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 18-34 are pending.
Claim 33 is withdrawn.
Response to Arguments
Applicant’s arguments, filed 5/4/2026, with respect to the rejection(s) of claim(s) 18 and 34 under Woodcock in view of Metrangolo have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Woodcock.
Applicant's remaining arguments filed 5/4/2026 have been fully considered but they are not persuasive.
Regarding the argument that Woodcock simply specifies generally that the HNB product may include discrete sections including tobacco but there is no teaching or suggestion that these "discrete sections" may (i) be coaxially aligned, or (ii) in an abutting relationship, the Examiner respectfully disagrees. Woodcock refers to heat not burn products which include a heat source and an aerosol generating portion, such as a tobacco rod, from which certain components are vaporized during use… The heat not burn products also include an aerosol-generating portion adjacent to the heat source. This portion generally has a cylindrical body similar in external appearance to the tobacco rod of a conventional cigarette ([0003]). Woodcock further teaches that the aerosol-generating portion is made up of discrete sections comprising tobacco, the discrete sections include different amounts of encapsulated aerosol generating agent or different types of encapsulated aerosol generating agent ([0039]). Thus, since the aerosol-generating portion is both (i) rod shaped, and (ii) made up of discrete sections, wherein one section is closer to the mouth end of the product and another section is closer to the heat source, the discrete sections must (i) be coaxially aligned, and (ii) in an abutting relationship.
Regarding the argument that applicant's amended claims 18 and 34 both recite that it is the "homogenized tobacco" that comprises the aerosol formers but Woodcock does not even teach or suggest the use of homogenized tobacco material at all, the Examiner respectfully disagrees. The specification states that “the term "homogenised tobacco material" encompasses any tobacco material formed by the agglomeration of particles of tobacco material” (page 3), thus this reads on reconstituted tobacco.
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 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) 18, 24, 29 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20120298123 (Woodcock hereinafter).
Regarding claim 18, 24 and 34, Woodcock teaches a heated aerosol-generating article (heat not burn product) comprising a rod of aerosol- generating substrate (aerosol generating portion), the rod of aerosol-generating substrate comprising: a first plug of homogenized tobacco material comprising an aerosol former; and a second plug of homogenized tobacco material comprising an aerosol former, wherein the first plug and the second plug are coaxially aligned in an abutting end-to-end relationship, the first plug being disposed downstream of the second plug, wherein the first plug and the second plug differ from each other in composition of aerosol former ([0003], [0029], [0030] and [0039]).
Regarding the limitation, “wherein the first plug is configured to have a lower activation temperature than the second plug,” the specification teaches that this function is a result of the composition of the aerosol former, specifically, “Different aerosol formers provide a different rate of aerosol release and so the type of aerosol former or the amount of a specific aerosol former (or both) can be adjusted for each plug in order to provide the required fast release and slow release profiles…Preferably, the slow release plug has at least about 2 percent by weight more glycerol than the fast release plug, more preferably at least about 5 percent by weight more and more preferably at least about 8 percent by weight more.” Furthermore, the specification states that “the fast release plug has a lower activation temperature than the slow release plug”.
Woodcock teaches that the first plug and the second plug include different amounts of aerosol generating agent or different types of aerosol generating agent ([0039]) and teaches the different possible aerosol formers ([0017]); however, Woodcock does not expressly teach the type of aerosol former or the amount of a specific aerosol former (or both) for each plug. 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 type of aerosol former or the amount of a specific aerosol former (or both) for each plug since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed activation temperature of each plug, which is a direct consequence of the type of aerosol former or the amount of a specific aerosol former (or both) for each plug according to the instant specification, is critical and has unexpected results. In the present invention, one would have been motivated to optimize the type of aerosol former or the amount of a specific aerosol former (or both) for each plug motivated by the desire to control the release of the aerosol generating agent during use of the product ([0039]).
Regarding claim 29, Woodcock teaches that the first plug and the second plug respectively comprises up to 95% by weight of the aerosol former on a dry weight basis ([0020]).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodcock as applied to claim 18 above, and further in view of US 20150150302 (Metrangolo hereinafter).
Regarding claim 30, Woodcock teaches that at least one of the plugs is formed of homogenized tobacco (“reconstituted tobacco,” [0003]) but does not expressly teach that at least one of the plugs of homogenized tobacco material is formed from one or more sheets of homogenous tobacco material.
Metrangolo teaches a heated aerosol generating article comprising a rod of aerosol generating material, wherein the rod is formed of sheets of tobacco material that are gathered together (abstract). It would have been obvious for one of ordinary skill in the art before the effective filing date to have made the plugs of homogenized tobacco of Woodcock by gathering sheets of tobacco as taught by Metrangolo because it would have been obvious to apply a known technique (forming aerosol generating rods by gathering sheets of tobacco material as taught by Mastrangelo) to a known device (the aerosol generating article that comprises an aerosol generating rod of Woodcock) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art, specifically the inclusion of gathered sheets of homogenized tobacco material in rods as described herein advantageously significantly reduces the risk of loose ends compared to rods comprising shreds of tobacco material ([0025]).
