DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 27-35, 37, 38, 42, 44, 45, 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Baggett (US 5499636) in view of Fernando (US 20160302488).
Regarding claim 27, Baggett discloses an aerosol-generating article (cigarette 23), comprising:
an aerosol-generating substrate (tobacco plug 80);
a downstream section disposed downstream of the aerosol-generating substrate (portion downstream of plug 80).
Baggett discloses the downstream section comprises a wrapper (tipping paper 64). Baggett does not disclose a taggant being disposed on the wrapper. In the same field of endeavor of aerosol-generating articles, Fernando discloses incorporating a taggant into a component of the aerosol generating article to enable the article to be identified by a detector in an aerosol generating device by spectroscopic signature ([0006,0016-0021]). Fernando discloses the detection of a taggant prevents the use of unauthorized articles within the device ([0007]). The taggant may be incorporating into the component by adding it to a slurry/paste or by painting or spraying it onto the component ([0019]). Fernando discloses the component may be an outer wrapper such as the tipping paper ([0033,0019]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the article of Baggett with a taggant disposed in the wrapper since Fernando discloses incorporating a taggant into a wrapper/tipping paper to allow the article to be identified by the aerosol generating device ([0006,0007,0016-0021,0033]).
As to the taggant be disposed on the downstream section and at least 0.5 mm from the end of the aerosol generating substrate, Baggett discloses a tipping paper 64 on the downstream end of the article. In providing this wrapper with a taggant incorporated therein, the taggant would be disposed downstream from the end of the aerosol generating component (tobacco plug 80). Furthermore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention for the distance to be at least 0.5 mm since Baggett discloses the cigarette is 62 mm in overall length with the gap between the tobacco plug and tipping paper is show to be a substantial distance from the tobacco plug (Fig. 4; see col 8, lines 31-45; col 10, lines 11-18; plug is 7-25 mm long, tipping paper is 36 mm long).
As to the upstream end of the taggant being aligned with an upstream end of the wrapper, in incorporating the taggant onto the tipping paper (e.g., by spraying), the taggant would be disposed along the tipping paper and thus aligned with its ends.
Regarding claims 28 and 29, Baggett discloses the tipping paper extends 6 mm over rod 60 (col 8, lines 31-45)--thus, the taggant, which is disposed on the tipping paper, would be at least 4 mm in length.
Regarding claims 30 and 31, Fernando discloses applying the taggant to the wrapper in a solution by spraying, printing, painting or the like ([0092]). The recitation of printing on the inner surface concerns product-by-process limitations. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113 (I). Spraying/printing a taggant solution onto a paper wrapper would result in the paper absorbing the solution. The manner of application does not structurally distinguish the wrapper from that suggested by Fernando.
In the alternative, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have disposed the taggant on the inner surface since Fernando discloses applying a taggant solution to the wrapper by printing and it would have been obvious to try printing to the inner surface because there are only two surfaces upon which the taggant could be printed (inner or outer surface) and a person with ordinary skill in the art has good reason to pursue the known option within his or her technical grasp. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but or ordinary skill and common sense." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding claims 32 and 33, Baggett and Fernando do not expressly disclose the taggant concentration in units of milligrams per square meter; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the concentration as claimed since Fernando discloses providing the taggant in trace amounts quantities on the component ([0019]), such quantities being sufficient to enable the taggant to be identified by the detector ([0020-0022]) and one having ordinary skill in the art would have found it obvious to determine the optimal or workable loading concentration in mass/area to ensure the detector is capable of identifying the taggant.
Regarding claims 34, 35, and 37, Baggett discloses the cigarette as having a 62 mm overall length (col 8, lines 31-45) with the upstream end of the tipping paper lying in about the middle of the cigarette (rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In disposing the taggant on the tipping paper, the upstream end of the taggant would be at least 10 mm or 14 mm from the ends of the cigarette and the downstream end of the taggant would be at least 14 mm from the upstream end of the cigarette.
Regarding claim 38, Baggett discloses a hollow tubular element (see 74,102) and the upstream end of the tipping paper (taggant disposed thereon) overlays the tubular element.
Regarding claim 42, Baggett discloses mouthpiece element (104).
Regarding claim 44, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have provided the cigarette with an upstream element since Baggett teaches in an alternate embodiment that the cigarette can comprise a backflow filter 200a to prevent tobacco from escaping the free end of the rod (col 22, lines 34-41).
Regarding claim 45, Baggett discloses the cigarette as having a 62 mm overall length (col 8, lines 31-45) with the upstream end of the tipping paper lying in about the middle of the cigarette (rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In disposing a taggant at the end of the tipping paper, it would have been obvious for the upstream end of the taggant (lines 215) would be at least 10 mm from the downstream end of the upstream element.
