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 .
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.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15, in the second preliminary amendment of copending Application No. 19151388. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 16; Application No. 19151388, claim 15, recites all of the limitations of claim 16 with additional specificity; An aerosol-generating article (“An aerosol-generating article”— line 1), comprising: a downstream section (“downstream section”— line 5 ), an upstream section (“upstream section”— line 7), and a downstream wrapping paper (“second wrapper”— line 9) wrapped around the downstream section (“wherein each of the first wrapper and the second wrapper circumscribe at least one of…the downstream section...”— lines 10-11; the term ‘circumscribe’ reads on the term ‘wrapped around’ in the immediate application), wherein the downstream wrapping paper comprises protruding sections (“the second wrapper at least partially overlies the first wrapper…”— line 18; the term ‘at least partially overlies’ reads on ‘protruding sections’ in the immediate application), the protruding sections protruding in an upstream direction of the aerosol-generating article (“wherein a length of overlap of the first wrapper and the second wrapper in a direction parallel to a longitudinal direction of the aerosol-generating article is…”— lines 19-20; the term ‘a direction parallel to a longitudinal direction’ reads on ‘upstream direction’ in the immediate application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “42”, shown in Fig. 5A, Fig. 5B, and Fig. 5C, has been used to designate ‘a filter plug’—page 24, line 36, ‘a mouthpiece filter’—page 27, line 8, and ‘upstream element’—page 27, line 9. 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.
The drawings are objected to because reference character “60” is shown twice in Fig. 5B and Fig. 5C. The second instance of reference character “60” in each figure is not drawn to any aspect of the invention. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description:
Regarding Fig. 3A, Fig. 3B, and Fig. 3C; reference characters ‘26’, ’30’, ’32’, ’34’, ’38’, and ‘40’ are shown but not mentioned in the specification.
Regarding Fig. 5A, Fig. 5B, and Fig. 5C; reference character ‘23’ is shown but not mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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 Objections
Claims 16, 18-20, and 32 are objected to because of the following informalities:
Regarding claim 16; “wherein…the protruding sections protruding in an upstream direction…”, recited in line 4-5, should read, “wherein…the protruding sections protrude
Regarding claims 18-19; “…the plurality of elongated sections are positioned…”, recited in lines 1-2, should read, “…the plurality of elongated sections is
Regarding claim 20; “…have one or more of a: jagged shape…”, recited in line 2, should read, “…have one or more of a jagged shape…”.
Regarding claim 32; “…an aerosol-generating article according to claim 16…”, recited in line 2, should read, “…the aerosol-generating article according to claim 16…”.
Appropriate correction is required.
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 18, 19, and 34 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 claims 18-19; the limitation, "the plurality of elongated sections", recited in lines 1-2, lacks sufficient antecedent basis due to improper claim dependency rendering them indefinite. “a plurality of elongated sections” is introduced in claim 17, not claim 16, from which claims 18-19 depend. For examination purposes, the limitation in claims 18-19 is interpreted as, “
Regarding claim 34; the limitation, “the gaps between”, recited in line 2, lacks sufficient antecedent basis rendering the claim indefinite. For examination purposes, claim 34 is interpreted as, “
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.
Claim(s) 16-25 and 32-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HU (CN111657542A, hereinafter referring to the English Translation provided.).
Regarding claim 16, HU teaches; An aerosol-generating article (‘A stripped tobacco product…’— [0011]), comprising: a downstream section (see Modified Portion of Fig.1 below and reference character (21)— ‘filter zone’), an upstream section (see Modified Portion of Fig.1 below and reference character (11)— ‘aroma evaporation zone’), and a downstream wrapping paper wrapped around the downstream section (“…the exterior of the filter zone 21 being covered by a second wrapping paper 2 and a connecting pre-break paper 3…”— [0045]), wherein the downstream wrapping paper comprises protruding sections, the protruding sections protrude in an upstream direction of the aerosol-generating article (see Modified Portion of Fig.1 below).
Modified Portion of Fig.1
PNG
media_image1.png
630
482
media_image1.png
Greyscale
Regarding claim 17, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; the protruding sections are a plurality of elongated sections (see Modified Portion of Fig.1 below).
Modified Portion of Fig.1
PNG
media_image2.png
346
347
media_image2.png
Greyscale
Regarding claim 18, HU, as shown above teaches all of the limitations of claim 17.
HU further teaches; a plurality of elongated sections is positioned circumferentially around the aerosol-generating article (see Modified Portion of Fig.1 directly above).
