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 1-14 and 16 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, in the reply filed on 07/15/2026 is acknowledged. The traversal is on the ground(s) that the common inventive feature of Groups I and II is not appropriately taught by Neudia Limited and thus makes a contribution over the prior art. Specifically, the Applicant appears to argue that Nerudia Limited does not teach that “the wrapper forms a gap with the other side of the substrate layer”, as claimed, because the gap is not formed exclusively between the wrapper and one substrate layer. This is not found persuasive because the claim does not explicitly require that no other component helps form the gap. It is therefore appropriate to use a prior art reference such as Nerudia Limited that forms a gap 27 by using the wrapper 16 to hold in place substrate 2’ and substrate 2’’ (see fourth embodiment, Figs. 6a-b). The gap is thus formed both with the wrapper and with one side of the substrate layer, as required by the claim.
The Examiner further notes that in another embodiment (first embodiment, Fig. 1), Nerudia Limited teaches a substrate layer 2 and heater such that only the heater is located between the substrate and the wrapper (Fig. 1; [0160], [0166-0168]). The Examiner notes that this embodiment also teaches the common inventive feature of the claimed groups.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn as being directed to a non-elected invention.
Newly submitted claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I and new claim 16 lack unity of invention because even though the inventions of these groups require the technical feature of the flat-shaped tobacco article of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art of record in view of Nerudia Limited. See Requirement for Restriction dated 06/18/2026.
Since applicant has elected Group I, claims 1-9, claim 16 is withdrawn from consideration as being directed to a non-elected invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lord et al. (US 20210068449 A1).
Regarding claim 1, Lord teaches a flat-shaped tobacco article (consumable 1; [0160]) configured to operate with an aerosol generating device (device 30; [0198]) and extending along an article axis between a mouth end (longitudinal end wall 21; [0176]) and an abutting end (upstream longitudinal end face 19; [0176]), the tobacco article comprising a mouthpiece portion (portion comprising filter 4'; [0177]) adjacent to the mouth end and a tobacco portion (plant product or reconstituted tobacco; [0020], [0160-0161]) adjacent to the abutting end; the tobacco portion comprising:
a substrate layer (planar slab 2'; [0036], [00184]) extending along the article axis and forming two opposite sides (upper and lower surfaces of slab 2'); and
a wrapper (housing 16; [0174]) forming an internal surface (inner surface 17; Fig. 6a; [0174]) and arranged around the substrate layer 2' such that the internal surface is in contact with one of the two opposite sides of the substrate layer (Fig. 6b; [0185]), wherein:
the wrapper forms a gap (planar recess 27; [0185]) with the other side of the substrate layer (wrapper 16 forms a gap by holding in place slab 2' and slab 2''), and
the gap is adapted to receive a heating blade (heating element 28; [0188]) of the aerosol generating device 30.
Regarding claim 2, Lord teaches that the gap is adapted to receive the heating blade of the aerosol generating device such that the heating blade is in contact with a corresponding side of the substrate layer ([0187-0188]).
Regarding claim 4, Lord teaches that the mouthpiece portion 4' is adjacent to the tobacco portion 2' (Fig. 6b).
Regarding claim 5, Lord teaches that the mouthpiece portion comprises a core (filter 4') and a wrapper (portion of wrapper 16) forming an internal surface and arranged around the core such that the entire internal surface of the wrapper of the mouthpiece portion is in contact with the core ([0177-0179]; Figs. 6a-b).
Regarding claim 6, Lord teaches that the wrapper of the mouthpiece portion and the wrapper of the tobacco portion are formed by a same wrapping sheet ([0177], Figs. 6a-b).
Regarding claim 8, Lord teaches that the wrapper is made from paper ([0077]).
Regarding claim 9, Lord teaches that the gap is the only gap adapted to receive the heating blade of the aerosol generating device (Figs. 6a-b; the specification does not provide any evidence that the gap would not be the only gap).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lord, as applied to claim 1 above.
