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 .
Election/Restrictions
Applicant’s election without traverse of group II, claims 28-47 in the reply filed on 7/16/2026 is acknowledged. Claims 1 and 20-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/16/2026.
Specification
The use of the term Drambuie (page 21, line 32), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 29 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.
Regarding claim 29, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “at least one enhanced area” (lines 2-3) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “an enhanced area” (line 4) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
Regarding claim 30, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “at least one enhanced area” (lines 2-3) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “an enhanced area” (line 4) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
Regarding claim 31, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “at least one enhanced area” (lines 2-3) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
Regarding claim 32, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “at least one enhanced area” (lines 2-3) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “an enhanced area” (line 4) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
Regarding claim 33, the claim recites the limitation “in which the enhancement in at least one enhanced area of the support” (line 2). However, claim 28 requires the enhanced area to be on the support. It is unclear whether the difference in terminology requires a different location of the enhanced area. For the purposes of this Office action, the limitation will be interpreted as if it required the enhanced area to be in the same location as required by claim 28.
It is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
It is unclear whether the limitation “at least one enhanced area” (lines 2-3) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area. Claims 34-36 are indefinite by dependence.
Regarding claim 37, it is unclear whether the limitation “at least one enhanced area” (lines 1-2) refers to the at least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the at least one enhanced area of claim 28.
Regarding claim 40, the claim recites the limitation “at least part of each enhanced area” (line 2), which requires the presence of at least two enhanced areas. However, claim 28 only requires a single enhanced area. The claim is therefore indefinite since it refers back to at least one enhanced area that is not previously recited. For the purposes of this Office action, the limitation will be interpreted as if it required two enhanced areas.
It is unclear whether the limitation “an enhanced area” (line 3) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
Regarding claim 41, the claim recites the limitation “the whole of each enhanced area” (lines 1-2), which requires the presence of at least two enhanced areas. However, claim 28 only requires a single enhanced area. The claim is therefore indefinite since it refers back to at least one enhanced area that is not previously recited. For the purposes of this Office action, the limitation will be interpreted as if it required two enhanced areas.
It is unclear whether the limitation “an enhanced area” (line 3) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
Regarding claim 42, the claim recites the limitation “the whole of each enhanced area” (lines 1-2), which requires the presence of at least two enhanced areas. However, claim 28 only requires a single enhanced area. The claim is therefore indefinite since it refers back to at least one enhanced area that is not previously recited. For the purposes of this Office action, the limitation will be interpreted as if it required two enhanced areas.
It is unclear whether the limitation “an enhanced area” (line 3) refers to the least one enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the enhanced area of claim 28.
The claim recites the limitation “a surrounding zone” (liens 3-4). It is unclear whether this limitation refers back to the surrounding zone of line 2 or to a different surrounding zone, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the surrounding zone of line 2. Claim 43 is indefinite by dependence.
Regarding claim 43, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recites the broad recitation “less than 10 mm from a perimeter of the enhanced area”, and the claim also recites other smaller ranges which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of this Office action the claim will be interpreted as if it required the surrounding zone to be a zone extending less than 10 mm from a perimeter of the enhanced area.
Regarding claim 46, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
Regarding claim 47, it is unclear whether the limitation “at least one enhanced area” (line 2) in the claim refers to the enhanced area of claim 28 or to a new enhanced area, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it recited the at least one enhanced area.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 28 and 44-46 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Aoun (WO 2020/025735).
Regarding claim 28, Aoun discloses a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier.
Regarding claim 44, Aoun discloses that the entirety of the carrier is covered by the aerosolizable material (page 29, lines 30-33, page 30, lines 1-6, figures 1, 2).
Regarding claim 45, Aoun discloses that the aerosol forming substrate is a dried gel (page 8, lines 1-6).
Regarding claim 46, Aoun discloses that the aerosol forming substrate covers a first surface of the carrier (abstract, figure 2).
Claims 28, 30, 32-36 and 38-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462).
