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 .
Drawings
The drawings are objected to because FIG 17 appears to label the aerosol generating material in the mold recesses with reference numeral 256, whereas reference numeral 256 is the doctor blade in FIG 14. Correction or clarification is required.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "242" and "240" have both been used to designate mould body (see page 42 lines 10-11).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “242” has been used to designate both mould body and mould recess (see page 42 lines 11-14)
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "262" and "260" have both been used to designate sheet material (see page 44 lines 19-20).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “262” has been used to designate both sheet material and surface (see e.g., page 43 line 14-29 and page 44 line 19)
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 11 is 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 11 further limits the process of claim 10 by requiring “steps (a) and (b) are performed as a separate process to claim (c). This renders claim 11 unclear because it does not clearly define what makes the process “separate”. It is unclear whether “separate” requires merely a temporal separation, a different manufacturing station, a different manufacturing line, a different facility, a different location, or some other separation between steps (a)/(b) and step (c). Thus, the metes and bounds of the claimed method cannot be determined with reasonable clarity. For the purposes of compact prosecution the claim is interpreted to require a temporal separation (e.g., (a) and (b) happens in time before (c) which is consistent with claim 10.)
Additionally claim 11 is rejected for clarity because it requires “the product of steps (a) and (b)”, which is unclear whether “the product” refers to the mold body after the recesses have been formed, an intermediate article, a support article common to both (a) and (b), a consumable, or some other product produced by both steps (a) and (b). For the purposes of compact prosecution, “the product” is interpreted to refer to the mold body after the recesses have been formed in step (b) which is consistent with claim 1.
Additionally claim 11 is rejected for clarity because it requires “stored and/or transported between different locations” which further renders the scope of the claim unclear. It is unclear whether “between different locations” modifies both “stored” and “transported” or only “transported”. If it modifies “stored” the phrase is grammatically unclear because an article is generally “stored” at a location rather than stored “between” locations. If it modified only “transported” then the claim does not clearly indicate where or how the stored alternative is performed. The use of “and/or” also creates multiple alternatives, e.g., stored, transported, or stored and transported; but the claim doers not clearly define the required special relationship for each alternative and the scope of the claim for each alternative is unclear. For the purposes of compact prosecution the claim is interpreted to require the mold body product of steps (a) and (b) to be stored (e.g., reside in the device ready for the application of step (c) e.g., in the manufacturing station)
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.
Claims 1-3 and 10, 11, 14-17, 23, 24, 28, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Culler (US 20090165394A1) in view of John (US20180271153A1).
Regarding Claim 1, Culler teaches a method of manufacture of an article, in which the article comprises a support in which the method comprises the steps of
(a) providing a mold body (mold 34, see [0065]),
(b) forming one or more mold recesses extending into a first surface of the mold body (see [0065], plurality of cavities, cavity 32),
(c) applying at least one discrete portion of dispersion material to the first surface of the mold body (See [0070], Culler pumps the slurry dispersion to the molds 34), in which
each mold recess extends into the first surface of the mold body (the molds have a surface and a depth dimension from the top surface 38 of the mold body (first surface) to bottom surface of the mold 30 [0069], which an ordinary artisan would understand extends into the first surface),
at least one discrete portion of dispersion material at least partially overlies a mold recess (see [0070] the molds are filled with dispersion slurry and leveled with a scraper bar blade which leveling causes the material to at least partially overly the mold recess)
the dispersion material sets ([0072], the dispersion dries) and
(f) passing a scraper across at least part of the first surface of the mold body after step (c) has been performed and before or after step (e) has been performed ([0070] scraper bar blade passes over the dispersion material in the mold).
However, Culler fails to explicitly disclose that the slurry dispersion material applied to the first surface of the mold body in step (c) is an aerosol generating material slurry, in which the method comprises a further method steps of (e) allowing or causing the aerosol generating material slurry to set, in which the aerosol generating slurry sets to form an aerosol generating material, and step (e) occurs after step (c), and (f) passing a scraper across at least part of the first surface of the mold body after step (c) has been performed and before or after step (e) has been performed.
