041]). The embossed regions have generally rectangular (e.g., elongated) shapes (Paragraphs [0039], [0043]; Figure 7A) so that the aerosol forming agent will be less likely to separate from a support layer (Paragraph [0044]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide each embossed region as circular in modified REEVELL, as taught by GHANOUNI et al., so that the aerosol forming agent will be less likely to separate from a support layer.
With respect to claim 8¸ modified REEVELL discloses that the embossed regions are angled with respect to the longitudinal direction of the strip (LAUENSTEIN et al. Paragraphs [0042], [0050]-[0052]) by about 85 degrees.
With respect to claim 9¸ LAUENSTEIN et al. does not indicate what the angle of each periodicity embossed region is (e.g., longitudinal vs. transverse). However, there are only two options; whether the angle is the same or different between each embossed area. Given only two options to choose from, such a modification is obvious to try. See MPEP 2143, I, E.
Moreover, LAUENSTEIN et al. discloses that the patterns affect the efficiency of the air flow through the aerosol generating article (Paragraphs [0008], [0015]). Thus, it would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, too have a different angle between the two patters of LAUENSTEIN et al. so as to influence the way in which the air flows through the aerosol substrate.
With respect to claim 10, REEVELL discloses that the strips have a width of between 0.2 mm and 2 mm) (e.g., 200 to 2000 microns (Paragraph [0047]). The pitch of the embossed patter is between 50 and 1000 microns (see rejection of claim 4). The ranges for each overlap and thus, the scope of REEVELL in view of LAUENSTEIN et al. includes a periodicity of the transverse ridges being less than the width of the strips. Thus, the first and second embossed regions are implicitly located on all strips, including those that are adjacent.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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