Regarding claims 28 and 33, Kabirat ‘462 discloses an aerosol provision article having a carrier (figure 8C, reference numeral 242) that contains susceptor elements (figure 8C, reference numeral 244b), which are considered to meet the claim limitation of an enhanced area, and supports aerosol generating material (page 36, lines 5-9, figure 8C, reference numeral 244).
Regarding claim 30, Kabirat ‘462 discloses that the susceptor component is made of aluminum (page 37, lines 13-19), and that the rest of the carrier is made from paper (page 11, lines 9-12). One of ordinary skill in the art would recognize that aluminum has a higher thermal conductivity than paper, indicating that the portions of the carrier having aluminum (which are aligned with the aerosol generating material) have a higher thermal conductivity than the portions exclusively made of paper.
Regarding claim 32, Kabirat ‘462 discloses that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22), indicating that that area of the carrier would have a greater thickness than other areas.
Regarding claim 34, Kabirat ‘462 discloses that the susceptor component is made of aluminum (page 37, lines 13-19), which is considered to be a metal.
Regarding claim 35, Kabirat ‘462 discloses that the susceptor has the same extent as the aerosol generating material (figure 8C).
Regarding claim 36, Kabirat ‘462 discloses that the susceptor has the same extent as the aerosol generating material (figure 8C), which is considered to meet the claim limitation of the outer perimeter encompassing the susceptor, and that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22).
Regarding claim 38, Kabirat ‘462 discloses that there are six separate susceptor areas (page 13, lines 20-34, page 14, lines 1-2, figure 8A).
Regarding claim 39, Kabirat ‘462 discloses that the areas of the susceptor support visibly extending portions of aerosol generating material (figure 8C), which enables one to visually distinguish the areas of the carrier containing susceptor from the other areas of the carrier.
Regarding claims 40 and 41, Kabirat ‘462 discloses that the aerosol generating material is applied only the areas of the carrier having a susceptor and that all the areas having a susceptor are covered by aerosol generating material (figure 8C).
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.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable Kabirat (WO 2021/105483, hereafter referred to as Kabirat ‘483) in view of Aoun (WO 2020/025735).
Regarding claim 28, Kabirat ‘483 discloses a consumable for use in an aerosol provision system (page 7, lines 18-22) having a carrier support (figure 2, reference numeral 110) having portions of aerosol generating material arranged on the surface of the support (page 7, lines 24-32, figure 2, reference numerals 122, 124, 126). Kabirat ‘483 does not explicitly teach an enhanced area on the carrier support.
Aoun teaches a consumable for use with an apparatus for heating aerosolizalbe material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the carrier of Kabirat ‘483 with the adhesive of Aoun in the regions having aerosolizable material. One would have been motivated to do so since Aoun teaches affixing an aerosolizable material to a carrier using adhesive.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable Kabirat (WO 2021/105483, hereafter referred to as Kabirat ‘483) in view of Aoun (WO 2020/025735) as applied to claim 28 above, and further in view of Castellanos (US 6,647,675), as evidenced by Dome Strength Activity Guide (Dome Strength Activity Guide, The Machine Inside: Biomechanics, Field Museum Education Department, https://www.datocms-assets.com/44232/1637177534-bioguide-dome0.pdf).
Regarding claim 29, modified Kabirat ‘483 teaches all the claim limitations as set forth above. Modified Kabirat ‘483 does not explicitly teach (a) embossing the portions of the carrier having adhesive and (b) the embossings providing improved rigidity.
Regarding (a), Castellanos teaches a ridge attachment device having embossing to increase the effective contact area when an adhesive is placed thereon (column 2, lines 42-45). The embossing is a concave dome (column 3, lines 62-65, figure 3a, reference numeral 26).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the carrier of modified Kabirat ‘483 with the embossings of Castellanos. One would have been motivated to do so since Castellanos teaches that adhesive effectiveness is improved by embossing a surface.
Regarding (b), Dome Strength Activity Guide teaches that dome shapes maintain their shape better than flat surfaces since the top of the dome distributes force evenly.