Claim(s) 19 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodcock as applied to claim 18 above, and further in view of US 20140345634 (Zuber hereinafter).
Regarding claim 19, Woodcock does not expressly teach that the second plug has a density that is greater than the first plug.
Zuber teaches an aerosol forming smoking article which includes an aerosol forming substrate (7) and a front plug (2), which is formed from an aerosol forming substrate ([0025] and [0053]). Zuber teaches that the front plug (2) has a higher density than the substrate (7) so that the front plug can function as a front plug ([0025]). It would have been obvious for one of ordinary skill in the art at the time of the invention to have made the second plug of Woodcock have a higher density than the first plug of Woodcock, as taught by Zuber, so that the second plug of Woodcock can function as a front plug, specifically the front-plug may prevent egress of the aerosol-forming substrate from the distal end of the rod during handling and shipping (Zuber, [0020]).
Regarding claim 23, modified Woodcock teaches that that the front plug (2) has a higher density than the substrate (7) ([0025] and [0053]). Modified Woodcock also shows that the front plug has the same circumference as the substrate (see Fig. 1). Thus, the front plug, or second plug, has a higher resistance-to-draw than that of the substrate, or first plug.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woodcock in view of US 20140345634 (Zuber hereinafter) as applied to claim 19 above, and further in view of US 20120006343 (Renaud hereinafter).
Regarding claims 20-22, modified Woodcock does not expressly teach the respective densities of the two aerosol generating substrate segments.
Renaud teaches an aerosol generating substrate for a smoking article wherein the density of the substrate is between about 0.5 g/cm3 and about 1.0 g/cm3 (claim 9). It would have been obvious for one of ordinary skill in the art before the effective filing date to have applied the density of the aerosol generating substrate of Renaud to modified Woodcock since one of ordinary skill in the art would have been capable of applying this known density of aerosol generating substrates taught by Renaud to a known product (the aerosol generating substrate segments of Woodcock) and the results would have been predictable to one of ordinary skill in the art, specifically in producing a sensorially acceptable aerosol, but that also has a sufficiently high resistance to combustion to substantially avoid combustion or pyrolytic degradation thereof during use of the heated smoking article (Renaud, [0008]).
Modified Woodcock does not expressly teach the exact densities of the respective aerosol generating substrate segments. However, given that the second plug has a density that is greater than the first plug, and that each plug is between about 0.5 g/cm3 and about 1.0 g/cm3 in density, it would have been obvious for one of ordinary skill in the art before the effective filing date to have tried possible combinations of respective densities within these parameters with a reasonable expectation of success, namely in producing a sensorially acceptable aerosol, but that also has a sufficiently high resistance to combustion to substantially avoid combustion or pyrolytic degradation thereof during use of the heated smoking article (Renaud, [0008]). The courts have held that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR, 550 U.S. at 421, 82 USPQ2d at 1397.
Claim(s) 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mastrangelo in view of Woodcock.
Regarding claims 31 and 32, Mastrangelo teaches an aerosol-generating system (Fig. 11), comprising: an aerosol-generating article (1000); an aerosol-generating device (2010) configured to receive the aerosol-generating article, the aerosol-generating device comprising a heater element, specifically a heater blade (2100) configured to be inserted into the aerosol-generating article ([0149]).
Mastrangelo does not expressly teach the aerosol-generating article of claim 18.
Woodcock teaches the aerosol-generating article of claim 18 (see rejection of claim 18, above).
It would have been obvious for one of ordinary skill in the art before the effective filing date to have substituted one known element (aerosol generating article with two segments of different compositions of Woodcock) for another known element (the aerosol generating article of Mastrangelo) for the predictable result of generating aerosol in a heat-not-burn aerosol generating system.
Allowable Subject Matter
Claims 25-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
No prior art discloses the specific claimed aerosol former compositions.
The closest prior art of record is Woodcock. Woodcock teaches that the first plug and the second plug include different amounts of aerosol generating agent or different types of aerosol generating agent ([0039]) and teaches the different possible aerosol formers ([0017]); however, Woodcock does not expressly teach the type of aerosol former or the amount of a specific aerosol former (or both) for each plug. 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 type of aerosol former or the amount of a specific aerosol former (or both) for each plug since it has been held that, where 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.
Woodcock does not teach specific compositions including that the first aerosol former and the second aerosol former comprise glycerol or propylene glycol, and wherein the second plug comprises at least 2 wt.% more glycerol than the first plug, on a dry weight basis; wherein, on a dry weight basis, the second plug comprises over 15 wt.% glycerol and 4 wt.% or less of propylene glycol, and the first plug comprises 15 wt.% or less of glycerol and at least 5 wt.% propylene glycol; and, wherein, on a dry weight basis, the second plug comprises glycerol in a range of from 17 to 25 wt.% and propylene glycol in a range of from 0 to 4 wt.%, and the first plug comprises glycerol 5 to 15 wt.% and propylene glycol in a range of from 5 to 15 wt.%.
Thus, claims 25-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights