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 .
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.
Status of the Claims
Claims 1-10 are pending. Claims 1 and 7-8 have been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 8/4/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
Applicant acknowledges that Apetrei Birza discloses using a susceptor which “is a passive heat-generating body” within the capsule (Page 4 of the Remarks) but Applicant argues that Apetrei Birza does not disclose “a heating element” arranged in the storage space of the capsule as required by the amendments to claim 1 because Apetrei Birza discloses that “the active component for heating (the inductor) is arranged in the device body, not in the capsule (Page 4 of the Remarks). This argument is not persuasive as Applicant did not claim that an active component for heating is arranged in the storage space, only that “a heating element” is arranged in the storage space. As acknowledged by Applicant, the susceptor is a heat-generating body. As such, the susceptor is considered “a heating element”, and that heating element is arranged within the storage space of Apetrei Birza.
Applicant further argues that “Apetrei Birza describes that the aerosol-forming substrate is preferably solid” (Page 5 of the Remarks). This argument is not persuasive as a “reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (MPEP § 2123(I)), and Apetrei Birza discloses that “[t]he aerosol-forming substrate may be solid or liquid” (¶ 0009, emphasis added).
Applicant further argues that “a person of ordinary skill in the art could not have readily combined Cola with Apetrei Birza” because Cola stores gas which causes mechanical stress. This argument is not persuasive as Cola is in the field of sealing with adhesive, and it is reasonably pertinent to the particular problem with which Apetrei Birza (and the current application) was concerned (i.e., sealing a cartridge with adhesive). One of ordinary skill in the art would have looked to prior art concerning sealing with adhesive because Apetrei Birza teaches sealing with adhesive (see MPEP § 2141.01(a)(I)).
Applicant further argues that “a person of ordinary skill in the art could not have readily combined Cola with Apetrei Birza” because Cola “uses elastomeric materials such as nitrile rubber, neoprene, or silicone rubber . . . whereas the capsule of Apetrei Birza is formed form rigid plastics or metals such as PEEK, PET, PE, PP, or stainless steel”. This argument is not persuasive because 1) Apetrei Birza also discloses using other materials such as “flexible plastics” (¶ 0090), and 2) Cola is in the field of sealing with adhesive and is reasonably pertinent to the particular problem with which Apetrei Birza (and the current application) was concerned (i.e., sealing a cartridge with adhesive). One of ordinary skill in the art would have looked to prior art concerning sealing with adhesive because Apetrei Birza teaches sealing with adhesive (see MPEP § 2141.01(a)(I)).
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 1-2, 5, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Apetrei Birza (US 2019/0053535 A1) in view of Cola et al. (US 2017/0246794 A1).
Regarding claim 1, Apetrei Birza discloses a method of manufacturing a cartridge (“capsule 1”, Fig. 1, ¶ 0090) configured to generate an aerosol by heating an aerosol generating material (“active substrate 2 comprising an aerosol-forming substrate”, Fig. 1, ¶ 0090; where “heat” is used for “vaporizing the aerosol-forming substrate”, ¶ 0090), the cartridge comprising a storage (“shell 10”, Fig. 1, ¶ 0090) including a storage space (cavity containing “active substrate 2” in Fig. 1) for accommodating the aerosol generating material and a cover (“lid 11”, Fig. 1, ¶ 0090) coupled to a region of the storage (“shell 10 that is sealed with a lid 11”, ¶ 0090), wherein a liquid delivery element (“high liquid retention material” where “the aerosol-forming substrate may be liquid”, ¶ 0049) and a heating element (“susceptor material”, ¶ 0090) are arranged in the storage space (“capsule 1 containing . . . an aerosol-forming substrate and susceptor material”, ¶ 0090, and “the capsule may be provided with a high liquid retention material”, ¶ 0049) the method comprising:
applying an adhesive to a region of the storage and sealing the storage by coupling the cover to the region of the storage to which the adhesive is applied (“The lid may be sealed to the shell of the capsule using any suitable method, including: adhesive”, ¶ 0051).
However, Apetrei Birza does not disclose plasma-treating at least a portion of the region of the storage.
Cola, in the field of sealing with adhesive, discloses plasma-treating a surface before the application of an adhesive (“The roughening of the gluing surfaces 6 may be performed by means of grinding or plasma treatment”, ¶ 0020). One of ordinary skill in the art would have understood that there was a benefit to plasma-treating a region of a surface before the application of an adhesive in that it increases the contact surface area of the region which correspondingly increases the force of adhesion between the region and the subsequently applied adhesive. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to plasma-treat at least a portion of the region of the storage of Apetrei Birza to which the adhesive is subsequently applied, in order to obtain this benefit.
Although Cola is in the field of sealing with adhesive, it is reasonably pertinent to the particular problem with which Apetrei Birza (and the current application) was concerned (i.e., sealing a cartridge with adhesive). One of ordinary skill in the art would have looked to prior art concerning sealing with adhesive because Apetrei Birza teaches sealing with adhesive (see MPEP § 2141.01(a)(I)).
Regarding claim 2, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Apetrei Birza further discloses wherein the storage or the cover comprises one or more plastics selected from the group consisting of polyethylene, polypropylene, polyethylene terephthalate, polyamide, polyvinyl chloride, polystyrene, polycarbonate, polyvinylidene chloride, polyetherimide, polyurethane, and polyetheretherketone (“The capsule or parts of the capsule may be formed from one or more suitable materials. Suitable materials include, but are not limited to, polyether ether ketone (PEEK)”, ¶ 0062).