Claims 31 and 37 are rejected under 35 U.S.C. 103 as being unpatentable Kabirat (WO 2021/105483, hereafter referred to as Kabirat ‘483) in view of Aoun (WO 2020/025735) as applied to claim 28 above, and further in view of Castellanos (US 6,647,675).
Regarding claims 31 and 37, modified Kabirat ‘483 teaches all the claim limitations as set forth above. Modified Kabirat ‘483 does not explicitly teach embossing the portions of the carrier having adhesvie.
Castellanos teaches a ridge attachment device having embossing to increase the effective contact area when an adhesive is placed thereon (column 2, lines 42-45).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the areas of the carrier of modified Kabirat ‘483 having adhesive with the embossings of Castellanos. One would have been motivated to do so since Castellanos teaches that adhesive effectiveness is improved by embossing a surface.
Claims 42 and 43 are rejected under 35 U.S.C. 103 as being obvious over Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462).
Regarding claim 42, Kabirat ‘462 discloses all the claim limitations as set forth above. Kabirat ‘462 additionally discloses that the susceptors and aerosol generating material portions have similar width and lengths, leaving open the possibility that they are not the same (page 37, lines 13-19). Kabirat ‘462 does explicitly disclose the aerosol generating material having larger widths and lengths than the susceptor.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the aerosol generating portions have a larger area than the susceptor. One would have been motivated to do so since Kabirat ‘462 discloses that the portions and susceptors have similar sizes. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 43, modified Kabirat ‘462 teaches all the claim limitations as set forth above. Modified Kabirat ‘462 does not explicitly teach or suggest a specific distance by which the portions extend beyond the susceptors.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the portions extend less than 10 mm from the edge of the susceptors. One would have been motivated to do so since Kabirat ‘462 discloses that the portions and susceptors have similar sizes. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Claim 47 is rejected under 35 U.S.C. 103 as being obvious over Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462) in view of Dylan-Hyde (WO 2021/175807).
Regarding claim 47, Kabirat ‘462 discloses all the claim limitations as set forth above. Kabirat ‘462 does not explicitly disclose providing aerosol generating materials and susceptors on both sides of the carrier.
Dylan-Hyde teaches a rolled sheet having aerosol generating substrate coated onto its surface (abstract) that can be coated on both sides of the sheet (page 3, lines 8-13) to increase the generation of aerosol and vapor (page 11, lines 4-13).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide portions and susceptors on both sides of the carrier of Kabirat ‘462. One would have been motivated to do so since Dylan-Hyde teaches that providing aerosol generating substrate on both sides of a sheet increases generation of aerosol and vapor.
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.
Claims 28 and 45-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 10, 12, 14, 20, 46 and 48 of copending Application No. 17/780,379 (hereafter referred to as Abi Aoun) in view of Aoun (WO 2020/025735).
Regarding claim 28, Abi Aoun claims a consumable for use with a non combustible aerosol provision system comprising a sheet of aerosol generating material in the form of an amorphous solid (claim 1) that is supported on a carrier sheet (claim 3). Abi Aoun does not explicitly claim an enhanced area.
Aoun teaches a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the consumable of Abi Aoun with the adhesive of Aoun. One would have been motivated to do so since Aoun teaches affixing an aerosolizable material to a carrier using an adhesive.
Regarding claim 45, Abi Aoun claims that the amorphous solid is a dried gel (claim 10).
Regarding claim 46, it is evident that the sheet of Abi Aoun must be on at least one side of the carrier sheet and is connected using the adhesive, indicating that the sheet and adhesive are in the same location.
Claims 28 and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, 16, 19 and 21 of copending Application No. 18/294,725 (hereafter referred to as Richardson ‘725).
Regarding claims 28 and 33, Richardson ‘725 claims a consumable for use with a non combustible aerosol provision device having an aerosol generating material that is supported on a surface of a support (claim 1). The support layer forms a susceptor (claim 12), which is considered to meet the claim limitation of corresponding to an enhanced area.
