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 33-38, 40, 44-47, 49-50, 52-56, and 58-59 are pending and are subject to this Office Action. Claims 1-32, 39, 41-43, 48, 51, and 60-71 are cancelled. This is the first Office Action on the merits of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 44 recites the limitation “the discontinuities” on ln 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner has interpreted “the discontinuities” as “discontinuities.
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 33-34, 37-38, 40, 44-47, 49-50, 52-56, and 58-59 are rejected under 35 U.S.C. 103 as being unpatentable over Horrod (US 2020/0000148 A1, cited on the IDS dated 2/5/2024) in view of Sebastian (US 2018/0266053 A1).
Regarding Claim 33, Horrod, directed to tobacco-based films ([0003], [0007], [0065]) and aerosol generating articles ([0002]-[0003]), teaches an article for use with an aerosol provision device ([0072], Fig. 1-2; Article 1 is for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material (aerosol provision device)),
in which the article comprises a support and aerosol generating material ([0072]-[0075], Fig. 1-2; Article 1 comprises a carrier 10 (support) having a surface and plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10),
a first surface of the support comprises at least one application area and at least one modification area ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. The thermally-conductive portions 12 (modification areas) for a circular band surrounding the respective discrete quantities of smokable material 20 as shown in Figs. 1-2), and
aerosol generating material is applied to at least one application area ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area),
but does not teach the article wherein the surface of the support in at least one modification area is modified to be one of hydrophilic or hydrophobic
Sebastian, directed to tobacco-based films ([0001], [0004]), teaches an article comprising a support and aerosol generating material ([0104] Method of Making Tobacco Nanocellulose-Based Film; and [0105], The preparation of thin and dense films of cellulose nanofibrils is first carried out on a support material with a tailored surface energy in order to control the adhesion and the spreading of CNF on the support material; and [0106], The films are prepared on such film support materials by controlling the adhesion and the spreading of the CNF on the support material. In some embodiments, the films are detachable and removable from the support material. The support and the tobacco based CNF form an article; tobacco is an aerosol generating material),
a first surface of the support comprises at least one application area and at least one modification area, the surface of the support in at least one modification area is modified to be one of hydrophilic or hydrophobic, and aerosol generating material is applied to at least one application area ([0104]-[0108], Fig. 4; The method 60 can comprise a step 61 of pre-treating the surface of the support (e.g., plasma or corona treatments) and/or a step 62 of modifying the surface of the CNF (e.g., silylation). Since the attachment of the CNF onto the support takes place via the reactive groups on the surfaces of both the CNF and the support, such as the hydroxyl groups on the cellulose surface, the addition of further reactive groups on both the CNF and the support will naturally increase the adhesion, as will increasing the hydrophilic nature of the support (hydrophilized e.g., using plasma or corona treatments) when used together with hydrophilic CNF, or adding hydrophobic groups on the support surface when used together with hydrophobic CNF. The area of the support which is modified to be hydrophobic or hydrophilic is the modification area. The area onto which the CNF (aerosol generating material) is applied is the application area).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of Horrod wherein the surface of the support in at least one modification area is modified to be one of hydrophilic or hydrophobic as taught by Sebastian because Horrod and Sebastian are directed to tobacco based films, Sebastian demonstrates that modifying a surface of a support to be hydrophilic or hydrophobic allows one to control to adhesion and spreading of an aerosol generating material applied to said surface (Sebastian, [0105]-[0108]), and this involves combining prior art elements according to known methods to yield predictable results.
Regarding Claim 34, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which the article is shaped and dimensioned for use as a consumable for use with a non-combustible aerosol provision system ([0072], [0107], Fig. 1-2, 13; Article 1 is for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material , such as the apparatus 100 shown in FIG. 13 and described below (non-combustible aerosol provision system)).
Regarding Claim 37, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least part of at least one modification area at least partially overlaps at least part of at least one application area ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. The thermally-conductive portions 12 (modification areas) at least partially overlap at least part of at least one application area as shown in Figs. 1-2).
Regarding Claim 38, Horrod in view of Sebastian teaches an article according to claim 33. Sebastian further teaches the article in which at least one modification area has a modification material applied to the surface of the support in that at least one modification area ([0104]-[0108], Fig. 4; The method 60 can comprise a step 61 of pre-treating the surface of the support (e.g., plasma or corona treatments). The addition of further reactive groups on both the CNF and the support will naturally increase the adhesion, as will increasing the hydrophilic nature of the support (hydrophilized e.g., using plasma or corona treatments) when used together with hydrophilic CNF, or adding hydrophobic groups on the support surface when used together with hydrophobic CNF; The plasma treatment or the hydrophobic groups are the modification material applied to the surface of the support).
Regarding Claim 40, Horrod in view of Sebastian teaches an article according to claim 33. Sebastian further teaches the article in which the modification material applied to the surface of the support is a layer of modification material ([0104]-[0108], Fig. 4; The method 60 can comprise a step 61 of pre-treating the surface of the support (e.g., plasma or corona treatments). The addition of further reactive groups on both the CNF and the support will naturally increase the adhesion, as will increasing the hydrophilic nature of the support (hydrophilized e.g., using plasma or corona treatments) when used together with hydrophilic CNF, or adding hydrophobic groups on the support surface when used together with hydrophobic CNF; The plasma treatment forms a layer of the modification material applied to the surface of the support).