Regarding claim 47, the upstream end of the tipping paper extends into the upstream half of the aerosol generating article (col 8, lines 31-45; rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In disposing the taggant on the tipping paper, the upstream end of the taggant would be disposed in the upstream half of the article and the downstream end of the taggant would be disposed on the downstream half of the article.
Regarding claim 48, in disposing the taggant on the tipping paper, the taggant would circumscribe the downstream section.
Regarding claim 49, Baggett discloses an aerosol generating device having cavity to receive the aerosol generating article (see Fig. 2). Baggett does not disclose a detector. Fernando discloses an aerosol generating device having a detector (see Fig. 2, with detector [0079]) to be used to detect and identify the marker added to the component. It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have aligned the detector with the taggant when the article is fully inserted in order to ensure the taggant can be read by the device. A misaligned detector/taggant would not be able identify the taggant the device would not function.
Claims 27-31, 34-39, 42-45, and 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Baggett (US 5499636) in view of Fernando (US 20100163063).
Regarding claim 27, Baggett discloses an aerosol-generating article (cigarette 23), comprising:
an aerosol-generating substrate (tobacco plug 80);
a downstream section disposed downstream of the aerosol-generating substrate (portion downstream of plug 80).
Baggett discloses the downstream section comprises a wrapper (tipping paper 64). Baggett does not disclose a taggant being disposed on the wrapper. In the same field of endeavor of aerosol-generating articles, Fernando discloses incorporating a taggant into a component of the aerosol generating article to enable the article to be identified by a detector in an aerosol generating device (see circular lines 215 located on the cigarette away from the heating end; lines are printed by IR, UV, or phosphorescent ink; lines intended to be read by detector; [0077-0079]). Fernando discloses that the tipping paper can be used for printing since this will probably not affect the smoke chemistry when the smoking article is heated ([0073]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the cigarette of Baggett with a taggant disposed on the wrapper since Fernando discloses printing a taggant onto a wrapper/tipping paper to allow the article to be identified by the aerosol generating device ([0073,0077-0079]).
As to the taggant be disposed on the downstream section and at least 0.5 mm from the end of the aerosol generating substrate and aligned with an upstream end of the wrapper, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have located the taggant as claimed since Fernando discloses the printed lines 215 are provided on tipping paper ([0073]) and are located away from the heating end ([0077]; Fig. 2 illustrating lines 215 in roughly the middle of the cigarette to enable reading by the detector). Examiner notes that the upstream end of the tipping paper in Baggett is also in the middle region of the cigarette (Fig. 4). One would have been motivated to position the lines on the tipping paper in a position downstream of the heating end and in a suitable position to be read by the detector of the aerosol device. Given the general guidance by Fernando, one would have found it obvious to locate the lines at any position on the tipping paper, including the upstream end.
As to the 0.5 mm distance, Baggett discloses the cigarette is 62 mm in overall length with the gap between the tobacco plug and tipping paper is show to be a substantial distance from the tobacco plug (Fig. 4; see col 8, lines 31-45; col 10, lines 11-18; plug is 7-25 mm long, tipping paper is 36 mm long).
Regarding claims 28 and 29, Fernando discloses a series of lines 215 located in the middle portion of the cigarette (Fig. 2). While Fernando does not disclose the length of this marking, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have adjusted the length to determine a workable or optimal size to ensure the detector is capable of detecting the marking.
Regarding claims 30 and 31, Fernando discloses printing ([0018,0078]). It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have disposed the taggant on the inner surface since Fernando discloses applying a lines to the wrapper by printing and it would have been obvious to try printing to the inner surface because there are only two surfaces upon which the taggant could be printed (inner or outer surface) and a person with ordinary skill in the art has good reason to pursue the known option within his or her technical grasp. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but or ordinary skill and common sense." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding claims 34-37, Baggett discloses the cigarette as having a 62 mm overall length (col 8, lines 31-45) with the upstream end of the tipping paper lying in about the middle of the cigarette (rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In positioning lines 215 at the end of the tipping paper, the upstream end of the taggant (lines 215) would be at least 10 mm or 14 mm from the ends of the cigarette. Additionally, it would have been obvious for the downstream end of the taggant to be at least 10 mm / 14 mm from the ends of upstream/downstream ends of the cigarette since Fernando discloses lines 215 cover only a middle portion of the cigarette and are space from the ends (see Fig. 2a).