Regarding claim 34, Richardson ‘725 claims the susceptor being a metal foil (claim 10).
Claims 30, 32, 35-36, 38-42 and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, 16, 19 and 21 of copending Application No. 18/294,725 (hereafter referred to as Richardson ‘725) in view of Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462).
Regarding claim 30, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 does not explicitly claim the specific susceptor arrangement.
Kabirat ‘462 teaches a consumable having susceptors that are embedded in the surface of a carrier component (page 37, lines 2-22) that the susceptor component is made of aluminum (page 37, lines 13-19), and that the rest of a carrier is made from paper (page 11, lines 9-12). Portions of aerosol generating material are aligned with the susceptors (page 37, lines 13-19). One of ordinary skill in the art would recognize that aluminum has a higher thermal conductivity than paper, indicating that the portions of the carrier having aluminum (which are aligned with the aerosol generating material) have a higher thermal conductivity than the portions exclusively made of paper. Kabirat ‘462 additionally teaches that the susceptor heating elements are heated to generate an aerosol for user inhalation (page 37, lines 34-35, page 38, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the support of Richardson ‘725 with the specific susceptor arrangement of Kabirat ‘462. One would have been motivated to do so since Kabirat ‘462 teaches a suitable arrangement for inductively heating an aerosol generating material in a consumable.
Regarding claim 32, Richardson ‘725 claims all the claim limitations as set forth above. Richardson does not explicitly claim the specific susceptor arrangement.
Kabirat ‘462 teaches a consumable having susceptors that are embedded in the surface of a carrier component (page 37, lines 2-22) that the susceptor component is made of aluminum (page 37, lines 13-19), and that the rest of a carrier is made from paper (page 11, lines 9-12). Portions of aerosol generating material are aligned with the susceptors (page 37, lines 13-19). One of ordinary skill in the art would recognize that aluminum has a higher thermal conductivity than paper, indicating that the portions of the carrier having aluminum (which are aligned with the aerosol generating material) have a higher thermal conductivity than the portions exclusively made of paper. Kabirat ‘462 additionally teaches that the susceptor heating elements are heated to generate an aerosol for user inhalation (page 37, lines 34-35, page 38, lines 1-6). The susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22), indicating that that area of the carrier would have a greater thickness than other areas.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the support of Richardson ‘725 with the specific susceptor arrangement of Kabirat ‘462. One would have been motivated to do so since Kabirat ‘462 teaches a suitable arrangement for inductively heating an aerosol generating material in a consumable.
Regarding claim 35, the susceptor of Richardson ‘725 is considered to define an enhanced area.
Regarding claims 36 and 40-41, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 does not explicitly disclose the susceptor and aerosol generating material having the same perimeter.
Kabirat ‘462 teaches a consumable for an aerosol generating article (abstract) having a susceptor has the same extent as the aerosol generating material (figure 8C), which is considered to meet the claim limitation of the outer perimeter.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the susceptor and aerosol generating material of Richardson ‘725 have corresponding sizes. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 38, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 additionally claims providing discrete portions of aerosol generating materials (claim 5). Richardson ‘725 does not explicitly claim providing discrete susceptor portions.
Kabirat ‘462 teaches a consumable for an aerosol generating article (abstract) that has six separate aerosol generating material portions, each associated with a separate susceptor area, and that the number of portions can be changed (page 13, lines 20-34, page 14, lines 1-2, figure 8A).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide separate areas of aerosol generating material in the consumable of Richardson ‘725. One would have been motivated to do so since Kabirat ‘462 teaches that the number of aerosol generating material and susceptor areas can be changed.
Regarding claim 39, Richardson ‘725 claims two discrete portions of aerosol generating material having different compositions (claim 19) that have different colors to indicate the compositions (claim 21).
Regarding claim 42, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 does not explicitly claim a surrounding zone.