Regarding Claim 44, Horrod in view of Sebastian teaches an article according to claim 40, but does not teach the article teaches the article in which the discontinuities in the layer of modification material correspond to the application areas.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide discontinuities in the layer of modification material which correspond to the application areas because Sebastian demonstrates that modifying a surface of a support to be hydrophilic or hydrophobic allows one to control to adhesion and spreading of an aerosol generating material applied to said surface (Sebastian, [0105]-[0108]), one of ordinary skill in the art would understand that the aerosol generating material of Horrod is hydrophilic (Horrod, [0065]), and providing discontinuities in the layer of a hydrophobic modification material corresponding to the application areas would prevent that aerosol generating material from spreading outside of the application areas. Therefore, it would have been within the knowledge of an ordinary skilled artisan to provide the article in the claimed configuration.
Regarding Claim 45, Horrod in view of Sebastian teaches an article according to claim 33. Sebastian further teaches the article in which the surface of at least one modification area is plasma coated ([0104]-[0108], Fig. 4; The method 60 can comprise a step 61 of pre-treating the surface of the support (e.g., plasma or corona treatments). The addition of further reactive groups on both the CNF and the support will naturally increase the adhesion, as will increasing the hydrophilic nature of the support (hydrophilized e.g., using plasma or corona treatments) when used together with hydrophilic CNF).
Regarding Claims 46-47, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which the surface of at least one modification area is physically altered relative to the surface of the support on which that modification area is located and which is not in a modification area ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. There are gaps between the thermally-conductive portions 12 (modification areas) which are not modification areas).
Sebastian further teaches the article wherein the surface of at least one modification area is one or more of plasma cleaned, plasma surface activated, or plasma etched ([0104]-[0108], Fig. 4; The method 60 can comprise a step 61 of pre-treating the surface of the support (e.g., plasma or corona treatments).
Regarding Claims 49-50, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least one modification area with a hydrophilic surface at least partially overlaps with at least one application area and the hydrophilic surface allows water within the aerosol generating material applied to the application area to wick out of the aerosol generating material and onto the hydrophilic surface, in which the part of each modification area that does not overlap with an application area allows water wicked from the aerosol generating material onto the hydrophilic surface to evaporate ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. Each modification area at least partially overlaps with at least one application area. Horrod has been modified in view of Sebastian such that the modification areas comprises a hydrophilic or hydrophobic surface. As Horrod in view of Sebastian discloses all of the positively recited structural components of the article of Claims 49-50, it is reasonably understood that the hydrophilic surface is necessarily capable of allowing water within the aerosol generating material applied to the application area to wick out of the aerosol generating material and onto the hydrophilic surface; and that the part of each modification area that does not overlap with an application area allows water wicked from the aerosol generating material onto the hydrophilic surface to evaporate).
Regarding Claim 52, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least one modification area with a hydrophobic surface at least partially surrounds an application area ([0072]-[0075], Fig. 1-2; Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. The thermally-conductive portions 12 (modification areas) for a circular band surrounding the respective discrete quantities of smokable material 20 (application area) as shown in Figs. 1-2. The modification area may be hydrophobic or hydrophobic as disclosed by Sebastian).
Regarding Claim 53, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least one modification area has a surface that is hydrophilic and in which at least one application area has an outer perimeter ([0072]-[0075], Fig. 1-2; Each discrete quantity of smokable material 20 is located directly on top of an application area having an outer perimeter. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. Horrod has been modified in view of Sebastian such that the modification areas comprise a hydrophilic or hydrophobic surface),
but does not teach the article wherein one or more modification areas with a hydrophobic surface collectively partially surround the application area perimeter, and the rest of the application area perimeter is surrounded by at least one modification area with a hydrophilic surface.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide discontinuities in the layer of modification material which correspond to the application areas because Sebastian demonstrates that modifying a surface of a support to be hydrophilic or hydrophobic allows one to control to adhesion and spreading of an aerosol generating material applied to said surface (Sebastian, [0105]-[0108]), one of ordinary skill in the art would understand that the aerosol generating material of Horrod is hydrophilic (Horrod, [0065]), and providing modification areas with a hydrophobic surface partially surrounding the application area perimeter would prevent that aerosol generating material from spreading outside of the application area perimeter. Therefore, it would have been within the knowledge of an ordinary skilled artisan to provide the article in the claimed configuration.
Regarding Claim 54, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least one modification area has a hydrophobic surface and is located at a position on the support surface which is to be kept free of aerosol generating material ([0072]-[0075], Fig. 1-2; Article 1 comprises plural discrete quantities of smokable material 20 (aerosol generating material) on the surface of the carrier 10. Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. Each modification area extends beyond the perimeter of the application areas such that there are positions of the carrier 10 (support surface) only including a modification area which area to be kept free of aerosol generating material. Horrod has been modified in view of Sebastian such that the modification areas comprises a hydrophilic or hydrophobic surface).
