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Claim 33 is withdrawn.
Election/Restrictions
Applicant’s election of Group I in the reply filed on 12/23/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 33 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/23/2025.
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, 24-30 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20120298123 (Woodcock hereinafter) and further in view of US 20150150302 (Metrangolo hereinafter).
Regarding claim 18, 24-26 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 a combination of aerosol generating agents may be used, in equal or differing proportions ([0017]). Woodcock, however, does not expressly teach the specific amounts of the aerosol generating agents in each plug.
Metrangolo teaches a heated aerosol generating article comprising a rod of aerosol generating material, wherein the rod is formed of at least two sheets of homogenized tobacco material that are gathered together and circumscribed by a wrapper to form the rod, wherein the tobacco material of the second sheet is physically or chemically different to the tobacco material of the first sheet (abstract and [0018]). Metrangolo teaches, in Example 1, that the first sheet comprises about 10% by weight glycerin (and 0% propylene glycol) and the second sheet comprises about 10% by weight propylene glycol (and 0% glycerin) ([0151]-[0152]).
It would have been obvious for one of ordinary skill in the art before the effective filing date to have applied the aerosol former composition of the homogenized tobacco sheets, taught by Metrangolo, to the homogenized tobacco sheets of the aerosol plugs of Woodcock, because it would have predictably resulted in producing a rod which may be heated to evolve volatile compounds which condense to form an inhalable aerosol and specifically provide a different aerosol evolution response to a heating profile ([0036]).
Since modified Woodcock teaches that the slow release plug has at least about 2 percent by weight more glycerol than the fast release plug, the fast release plug, or first plug, has a lower activation temperature than the slow release plug, or second plug.
Regarding claim 27, Modified Woodcock teaches where rods according to the specification are intended for use as aerosol-forming substrates in heated aerosol-generating articles, sheets of homogenized tobacco material for use in forming rods as described herein may have an aerosol former content of between about 5% and about 30% by weight on a dry weight basis. Rods intended for use in electrically-operated aerosol-generating system having a heating element may preferably include an aerosol former of greater than 5% to about 30% (Metrangolo, [0096]). Modified Woodcock further teaches, in Example 1 of Metrangolo, that the first sheet comprises about 10% by weight glycerin (and 0% propylene glycol) and the second sheet comprises about 10% by weight propylene glycol (and 0% glycerin) (Metrangolo, [0151]-[0152]). Thus it would have been obvious for one of ordinary skill in the art at the time of the invention to have increased the amount of aerosol former in Example 1 of Metrangolo to about 30% by weight, as taught by Metrangolo, with a reasonable expectation of success and predictable results, specifically, it would have predictably resulted in producing a rod which may be heated to evolve volatile compounds which condense to form an inhalable aerosol and specifically provide a different aerosol evolution response to a heating profile ([0036]).
Regarding claim 28, Woodcock teaches that a combination of aerosol generating agents may be used, in equal or differing proportions ([0017]).
Woodcock, however, does not expressly teach the specific amounts of the aerosol generating agents in each plug.
Metrangolo teaches where rods according to the specification are intended for use as aerosol-forming substrates in heated aerosol-generating articles, sheets of homogenized tobacco material for use in forming rods as described herein may have an aerosol former content of between about 5% and about 30% by weight on a dry weight basis. Rods intended for use in electrically-operated aerosol-generating system having a heating element may preferably include an aerosol former of greater than 5% to about 30% ([0096]). It would have been obvious for one of ordinary skill in the art before the effective filing date to have applied the aerosol former composition of the homogenized tobacco sheets in the aerosol rod as taught by Metrangolo in the homogenized tobacco sheets of aerosol plugs which make of the aerosol rod of Woodcock, and it would have predictably resulted in producing a rod which may be heated to evolve volatile compounds which condense to form an inhalable aerosol and specifically provide a different aerosol evolution response to a heating profile ([0036]).
Furthermore, it would have been obvious to one of ordinary skill in the art to have tried various combinations of the two aerosol formers, given that modified Woodcock teaches a combination of aerosol generating agents may be used, in equal or differing proportions (Woodcock, [0017]), that each sheet has between about 5% and about 30% aerosol former by weight on a dry weight basis (Metrangolo, [0096]) and that the aerosol formers are propylene glycol and glycerin (Metrangolo, [0151]-[0152]). 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.
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]).
Regarding claim 30, Woodcock teaches that at least one of the plugs is formed of homogenized tobacco ([0029]) 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 in view of Metrangolo as applied to claim 18 above, and further in view of US 20140345634 (Zuber hereinafter).
Regarding claim 19, modified 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 Metrangolo 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 first and the second plug to heat the plugs of homogenized tobacco material ([0149]).
Mastrangelo teaches the aerosol-generating article (1000) comprises one homogenized tobacco material plug comprising an aerosol former ([0034]) but does not expressly teach two plugs of differing composition.
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]).
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 rod with two segments of different compositions of Woodcock) for another known element (the aerosol generating rod of Mastrangelo) for the predictable result of generating aerosol in a heat-not-burn aerosol generating system.
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