Kabirat ‘462 teaches that the susceptors and aerosol generating material portions have similar width and lengths, leaving open the possibility that they are not the same (page 37, lines 13-19).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the aerosol generating portions have a larger area than the susceptor. One would have been motivated to do so since Kabirat ‘462 discloses that the portions and susceptors have similar sizes. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 46, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 additionally claims that the aerosol generating material is supported on the surface of the support and that the support is flat (claim 1), which is evidently a sheet. Richardson ‘725 does not explicitly claim the susceptor being aligned with the aerosol generating material.
Kabirat ‘462 teaches a consumable for an aerosol generating article (abstract) that has six separate aerosol generating material portions, each associated with a separate susceptor area, and that the number of portions can be changed (page 13, lines 20-34, page 14, lines 1-2, figure 8A).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide separate areas of aerosol generating material. One would have been motivated to do so since Kabirat ‘462 teaches a suitable arrangement for that heat aerosol generating materials.
Claims 37 and 44 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, 16, 19 and 21 of copending Application No. 18/294,725 (hereafter referred to as Richardson ‘725) in view of Aoun (WO 2020/025735).
Regarding claim 37, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 does not explicitly claim a second enhancement.
Aoun teaches a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine consumable of Richardson with the adhesive of Aoun. One would have been motivated to do so since Aoun teaches using adhesive to affix aerosolizable material to a carrier.
Regarding claim 44, Richardson claims all the claim limitations as set forth above. Richardson does not explicitly claim the entire carrier being covered by the aerosol generating material.
Aoun teaches a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier. The entirety of the carrier is covered by the aerosolizable material (page 29, lines 30-33, page 30, lines 1-6, figures 1, 2).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cover all of the support surface of Richardson ‘725 with the aerosol generating material. One would have been motivated to do so since Aoun teaches a suitable arrangement for a consumable.
Claim 45 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, 16, 19 and 21 of copending Application No. 18/294,725 (hereafter referred to as Richardson ‘725) in view of Stalder (US 12,193,501).
Regarding claim 45, Richardson ‘725 claims all the claim limitations as set forth above. Richardson ‘725 does not explicitly claim the aerosol generating material being in gel form.
Stalder teaches a heating system for an inhaler device (abstract) having a gel that produces an aerosol (column 1, lines 26-35).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the gel of Stalder as the aerosol generating material of Richardson ‘725. One would have been motivated to do so since Stalder teaches a suitable format for aerosol generating materials. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claims 28, 33-34, 37-38, 40 and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, 10-14, 17-18, 21-22, 27 and 29 of copending Application No. 18/294,771 (hereafter referred to as Richardson ‘771) in view of Aoun (WO 2020/025735).
Regarding claim 28, Richardson ‘771 claims a consumable for use with a non combustible aerosol provision device comprising a support, a fixing zone located on the surface of the support, and a portion of aerosol generating material within the area of the fixing zone (claim 1). Richardson ‘771 does not explicitly claim the fixing area being enhanced.
Aoun teaches a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the fixing area of Richardson ‘771 with the adhesive of Aoun. One would have been motivated to do so since Aoun teaches an adhesive that affixes aerosolizable material to heater.
Regarding claim 33, Richardson ‘771 claims that the support layer forms a susceptor (claim 13).
Regarding claim 34, Richardson ‘771 claims that the susceptor is a metal foil (claim 11).
Regarding claim 37, Richardson ‘771 claims that the support layer forms a susceptor (claim 13), which is considered to meet the claim limitation of a second enhancement.
Regarding claim 38, Richardson ‘771 claims that there are two discrete fixing zones (claim 17).
Regarding claim 40, Richardson ‘771 claims that all of the aerosol generating material is within the outermost edges of the fixing zone (claim 1).
Regarding claim 46, Richardson ‘771 claims the aerosol generating material supported on a support layer of the support (claim 12), which evidently forms a sheet.
Claims 28, 32-36, 38-41 and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, 10-14, 17-18, 21-22, 27 and 29 of copending Application No. 18/294,771 (hereafter referred to as Richardson ‘771) in view of Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462).