However, John teaches a similar method of manufacture of an article made from a dispersion slurry that is placed into a mold in which the dispersion slurry is an aerosol generating material (60) applied to the first surface of a plurality of mold body receptacles (see [0122] wet aerosol generating material slurry), and similarly teaches (e) allowing or causing the aerosol generating material slurry to set, in which the aerosol generating slurry sets to form an aerosol generating material (drying in over to reduce water content, [0130] – [0131]), and
step (e) occurs after step (c),
Thus, Culler teaches a manufacturing method using a mold body having cavities extending into a top surface and applying a dispersion slurry to the mold bodies and passing a scraper bar over the surface of the molds to remove excess dispersion from the mold surface. John teaches that aerosol generating consumables may be manufactured via a similar method including by filling a plurality of recesses in a similar receptacle as Culler where the dispersion slurry is an aerosol generating material, the material may be a wet slurry and may include binders thickeners etc. It would have been obvious to a person of ordinary skill in the art to substitute John’s aerosol generating dispersion slurry for Culler’s dispersion slurry in Culler’s recessed mold scraper method to obtain discrete volume controlled portions of aerosol generating material in recesses while using Culler’s scraper/leveler bar to fill the recesses, remove excess material, and provide uniform portions of aerosol generating material in molds and portions as taught by John for use in an aerosol generating device as taught by John.
Regarding Claim 2, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches the article is shaped and dimensioned for use as a consumable for use with a non-combustible aerosol provision system. ([0034], shaped and dimensioned for heat not burn aerosol provision system, see also FIG 1 and FIG 3)
Regarding Claim 3, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches a step of (d) separating the article into two or more consumable portions, in which each consumable 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. (see [0134], the article is cut into two or more consumable portions, 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, [0034] and FIG 1 and FIG 3, shaped for use in the heat not burn apparatus shown in the figures).
Regarding Claim 10, modified Culler teaches the claim limitations as set forth above. Additionally modified Culler teaches the claim in which steps (a) and (b) are performed before step (c). (e.g., the mold cavities exist in Culler before coating and pumping dispersion slurry into/onto the molds [0066]-[0070]),
Regarding Claim 11, modified Culler teaches the claim limitations as set forth above. Additionally, although Culler does not explicitly disclose steps a and b are performed as a separate process to step c, Culler teaches steps (a) and (b) are performed as the molds are provided so that step c can be performed, an ordinary artisan would appreciate providing the mold for step c would likely require steps a and b (which provide the mold) to have been performed previously or step c would not be performable, it would be obvious to a person of ordinary skill in the art to follow the teachings of Culler and provide the mold of Culler as a premade/preformed mold as taught in steps a and b of Culler as set forth above and use the mold from steps a/b in the process of Culler to perform step c as a separate process, e.g., the mold for a/b is made before step c (temporal separation, see claim interpretation in 112b rejection above).
Regarding Claim 14, modified Culler teaches the claim limitations as set forth above. Additionally modified Culler teaches that step (c) comprises applying aerosol generating material to at least the portions of the first surface of the mold body that comprise a mold recess (Culler: dispersion is applied to the first surface of the mold body 38 and forced into cavities 32 [0070] with a scraper or leveler bar.
(John: wet aerosol generating material 60 is the dispersion that fills the recesses 57 as set forth above [0121]-[0122]).
Regarding Claim 16, modified Culler teaches the claim limitations as set forth above. Additionally, the method of John teaches a further step of (g) overlaying the first surface of the mold body with a layer of material (e.g., John teaches a further step of a protective layer of foil, paper, polymer, etc overlies the first surface of the mold body to preserve and protect the aerosol generating material [0072]).
Regarding Claim 17, modified Culler teaches the claim limitations as set forth above. Additionally modified Culler teaches step (g) is performed after step (c) and after step (f) if step (f) is to be performed (e.g., Culler teaches the scraper is used (f) after material application (c) to push level the material against the first surface [0070]; John teaches the protective layer is added to overlay the surface of the mold with protective material to protect and preserve the aerosol generating material (g) [0072].
Regarding Claim 23, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches the support comprises the layer of material. (e.g., John teaches the support additionally comprises a protective layer of foil, paper, polymer, etc overlies the first surface of the mold body to preserve and protect the aerosol generating material [0072], e.g., the support includes the mold body and the protected layer).
Regarding Claim 24, modified Culler teaches the claim limitations as set forth above. Additionally, Culler teaches the support comprises the mold body (mold 34, see [0065]).
Regarding Claim 28, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches that prior to inserting the receptacle into the housing for use that holes/perforations should be formed in the support above each cavity so aerosol and/or a gas or vapor from the aerosol generating material can exit the cavity/recess [0092]-0093], which meets the claim limitation of a further step of (m) perforating one or more of the mold body (when present), the aerosol generating material, the support (when present), the susceptor (when present), and the layer of material (when present).
