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 .
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al. (WO2021255453).
Claim 1. Hepworth et al. discloses an aerosol-generating material comprising a sheet or shredded sheet of aerosolisable material comprising tobacco material, an aerosol-former material and a binder (Page 1, lines 16-18). The sheet or the shredded sheet of aerosolisable material may comprise a plurality of strands or strips of the aerosolisable material (Page 1, lines 31-32). The aerosolisable material may comprise a filler. In some embodiments, the filler comprises a fibrous material. In some embodiments, the fibrous material comprises wood fibres (Page 2, lines 18-20). The sheet or shredded sheet comprises a first surface and a second surface opposite the first surface. The first and/or second surfaces of the sheet or shredded sheet may be relatively uniform (e.g. they may be relatively smooth) or they may be uneven or irregular. For example, the first and/ or second surfaces of the sheet may be textured or patterned to define a relatively coarse surface. In some embodiments, the first and/ or second surfaces are relatively rough (Page 10, line 26 – Page 11, line 2). The smoothness of the first and second surfaces may be influenced by a number of factors, such as the area density of the sheet or shredded sheet, the nature of the components that make up the aerosolisable material or whether the surfaces of the material have been manipulated, for example embossed, scored or otherwise altered to confer them with a pattern or texture (Page 11, lines 4-9). The inventors have found that the area density of the sheet or shredded sheet of aerosol-generating material influences the roughness of the first and second surfaces of the sheet or shredded sheet. By changing the area density, the roughness of the first and/ or second surfaces can be tailored (Page 15, lines 26-30). The particle size of the particulate tobacco material can also influence the roughness of the sheet or shredded sheet of aerosol-generating material. It is postulated that forming the sheet or shredded sheet of aerosol-generating material by incorporating relatively large particles of tobacco material decreases the density of the sheet or shredded sheet of aerosol-generating material (Page 18, lines 14-19).
Hepworth et al. does not explicitly disclose that at least one surface of the aerosolisable material has an arithmetic mean surface roughness Sa in the range of 5 to 30 µm. However, change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality of the claimed range (See MPEP §2144.05(II)(A)). There being no apparent evidence of criticality of the arithmetic mean surface roughness Sa in the range of 5 to 30 µm, Examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to select an arithmetic mean surface roughness Sa in the range of 5 to 30 µm as a matter of routine optimization. Hepworth et al. teaches that the flexibility of the sheet or shredded sheet is considered to be dependent, at least in part, upon the thickness and area density of the sheet or shredded sheet. A thicker sheet or shredded sheet may be less flexible than a thinner sheet or shredded sheet. Also, the greater the area density of the sheet, the less flexible the sheet or shredded sheet is. It is thought that the combined thickness and area density of the aerosolisable material described herein provides a sheet or shredded sheet that is relatively flexible. When the aerosolisable material is incorporated into an article for use in a non- combustible aerosol-provision device, this flexibility, may give rise to various advantages. For example, the strands or strips are able to readily deform and flex when an aerosol generator is inserted into the aerosol-generating material, thus facilitating insertion of an aerosol generator (e.g. a heater) into the material and also improving retention of the aerosol generator by the aerosolisable material (Page 15, lines 7-19). Hepworth et al. also teaches that the particle size distribution effects the tensile strength and density of the aerosolisable material (Page 18, lines 1-12). It would have been obvious to one of ordinary skill in the art before the effective filing date to optimize the area density and particle size distribution, which in turn effect the surface roughness, of the aerosolisable material in order to achieve a suitable flexibility, tensile strength, and density.
Claim 3. Hepworth et al. discloses the sheet according to claim 1 but does not explicitly disclose that the it is a press-formed sheet. Examiner identifies a “press-formed sheet” as a product-by-process limitation. Even 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) (See MPEP §2113). Here, Examiner finds no evidence that a “press-formed sheet” is structurally distinguished from the aerosolisable material sheet disclosed by Hepworth et al. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that the aerosolisable material sheet of Hepworth et al. may be a “press-formed sheet”.
Claims 6 and 7. Hepworth et al. discloses a non-combustible aerosol provision system such as an electronic cigarette, or an aerosol- generating material heating system, also known as a heat-not-burn system (Page 6, lines 4-11). The non-combustible aerosol-provision device comprises housing 101 having an area 102 for receiving an article 1. When the article 1 is received into the area 102, at least a portion of the aerosol-generating material comes into thermal proximity with the heater 103. When the article 1 is fully received in the area 102, at least a portion of the aerosol-generating material may be in direct contact with the heater 103. The aerosol-generating material may then release a range of volatile compounds (Page 50, lines 23-34). The aerosol-generating material comprises a sheet or shredded sheet of aerosolisable material comprising tobacco material, an aerosol-former material and a binder (Page 1, lines 16-18).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al. (WO2021255453) in view of Hedge (US 4109664).
Claims 4 and 5. Hepworth et al. discloses the sheet of claim 1 comprising tobacco material, an aerosol-former material and a binder (Page 1, lines 16-18). Hepworth et al. teaches that the binder may be a cellulose derivative (Page 21, lines 26-34), however, Hepworth does not explicitly disclose that the cellulose derivative has a degree of substitution of 0.65 or more.
Hedge discloses a smoking material which is cast as a sheet (Column 3, lines 17-32) and comprises a binder consisting wholly or in part of a thermo-gelling substituted cellulose having a degree of substitution of at least 1.5 methoxyl groups per anhydroglucose unit (Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date that the cellulose binder disclosed by Hepworth et al. may have a degree of substitution of at least 1.5 as taught by Hedge, because the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (See MPEP §2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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