Regarding claims 28 and 33, Richardson ‘771 claims a consumable for use with a non combustible aerosol provision device comprising a support, a fixing zone located on the surface of the support, and a portion of aerosol generating material within the area of the fixing zone (claim 1). Richardson ‘771 claims that the support layer forms a susceptor (claim 13). Richardson ‘771 does not explicitly claim the fixing area being enhanced.
Kabirat ‘462 teaches an aerosol provision article having a carrier (figure 8C, reference numeral 242) that contains susceptor elements (figure 8C, reference numeral 244b), which are considered to meet the claim limitation of an enhanced area, and supports aerosol generating material (page 36, lines 5-9, figure 8C, reference numeral 244).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the susceptors of Kabirat ‘462 as the susceptor of Richardson ‘771. One would have been motivated to do so since Kabirat ‘462 teaches a suitable susceptor arrangement for an aerosol provision article.
Regarding claim 32, Kabirat ‘462 teaches that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22), indicating that that area of the carrier would have a greater thickness than other areas.
Regarding claim 34, Kabirat ‘462 teaches that the susceptor component is made of aluminum (page 37, lines 13-19), which is considered to be a metal.
Regarding claim 35, Kabirat ‘462 teaches that the susceptor has the same extent as the aerosol generating material (figure 8C).
Regarding claim 36, Kabirat ‘462 teaches that the susceptor has the same extent as the aerosol generating material (figure 8C), which is considered to meet the claim limitation of the outer perimeter encompassing the susceptor, and that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22).
Regarding claim 38, Richardson ‘771 claims having two discrete fixing zones (claim 17).
Regarding claim 39, Kabirat ‘462 teaches that the areas of the susceptor support visibly extending portions of aerosol generating material (figure 8C), which enables one to visually distinguish the areas of the carrier containing susceptor from the other areas of the carrier.
Regarding claims 40 and 41, Kabirat ‘462 discloses that the aerosol generating material is applied only the areas of the carrier having a susceptor and that all the areas having a susceptor are covered by aerosol generating material (figure 8C).
Regarding claim 46, Richardson ‘771 claims the aerosol generating material supported on a support layer of the support (claim 12), which evidently forms a sheet.
Claims 28, 31, 37-39, 42-43 and 46-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 33-38, 40, 44-47, 49-50, 52-56 and 58-59 of copending Application No. 18/681,116 (hereafter referred to as Gibson).
Regarding claim 28, Gibson claims an article for use with an aerosol provision having a support that has an application area and a modification area, which is considered to meet the claim limitation of an enhanced area, and aerosol generating material is applied to the application area (claim 33). The modification area at least partially overlaps at least part of the application area (claim 37).
Regarding claim 31, Gibson claims that the modification area of the support is embossed or debossed (claim 59).
Regarding claim 37, Gibson claims that the modification area of the support is embossed or debossed (claim 59) and that modification area is hydrophilic or hydrophobic (claim 33), indicating that multiple modifications are present.
Regarding claims 38 and 46-47, Gibson claims that there are two surfaces with separate modification and application areas (claim 36).
Regarding claim 39, Gibson claims that the surface of at least one modification area is physically altered (claim 46), which is considered to meet the claim limitation of distinguishable.
Regarding claim 42, Gibson claims the application areas being surrounded by the modification areas (claim 55).
Regarding claim 43, Gibson claims all the claim limitations as set forth above. Gibson does not explicitly claim a size of the area between the edge of the application areas and the end of the modification areas.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the area between the edge of the application areas and the end of the modification areas have the claimed size. A change in size or proportion is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Claim 45 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 33-38, 40, 44-47, 49-50, 52-56 and 58-59 of copending Application No. 18/681,116 (hereafter referred to as Gibson) in view of Stalder (US 12,193,501).
Regarding claim 45, Gibson claims all the claim limitations as set forth above. Gibson does not explicitly claim the aerosol generating material being in gel form.