Regarding claim 5, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Cola does not explicitly disclose wherein the applying of the adhesive is performed within two hours after the plasma-treating is terminated. However, there was a benefit to minimizing the amount of time between terminating the plasma-treatment and applying the adhesive in that it shortens the overall manufacturing time. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the amount of time between terminating the plasma-treatment and applying the adhesive such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 7, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Apetrei Birza further discloses injecting the aerosol generating material (“an active substrate 2 comprising an aerosol-forming substrate”, Fig. 1, ¶ 0090) into the storage that is plasma-treated.
Regarding claim 8, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Apetrei Birza does not explicitly disclose wherein the injecting of the aerosol generating material comprises injecting the aerosol generating material having a volume ranging from 70% to 95% of a volume of the storage space. However, Apetrei Birza teaches that the storage space should have sufficient volume to contain enough aerosol generating material to provide a good user experience (¶ 0057). The efficacy of the storage space and aerosol generating material for this result depends on the percentage of volume of the storage space occupied by the aerosol generating material. If too little volume of the storage space is occupied by aerosol generating material, then either the capsule is overly large providing an inefficient use of space or there is not a sufficient amount of aerosol generating material within the storage space to provide enough aerosol for a good user experience. If too much of the volume of the storage space is occupied by aerosol generating material in order to have a sufficient amount of aerosol generating material, then the cartridge may crack due to thermal expansion of the aerosol generating material when it is heated. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the volume of the storage space occupied by the aerosol generating material such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 9, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Apetrei Birza further discloses using the method to manufacture a cartridge (“capsule 1”, Fig. 1, ¶ 0090).
Regarding claim 10, Apetrei Birza in view of Cola discloses the cartridge of claim 9 as discussed above. Apetrei Birza further discloses an aerosol generating device comprising the cartridge (“an inductively heatable aerosol-generating system 8 comprising an aerosol-generating device 7 and a capsule 1”, Fig. 7, ¶ 0128).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Apetrei Birza (US 2019/0053535 A1) in view of Cola et al. (US 2017/0246794 A1) as applied to claim 1 above, and further in view of Yamamura et al. (US 2017/0282469 A1).
Regarding claim 3, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. However, Cola does not disclose the amount of time in the plasma-treating that the surface is exposed to plasma.
Yamamura, in the field plasma-treatment for adhesion, discloses the roughening steps performed by plasma-treatment of a surface prior to applying adhesive are performed with a plasma exposure time of 5 seconds to 60 minutes (¶ 0006). One of ordinary skill in the art would have understood that there was a benefit to performing the plasma-treatment step with a plasma exposure time within that range as it ensures that the roughness results in a desirable amount of adhesion (¶ 0006). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to performed the plasma-treatment step taught by Cola with the plasma exposure time taught by Yamamura, in order to obtain this benefit. The range 5 seconds to 60 minutes overlaps the claimed range of 0.1 seconds to 10 seconds (see MPEP § 2144.05(I)).
Although Yamamura is in the field of plasma-treatment for adhesion, it is reasonably pertinent to the particular problem with which Cola (and the current application) was concerned (i.e., using plasma-treatment to increase adhesion). One of ordinary skill in the art would have looked to prior art concerning plasma-treatment for adhesion because Cola teaches plasma-treatment for adhesion (see MPEP § 2141.01(a)(I)).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Apetrei Birza (US 2019/0053535 A1) in view of Cola et al. (US 2017/0246794 A1) as applied to claim 1 above, and further in view of Harada et al. (US 2018/0201814 A1).
Regarding claim 4, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. However, Cola does not disclose the speed at which the plasma-treatment is performed.
Harada, in the same field of endeavor, discloses performing a plasma-treatment by a transferred type plasma torch (“plasma emitter 50”, Fig. 2, ¶ 0175) which moves at a speed of 0.83 cm/sec (“the plasma irradiation apparatus over the irradiation surface at a speed of 0.5 m/min”, ¶ 0175). One of ordinary skill in the art would have understood that there was a benefit to performing a plasma treatment at this speed in that it ensures ample time is spent to irradiate the region while minimizing the overall amount of time it takes to perform the process. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to perform the plasma-treatment of Cola with a transferred type plasma torch moved with respect to the region of the storage at a speed of 0.83 cm/sec as taught by Harada, in order to obtain this benefit. The speed of 0.83 cm/sec falls within the claimed range of 0.1 cm/sec to 50 cm/sec (see MPEP § 2131.03).
Although Harada is in the field of plasma-treatment for adhesion, it is reasonably pertinent to the particular problem with which Cola (and the current application) was concerned (i.e., using plasma-treatment to increase adhesion). One of ordinary skill in the art would have looked to prior art concerning plasma-treatment for adhesion because Cola teaches plasma-treatment for adhesion (see MPEP § 2141.01(a)(I)).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Apetrei Birza (US 2019/0053535 A1) in view of Cola et al. (US 2017/0246794 A1) as applied to claim 1 above, and further in view of Hon (US 2017/0188632 A1).
Regarding claim 6, Apetrei Birza in view of Cola discloses the method of claim 1 as discussed above. Apetrei Birza does not teach using a UV adhesive for the adhesive. However, it is known in the art that adhesives can be made with UV adhesive (“Examples of adhesives which may be used include adhesives that are curable by exposure to UV light”, ¶ 0018 of Hon). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a UV adhesive for the adhesive, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
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.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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