Regarding Claims 55-56, and 58, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which at least one application area is at least partially surrounded by at least one modification area, in which one or more application areas are surrounded by a modification area, in which each modification area forms a band around the application area it surrounds ([0072]-[0075], Fig. 1-2; Each discrete quantity of smokable material 20 is located directly on top of an application area. The carrier 10 has plural thermally-conductive portions 12 (modification areas) on which the respective discrete quantities of smokable material 20 are located. The thermally-conductive portions 12 (modification areas) for a circular band surrounding the respective discrete quantities of smokable material 20 (application area) as shown in Figs. 1-2).
Regarding Claim 59, Horrod in view of Sebastian teaches an article according to claim 33. Horrod further teaches the article in which in at least one modification area of the support is embossed or debossed ([0083]-[0086], Figs. 3-4; Article 2 of Fig. 3 is identical to article 1 of Fig. 1, except that each of the thermal barriers 14 comprises a channel 18 in the carrier 10. The channels 18 of the thermal barriers 14 may be formed by pressing, etching or embossing the carrier 10).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Horrod (US 2020/0000148 A1, cited on the IDS dated 2/5/2024) in view of Sebastian (US 2018/0266053 A1) as applied to Claim 33, and further in view of Emmett (US 2022/0400752 A1).
Regarding Claim 35, Horrod does not teach the article in which the article is larger than is compatible for use with a non-combustible aerosol provision system, the article is separable into two or more article portions, in which each article portion is shaped and dimensioned for use as a consumable for use with an apparatus for heating an aerosol generating material to volatilize at least one component of the aerosol generating material.
Emmett, directed to aerosol generating articles ([0001]), teaches an article for use with an aerosol provision device ([0098], [0102], Figs. 1-2; Aerosol generating article 20 is for use with aerosol generating device 1),
in which the article comprises a support and aerosol generating material ([0102], Fig. 2; The aerosol-generating article 20 is in the shape of a flat sheet. The flat sheet may comprise outer layers 22, 23 (support) defining two opposing major surfaces. The aerosol-generating article 20 may comprise an aerosol-forming substrate 21 (aerosol generating material)),
the article is separable into two or more article portions ([0103], The dosing assembly 2 may comprise a cutting mechanism 4 disposed in a cutting region and configured to cut a portion from an aerosol-generating article received by the aerosol-generating device).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of Horrod which is separable into two or more article portions as taught by Emmett because Horrod and Emmett are directed to aerosol generating articles, Emmett demonstrates that separating the article into two or more portions allows the one to meter consumption of the article, wherein each of the portions may be individually consumed (Emmett, [0007], [0103]-[0108]), and this involves combining prior art elements according to known methods to yield predictable results.
The limitations: “in which the article is larger than is compatible for use with a non-combustible aerosol provision system”, and “in which each article portion is shaped and dimensioned for use as a consumable for use with an apparatus for heating an aerosol generating material to volatilize at least one component of the aerosol generating material” appear to be directed to the system or apparatus with which the article is used. As Claims 33 and 35 are directly the article itself, the cited limitations do not impart patentable limitations to the article. Further, the change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Horrod (US 2020/0000148 A1, cited on the IDS dated 2/5/2024) in view of Sebastian (US 2018/0266053 A1) as applied to Claim 33, and further in view of Spencer (US 2019/0045837 A1).
Regarding Claim 36, Horrod further teaches the article in which the support has a first surface and a second surface ([0072]-[0075], Fig. 1-2; Article 1 comprises a carrier 10 (support) having a surface),
but does not teach the article wherein both of the first and second surfaces comprise at least one application area and at least one modification area, in which the surfaces of the support in at least one modification area on each of the first and second surfaces of the support are modified, and aerosol generating material is applied to at least one application area on each of the first and second surfaces of the support.
Spencer, directed to aerosol generating articles ([0003]-[0007]), teaches an article for use with an aerosol provision device ([0045], Fig. 1; The aerosol provision system 10 (device) further includes a flavor delivery device 25. The device 25 operates to deliver flavorant to the aerosol stream in a controllable manner, as is described further below; and [0057], Fig. 6 shows a cross-sectional view of another example flavor delivery device 25. A portion of flavorant provider 66 applied to both sides of the support member 60 to form an aerosol generating article. Heating element 64 disposed within the support element 60 to heat the flavorant provider 66 to generate an aerosol),
in which the article comprises a support having a first surface and a second surface; and aerosol generating material applied to both the first and second surfaces ([0057], Fig. 6 shows a cross-sectional view of another example flavor delivery device 25. A portion of flavorant provider 66 applied to both sides of the support member 60 to form an aerosol generating article).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to provide the article of Horrod wherein both of the first and second surfaces comprise at least one application area and at least one modification area, in which the surfaces of the support in at least one modification area on each of the first and second surfaces of the support are modified, and aerosol generating material is applied to at least one application area on each of the first and second surfaces of the support similarly taught by Spencer because Horrod and Spencer are directed to aerosol generating articles, Spencer demonstrates that the configuration can double the amount of aerosol generating material carried by a single article (Spencer, [0057]), and this would only involves duplicating the configuration on the first surface and applying it to the second surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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