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 16-30 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-29, in the reply filed on 07/21/2026 is acknowledged. The traversal is on the ground(s) that prior art references Mironov and Deng are not combinable and therefore the inventive concept is not taught by the prior art. Specifically, the Applicant argues that Mironov is directed to a heat-not-burn article and Deng is directed to a conventional cigarette, and the resulting difference in form and function would yield an unexpected result that the layer of Deng may interact with the inductive heating of Mironov. The Applicant further states that Mironov does not burn/combust and would therefore not have a need to apply the sheet of Deng. This is not found persuasive because even if aluminum were to have inductive properties, this would not preclude its application to Mironov, as it may be expected to additionally heat the article from the outside in addition to the susceptor heating within the article. The claimed invention does not exclude this as a possible configuration. Furthermore, one having ordinary skill in the art would recognize that having a layer to contain the substrate would be beneficial to carrying the substrate and to cleaning the device. Whether or not ash is formed, the metal layer would help contain stray particles of the substrate.
The Examiner further notes that claim 16 is similarly taught by prior art references Campitelli et al. (WO 2020127116 A2) and Mohseni (WO 2019048361 A1), as cited in the below rejection. These prior art references further evidence that the inventive feature does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claim 30 is withdrawn as being directed to a non-elected invention.
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 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over Campitelli et al. (WO 2020127116 A2; hereinafter referring to US 20220007710 A1) in view of Mohseni (WO 2019048361 A1; referring to corresponding US document US 20200221760 A1).
Regarding claim 16, Campitelli teaches an aerosol-generating article (aerosol generating article 100; [0405]), comprising:
a rod of aerosol-forming substrate (tubular element 500 comprising gel 124; [0406]),
the rod comprising a susceptor element within the aerosol-forming substrate ([0031], [0364-0376], [0484]);
and a wrapper (wrapper 110, 850; [0405], [0484]) wrapped around the rod of aerosol-forming substrate,
wherein the wrapper comprises a metal layer ([0319]).
Campitelli is silent as to the thickness of the metal layer.
Mohseni, directed to an article (aerosol-generating article 2; [0274]) comprising a rod of aerosol-forming substrate (aerosol-forming substrate 10; [0274]) and a wrapper (outermost wrapper 20; [0274]) comprising a metal layer ([0283]), teaches that a thickness of a metal layer may be less than 100nm ([0011], [0039-0044], [0283]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Campitelli by making the metal layer have a thickness of less than 100 nanometers as taught by Mohseni because Campitelli is silent to the thickness of the metal layer and one with ordinary skill would be motivated to look to prior art for a known and suitable metal layer thickness, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 17, Mohseni teaches that the metal layer has a thickness of between 25 nanometres and 60 nanometres ([0044] teaches between about 15 nanometers and about 60 nanometers The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 18, Campitelli teaches that the wrapper is wrapped around at least 50 percent of a length of the rod of aerosol-forming substrate (Figs. 13, 24; [0439]).
Regarding claim 19, Campitelli teaches that the susceptor element has a diameter of between 2 millimetres and 4 millimetres ([0370] teaches 1-5mm. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 20, Campitelli teaches an upstream element (end plug 600; Fig. 13; [0174], [0412]) located upstream of the rod of aerosol-forming substrate.
Regarding claim 21, Campitelli teaches that the wrapper is wrapped around at least a portion of the upstream element (Fig. 13).
Regarding claim 22, Campitelli is silent as to the composition of the metal layer.
Mohseni teaches that the metal layer may comprise aluminum ([0046]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Campitelli by making the metal layer comprise aluminum as taught by Mohseni because Campitelli is silent to the composition of the metal layer and one with ordinary skill would be motivated to look to prior art for a known and suitable metal layer composition, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 23, Campitelli teaches that the wrapper further comprises a paper layer ([0172], [0345]).
Regarding claim 24, Mohseni teaches that the wrapper further comprises the metal layer deposited on the paper layer (Mohseni [0033-0034], [0055], [0289]).
Regarding claim 25, Campitelli teaches that the paper layer has a thickness of between 40 micrometres and 80 micrometres ([0345] teaches a paper layer thickness of 30 to 70 micrometers. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 26, Campitelli teaches that the aerosol- forming substrate has an aerosol former content of greater than or equal 5 percent by weight ([0248] teaches between 60 and 90 percent. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Regarding claim 27, modified Campitelli teaches that a ratio of a thickness of the susceptor element to a thickness of the metal layer is less than 2500 (Campitelli [0370] teaches that the thickness of the susceptor is 10-500 micrometers; Mohseni [0011], [0039-0044], [0283] teaches that the thickness of the metal layer less than 100nm; the claimed ratio overlaps with the resulting ratio of the prior art and is therefore prima facie obvious).
Regarding claim 28, Campitelli teaches that a ratio of a thickness of the susceptor element to a thickness of the metal layer is greater than or equal to 1500 (Campitelli [0370] teaches that the thickness of the susceptor is 10-500 micrometers; Mohseni [0011], [0039-0044], [0283] teaches that the thickness of the metal layer less than 100nm; the claimed ratio overlaps with the resulting ratio of the prior art and is therefore prima facie obvious).
Regarding claim 29, Campitelli teaches that a ratio of a thickness of the susceptor element to a thickness of the metal layer is between 1500 and 2500 (Campitelli [0370] teaches that the thickness of the susceptor is 10-500 micrometers; Mohseni [0011], [0039-0044], [0283] teaches that the thickness of the metal layer less than 100nm; the claimed ratio overlaps with the resulting ratio of the prior art and is therefore prima facie obvious).
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 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 29 of copending Application No. 18/580,068 in view of Campitelli et al. (WO 2020127116 A2; hereinafter referring to US 20220007710 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claim 16, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol-generating article, comprising: a rod of aerosol-forming substrate; and a wrapper wrapped around the rod of aerosol-forming substrate, wherein the wrapper comprises a metal layer, and wherein the metal layer has a thickness of less than 100 nanometres.
The claims differ in that conflicting claim 16 does not teach that the rod comprises a susceptor element, however, claim 29 of the conflicting claims teaches this limitation.
The claims further differ in that conflicting claim 29 does not specify that the susceptor element is within the aerosol forming substrate.
Campitelli, directed to an aerosol-generating article (aerosol generating article 100; [0405]), comprising: a rod of aerosol-forming substrate (tubular element 500 comprising gel 124; [0406]), the rod comprising a susceptor element ([0031], [0364-0376], [0484]); and a wrapper (wrapper 110, 850; [0405], [0484]) wrapped around the rod of aerosol-forming substrate, wherein the wrapper comprises a metal layer ([0319]), teaches that a susceptor element may be located within the aerosol-forming substrate ([0031], [0364-0376], [0484]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the conflicting claims by locating the susceptor element within the aerosol-forming substrate as taught by Campitelli because the conflicting claims are silent as to the location of the susceptor element, Campitelli teaches that this is a known placement for a susceptor element, and this involves applying a known teaching to a similar article to yield predictable results.
The claims further differ in that conflicting claims 16 and 29 include additional limitations directed to an aerosol former content of the article. However, conflicting claims 16 and 29 still include all required components of rejected claim 16 in view of Campitelli. Therefore, all elements are present and obvious over the conflicting claims.
Conclusion
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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