Regarding claims 38 and 39, Baggett discloses a hollow tubular element (see 74 and 102). In positioning the taggant at the end of the tipping paper, the upstream and downstream ends of the taggant would overlay the hollow tubular element.
Regarding claim 42, Baggett discloses a mouth piece element (mouthpiece filter 104).
Regarding claim 43, it would have been obvious for the downstream end of the taggant to be at least 5 mm from the upstream end of the mouthpiece element since Fernando discloses lines 215 cover only a middle portion of the cigarette and are space from the ends (see Fig. 2a) and Baggett discloses the combined length of the mouthpiece filter and free-flow filter is 30 mm (col 8, lines 31-45; dimensions of the cigarette show substantial distance between middle and end of the cigarette).
Regarding claim 44, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have provided the cigarette with an upstream element since Baggett teaches in an alternate embodiment that the cigarette can comprise a backflow filter 200a to prevent tobacco from escaping the free end of the rod (col 22, lines 34-41).
Regarding claim 45, Baggett discloses the cigarette as having a 62 mm overall length (col 8, lines 31-45) with the upstream end of the tipping paper lying in about the middle of the cigarette (rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In positioning lines 215 at the end of the tipping paper, it would have been obvious for the upstream end of the taggant (lines 215) would be at least 10 mm from the downstream end of the upstream element.
Regarding claim 47, the upstream end of the tipping paper extends into the upstream half of the aerosol generating article (col 8, lines 31-45; rod 62 is 32 mm, tipping paper extends 6 mm over the rod--thus, the upstream end of tipping paper is 26 mm from the upstream end of cigarette at 36 mm from downstream end of cigarette). In positioning the taggant at the upstream end of the tipping paper, the upstream end of the taggant would be disposed in the upstream half of the article. As to the downstream end being in the downstream half, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the taggant length to extend into the downstream half since Fernando discloses lines 215 extending over the middle portion of the cigarette (Fig. 2a) and one would have been motivated to extend the length marking based on the desired amount of information to convey.
Regarding claim 48, Fernando discloses the lines extend about the circumference ([0066]).
Regarding claim 49, Baggett discloses an aerosol generating device having cavity to receive the aerosol generating article (see Fig. 2). Baggett does not disclose a detector. Fernando discloses an aerosol generating device having a detector (see Fig. 1 and Fig. 2, with detector [0079]) to be used to detect and identify the marker added to the component. The detector is substantially aligned with the taggant when the article is inserted ([0079]).
Claims 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Baggett (US 5499636) in view of Fernando (US 20100163063) as applied to claim 38 above, and further in view of Lord (WO2020/089091).
Regarding claims 40 and 41, Baggett does not disclose a ventilation zone; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the tubular element with a ventilation zone since Lord, similarly directed towards an aerosol generating article, teaches providing ventilation holes 13a, 13b near the downstream end of the article to allow air to be drawn in during inhalation to help cool and mix the vapor within the chamber (pg 11, lines 15-16, Fig. 1). In providing the ventilation holes near the downstream end of the cigarette, it would have been obvious for the taggant (lines 215) to be located upstream at least 1 mm from the ventilation area.
Claims 46 is rejected under 35 U.S.C. 103 as being unpatentable over Baggett (US 5499636) in view of Fernando (US 20100163063) as applied to claim 38 above, and further in view of Zuber (US 20140345634).
Regarding claim 46, Baggett does not disclose the upstream element comprises a hollow tubular element; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have configured the upstream element as a hollow tubular element since Zuber, similarly directed towards an aerosol generating article, teaches configuring the upstream element (front plug) with a through hole to allow through access to a heating element of an aerosol generating device ([0072,0076]; Fig. 3A, 3C have through holes).
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Baggett (US 5499636) in view of Fernando (US 20100163063) as applied to claim 38 above, and further in view of Rogan (US 20200281254).
Regarding claim 50, Baggett/Fernando do not disclose the detector as disposed no more than 2 mm from a downstream end of the cavity; however, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have positioned the detector as claimed since (1) Fernando discloses locating the markings far from the heating end as possible to reduce likelihood that the lines will be damaged during smoking ([0077]), thus suggesting a corresponding detector would be positioned far from the heating end within the device to align with lines and (2) Rogan, similarly directed towards an aerosol generating device, teaches it is advantageous to position an optical reader close to the cavity opening as the volume of fumes and vapor is lower in this position than closer to the heater ([0058]). One would have been motivated to minimize the distance from the cavity opening to reduce interference from the heater.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C DYE whose telephone number is (571)270-7059. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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/ROBERT C DYE/Primary Examiner, Art Unit 3619
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