Regarding claim 3, Lord teaches that the substrate layer is thicker than the gap ([0184] teaches that substrate 2’ has a depth of about 2mm. [0042] and [0127] teach that the gap and corresponding heating element may have a depth of 0.5-2mm. Thus, the claimed relative thickness (substrate thickness greater than the gap) overlaps the relative thickness taught by the prior art (substrate thickness is equal to or greater than the gap) and is therefore prima facie obvious).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lord as applied to claim 5 above, and further in view of Kizer et al. (US 20140261502 A1).
Regarding claim 7, Lord teaches that the core may be any filter typically known in the art.
Lord does not explicitly teach that the core comprises corrugated paper.
Kizer, directed to mouthpiece portions (smoke filters) for tobacco articles ([0005], [0045], [0049-0050]), teaches that the mouthpiece portion may comprise corrugated paper ([0030]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the core of Lord to comprise corrugated paper as taught by Kizer because Lord is silent as to the material of the core and one with ordinary skill would be motivated to look to prior art for a known and suitable core material, and this involves applying a known teaching to a similar product to yield predictable results.
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 1 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-8 of copending Application No. 18/687,157 in view of Lord et al. (US 20210068449 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a flat-shaped tobacco article configured to operate with an aerosol generating device and extending along an article axis between a mouth end and an abutting end, the tobacco article comprising a mouthpiece portion adjacent to the mouth end and a tobacco portion adjacent to the abutting end; the tobacco portion comprising: a substrate layer extending along the article axis and forming two opposite sides; and a wrapper forming an internal surface and arranged around the substrate layer wherein: the wrapper forms a gap with the one side of the substrate layer, and the gap is adapted to receive a heating blade of the aerosol generating device.
The conflicting claims do not teach that such that the internal surface is in contact with one of the two opposite sides of the substrate layer.
Lord teaches a flat-shaped tobacco article (consumable 1; [0160]) configured to operate with an aerosol generating device (device 30; [0198]) and extending along an article axis between a mouth end (longitudinal end wall 21; [0176]) and an abutting end (upstream longitudinal end face 19; [0176]), the tobacco article comprising a mouthpiece portion (portion comprising filter 4'; [0177]) adjacent to the mouth end and a tobacco portion (plant product or reconstituted tobacco; [0020], [0160-0161]) adjacent to the abutting end; the tobacco portion comprising: a substrate layer (planar slab 2; [0036], [0160], [0211]) extending along the article axis and forming two opposite sides (upper and lower surfaces; [0162], [0168]); and a wrapper (wrapper 8; [0166]) forming an internal surface and arranged around the substrate layer 2 such that the internal surface is in contact with one of the two opposite sides of the substrate layer ([0166-0167] describes that the wrapper is wrapped around the opposite sides of the substrate layer. It would be expected that the internal surface would be in contact with one of the two sides (e.g., the side on which the heater is not placed)), wherein: the wrapper forms a gap with the other side of the substrate layer ([0166-0167] describes that a heater is placed on the substrate layer 2. This would form a gap between the substrate layer side and the wrapper), and the gap is adapted to receive a heating blade (heating element, such as heating element 28; [0167], [0188]) of the aerosol generating device 30. Lord further teaches that this is an alternate embodiment for having a gap and heater on both sides of the substrate ([0168]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the conflicting claims by having a heater on only one side of the substrate, such that the opposite side of the substrate contacts the wrapper internal surface as taught by Lord because both the conflicting claims and Lord are directed to flat-shaped tobacco articles comprising gaps for heaters, Lord teaches that an article with a heater gap on only one side is an appropriate alternate configuration to that of the conflicting claims, and this involves substituting one alternative configuration for another to yield predictable results.
Therefore, the conflicting claim includes all required components of rejected claim 1 in view of Lord.
Regarding claim 5, conflicting claim 5 teaches that the mouthpiece portion comprises a core and a wrapper forming an internal surface and arranged around the core such that the entire internal surface of the wrapper of the mouthpiece portion is in contact with the core.
Regarding claim 6, conflicting claim 6 teaches that the wrapper of the mouthpiece portion and the wrapper of the tobacco portion are formed by a same wrapping sheet.
Regarding claim 7, conflicting claim 7 teaches that the core comprises corrugated paper.
Regarding claim 8, conflicting claim 8 teaches that the wrapper is made from paper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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