Stalder teaches a heating system for an inhaler device (abstract) having a gel that produces an aerosol (column 1, lines 26-35).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the gel of Stalder as the aerosol generating material of Gibson. One would have been motivated to do so since Stalder teaches a suitable format for aerosol generating materials. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claims 28, 33, 38-39, and 45-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-16 of copending Application No. 18/681,123 (hereafter referred to as Bray) in view of Aoun (WO 2020/025735).
Regarding claim 28, Bray claims a consumable for use with a non combustible aerosol provision device comprising a support, a fixing zone located on the surface of the support, and a portion of aerosol generating material (claim 1). Bray does not explicitly claim the support being enhanced.
Aoun teaches a consumable for use with an apparatus for heating aerosolizable material having an aerosolizable material that on a carrier (abstract) that is affixed to the carrier by use of an adhesive (page 29, lines 18-28), which is considered to define an enhanced area on the carrier.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the fixing area of Bray with the adhesive of Aoun. One would have been motivated to do so since Aoun teaches an adhesive that affixes aerosolizable material to heater.
Regarding claim 33, Bray claims that the support layer forms a susceptor (claim 16).
Regarding claim 38, Bray claims that there are three discrete portions on the surface (claim 15).
Regarding claim 39, Bray claims that different discrete areas of have different shapes (claim 10).
Regarding claim 45, Bray claims that the aerosol generating material is a gel (claim 13).
Regarding claim 46, Bray claims that the discrete portions of the aerosol generating material are all supported on one surface of the support (claim 14).
Claims 28, 32-36, 38-41 and 45-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-16 of copending Application No. 18/681,123 (hereafter referred to as Bray) in view of Kabirat (WO 2021/105462, hereafter referred to as Kabirat ‘462).
Regarding claims 28 and 33, Bray claims a consumable for use with a non combustible aerosol provision device comprising a support, a fixing zone located on the surface of the support, and a portion of aerosol generating material (claim 1). The support layer forms a susceptor (claim 13). Bray does not explicitly claim the fixing area being enhanced.
Kabirat ‘462 teaches an aerosol provision article having a carrier (figure 8C, reference numeral 242) that contains susceptor elements (figure 8C, reference numeral 244b), which are considered to meet the claim limitation of an enhanced area, and supports aerosol generating material (page 36, lines 5-9, figure 8C, reference numeral 244).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the susceptors of Kabirat ‘462 as the susceptor of Bray. One would have been motivated to do so since Kabirat ‘462 teaches a suitable susceptor arrangement for an aerosol provision article.
Regarding claim 32, Kabirat ‘462 teaches that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22), indicating that that area of the carrier would have a greater thickness than other areas.
Regarding claim 34, Kabirat ‘462 teaches that the susceptor component is made of aluminum (page 37, lines 13-19), which is considered to be a metal.
Regarding claim 35, Kabirat ‘462 teaches that the susceptor has the same extent as the aerosol generating material (figure 8C).
Regarding claim 36, Kabirat ‘462 teaches that the susceptor has the same extent as the aerosol generating material (figure 8C), which is considered to meet the claim limitation of the outer perimeter encompassing the susceptor, and that the susceptors may be placed on the surface of the of the carrier (page 37, lines 20-22).
Regarding claim 38, Bray claims that there are three discrete portions on the surface (claim 15).
Regarding claim 39, Kabirat ‘462 teaches that the areas of the susceptor support visibly extending portions of aerosol generating material (figure 8C), which enables one to visually distinguish the areas of the carrier containing susceptor from the other areas of the carrier.
Regarding claims 40 and 41, Kabirat ‘462 discloses that the aerosol generating material is applied only the areas of the carrier having a susceptor and that all the areas having a susceptor are covered by aerosol generating material (figure 8C).
Regarding claim 45, Bray claims that the aerosol generating material is a gel (claim 13).
Regarding claim 46, Bray claims that the discrete portions of the aerosol generating material are all supported on one surface of the support (claim 14).
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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