Regarding Claim 30, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches in which step (c) comprises applying at least two discrete portions of aerosol generating material to the first surface of the mold body, in which those discrete portions of aerosol generating material have different compositions from each other. (see [0066], John teaches that the aerosol generating material 9 in the different recesses 7a may comprise different flavorants, which an ordinary artisan would appreciate would require the discrete portions to have different compositions from each other).
Claims 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Culler (US 20090165394A1) in view of John (US20180271153A1), and further in view of Mironov (US20160150825A1)
Regarding Claim 22, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches a layer of aluminum foil material [0072] is overlaid over the recesses to cover the aerosolizable material. John also teaches inductive heating with an inductor coil and a susceptor [0047], however John fails to explicitly disclose the foil layer of material comprises (or is used as) a susceptor. John is further silent to suitable materials for susceptors that might convert inductive magnetic field energy into heat.
Mironov teaches suitable susceptors and materials suitable for susceptors in aerosol generating devices and converting inductive magnetic field energy from inductor coils into heat, and teaches suitable materials for susceptors include metals such as aluminum [0010].
It would be obvious for a person of ordinary skill in the art to use the foil protective layer of modified Culler with inductive heating which would result in the protective aluminum foil material functioning as a suitable susceptor as taught by Mironov because both John and Mironov are directed to smoking articles that use inductive heating of aerosolizable materials, John is silent to suitable materials for susceptors suitable for use with inductor coils that might convert inductive magnetic field energy into heat and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable materials for susceptors for use, Mironov teaches known susceptor materials for use with an inductive coil and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 25, modified Culler teaches the claim limitations as set forth above. Additionally, John teaches a layer of aluminum foil material [0072] is overlaid over the recesses becoming part of the support and is used to cover the aerosolizable material. John also teaches inductive heating with an inductor coil and a susceptor [0047], however John fails to explicitly disclose the foil layer of material comprises (or is used as) a susceptor. John is further silent to suitable materials for susceptors that might convert inductive magnetic field energy into heat.
Mironov teaches suitable susceptors and materials suitable for susceptors in aerosol generating devices and converting inductive magnetic field energy from inductor coils into heat, and teaches suitable materials for susceptors include metals such as aluminum [0010].
It would be obvious for a person of ordinary skill in the art to use the foil protective layer of modified Culler with inductive heating which would result in the protective aluminum foil material functioning as a suitable susceptor as taught by Mironov because both John and Mironov are directed to smoking articles that use inductive heating of aerosolizable materials, John is silent to suitable materials for susceptors suitable for use with inductor coils that might convert inductive magnetic field energy into heat and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable materials for susceptors for use, Mironov teaches known susceptor materials for use with an inductive coil and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Allowable Subject Matter
Claims 12, 18-21, and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 12, modified Culler (US 20090165394A1) teaches the claim limitations as set forth above. However, John (US20180271153A1) and Culler fails to teach or suggest step (c) is performed after step (a) and before step (b). (e.g., the prior art fails to teach or suggest applying the aerosol generating material slurry to the mold body before the mold recesses that extend into the first surface of the mold, are formed. Additionally, there is no obvious motivation to modify John or Culler to apply the aerosol generating slurry to the mold body before forming the recesses that extend into the surface of the mold mody.)
Regarding Claim 18, modified Culler (US 20090165394A1) teaches the claim limitations as set forth above. John additionally teaches (g) as set forth above ((g) overlaying the first surface of the mold body with a layer of material (e.g., John teaches a further step of a protective layer of foil, paper, polymer, etc overlies the first surface of the mold body to preserve and protect the aerosol generating material [0072]).
However, John (US20180271153A1) and Culler fails to teach or suggest a further step of (h) causing the aerosol generating material to bond to the layer of material, in which step (h) is performed after step (g).
Claims 19-21 would be allowable by virtue of their dependence on claim 18 which includes allowable matter as set forth above.
Regarding Claim 26, modified Culler (US 20090165394A1) teaches the claim limitations as set forth above. However, John (US20180271153A1) and Culler fails to teach or suggest the method comprises a further step of (k) applying a layer of a susceptor to the first surface of the mold body, in which step (k) is performed after step (a) (providing the mold body) and before step (c) (applying the slurry to the mold body). Additionally, there is no motivation to modify Culler and John, alone or in combination, to modify the method to comprise a further step of (k) applying a layer of a susceptor to the first surface of the mold body, in which step (k) is performed after step (a) and before step (c).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H 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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/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights