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 I (claims 44-49) in the reply filed on 28 August 2026 is acknowledged.
Claims 50-63 have been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 44 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Courbat, et al (US20190191783A1, from IDS dated 04/17/2024).
Regarding claim 44, Courbat teaches an aerosol generating system that includes an aerosol generating article having an aerosol generating substrate and a luminescent material (taggant) and a detector configured to detect a temperature-dependent phosphorescence characteristic of the excited luminescent material. (Abstract) The luminescence of the material is considered to be photoluminescence [0010] and is illuminated and excites by a light source in the device. [0015] When the luminescent material is excited by the light in the device the luminescent material will illuminate a light which can be detected by a light sensor detector in the device to detect the luminescent material. [0016] Courbat teaches that the luminescent decay (half-life) of the luminescent material, when excited, is within a range from 10 nanoseconds to 10 milliseconds (0.01 microseconds to 10,000 microseconds). The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 49, Courbat teaches the aerosol generating article comprises an aerosol forming substrate, a hollow tubular transfer element, and a mouthpiece ([0074], Fig. 1) where the hollow tubular transfer element and the mouthpiece are located downstream of the aerosol generating substrate.
Claims 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Courbat, et al (US20190191783A1, from IDS dated 04/17/2024) as applied to claim 44 above, and further in view of Cadieux, et al (US20160108293A1).
Regarding claims 45 and 46, Courbat teaches the taggant would emit an infrared light when the luminescent material is excited [0023]; however the prior art is silent with respect to the possible specific wavelength of the infrared light.
Cadieux, directed to inks, coatings and adhesives containing taggants for use with tobacco products, teaches organic taggants can be selected from anti-Stokes/”up-shifting” taggants which emit light at a higher frequency and shorter wavelength. The prior art provides the example of anti-Stokes shifting taggants emitting light beam can be in the infrared spectrum and notes that this wavelength is generally from about 701 nm to 3000 nm. [0062] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Courbat by using a taggant that is excitable using infrared radiation as taught by Cadieux because both Courbat and Cadieux are directed to aerosol generating products, Cadieux teaches the use of taggants using infrared taggants provides a more secure authentication than taggants that excite in lower wavelength light [0061] and aid to prevent counterfeiting. [0003], and this involves the use of known technique to improve similar products in the same way.
Regarding claim 47, Cadieux, directed to inks, coatings and adhesives for tobacco products containing taggants, teaches an adhesive that contains a taggant [0005] can be disposed on the filter tack line [0021] defined as the interface between the tobacco rod and a filter. [0059] The taggant adhesive that extends around the aerosol generating article at the filter track line is considered to read on the limitation of a continuous band.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Courbat by using a taggant band as taught by Cadieux because both Courbat and Cadieux are directed to aerosol generating products, Cadieux teaches that the taggant can decompose upon heating [0058] which would lead a person having ordinary skill in the art to limit the taggant’s exposure to heat, and this involves the use of known technique to improve similar products in the same way.
Regarding claim 48, Courbat teaches the aerosol generating article comprises a wrapper and that the luminescent material may be incorporated into any component of the article including paper, such as wrapper paper. [0007] the prior art teaches the luminescent material is incorporated into the wrapper material [0086]
The prior art is silent with respect to the luminescent/ taggant material specifically being located on the inner surface of the wrapper paper.
Cadieux teaches an adhesive composition that includes a taggant compound can be disposed on the tobacco rod wrapper. [0016] While Cadieux does not explicitly teach the adhesive compound would be located on the inside of the wrapper, a person having ordinary skill would consider using the adhesive on the inside of the tobacco rod wrapper.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Courbat by using a taggant that can be located inside a wrapper as taught by Cadieux because both Courbat and Cadieux are directed to aerosol generating products, Cadieux teaches that the organic taggant in the adhesive allows for detection upon irradiation and nonvisible radiation [0074] while also decomposing into carbon dioxide and water upon heating. [0073], and this involves the use of known technique to improve similar products in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip 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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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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