Regarding claim 19, HU, as shown above teaches all of the limitations of claim 17.
HU further teaches; a plurality of elongated sections is positioned around the around the aerosol-generating article in an equidistant manner (see Modified Portion of Fig.1 directly above— since the downstream wrapper wraps around the downstream section, the elongated sections are all radially equidistant from the center of the aerosol-generating article).
Regarding claim 20, HU, as shown above teaches all of the limitations of claim 16.
HU further teaches; the protruding sections have one or more of: a jagged shape, a comb-like shape, or a tentacle- like shape (“The pre-break line 31 {corresponding to the protruding sections of the downstream wrapper paper} is horizontal and has a certain vertical range (e.g., it is serrated)”— [0046], and see Fig.1).
Regarding claim 21, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; the protruding sections protrude into the upstream section of the aerosol-generating article (“…paper 3 may partially cover the aroma evaporation zone 11 and the filter zone 21…”— [0045]).
Regarding claim 22, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; the upstream section is adjacent to the downstream section, and wherein the protruding sections protrude into parts of the upstream section being adjacent to the downstream section (“…filter zone 21 disposed above the fragrance evaporation zone 11, the exterior of the filter zone 21 being covered by a second wrapping paper 2, the lower part of the second wrapping paper 2 being connected to the upper part of the first wrapping paper 1.”— [0054]).
Regarding claim 23, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; a diameter of the aerosol-generating article is larger in parts of the aerosol-generating article wrapped with the downstream wrapping paper than in parts of the aerosol-generating article lacking the downstream wrapping paper (see Modified Portion of Fig.3 below). Additionally, it is noted that HU discloses the aerosol-generating article has a peel layer that necessarily has an associated thickness ([0045]); once the peel layer is removed by breaking along the pre-break paper, the parts not lacking the downstream wrapping paper necessarily have a smaller outer diameter.
Modified Portion of Fig.3
PNG
media_image3.png
664
345
media_image3.png
Greyscale
Regarding claim 24, HU, as shown above, teaches all of the limitations of claim 16.
HU, further teaches; the downstream section (Fig.6, reference character 21) comprises one or both of a filter section and a hollow tube section (‘filter zone’— 21, and [0045]— “…filter cotton, filter rods, fiber filter materials, etc. …”).
Regarding claim 25, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; the upstream section (Fig.6, reference character 11) comprises a substrate section, the substrate section comprising aerosol- forming substrate (Fig.6 and [0045]— "The aroma evaporation zone 11 can be a mixture of tobacco and spices, or a purified tobacco product, a spice extract, etc.”).
Regarding claim 32, HU, as shown above, teaches all of the limitations of claim 16.
HU further teaches; An aerosol-generating system, comprising the aerosol-generating article according to claim 16; and an aerosol-generating device ([0042]— “Figure 9 is a schematic diagram of the smoking device…”) comprising a cavity configured to receive the aerosol- generating article ([0050]— “A smoking device is provided, which includes a chimney 4…”, and [0053]— "The chimney 4 is hollow…”).
Regarding claim 33, HU, as shown above, teaches all of the limitations of claim 32.
HU further teaches; the cavity comprises inner walls, and wherein the protruding sections of the downstream wrapping paper are configured to be in contact with the inner walls when the aerosol-generating article is received in the cavity (see Modified Portion of Fig.8 below).
Modified Portion of Fig.8
PNG
media_image4.png
548
533
media_image4.png
Greyscale
Regarding claim 34, HU, as shown above, teaches all of the limitations of claim 33.
HU further teaches; an airflow path is present between the inner walls of the cavity and gaps between adjacent protruding sections, when the aerosol-generating article is received in the cavity (see Modified Portion of Fig.8 directly above).
Regarding claim 35, HU, as shown above, teaches all of the limitations of claim 32.
HU further teaches; the protruding sections of the downstream wrapping paper are configured to extend from outside the cavity into the cavity when the aerosol-generating article is completely received in the cavity (see Modified Portion of Fig.8 directly above).
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.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over HU (CN111657542A) in view of ROGAN (WO2021209499A1).
Regarding claim 26, HU as shown above, teaches all of the limitations of claim 25.
HU does not teach that; the aerosol- forming substrate comprises an aerosol-former selected from a group consisting of: polyhydric alcohols, glycerine, esters of polyhydric alcohols, and aliphatic esters of mono-, di-, or polycarboxylic acids.
ROGAN, does however teach of an aerosol generating system with an aerosol generating article wherein; the aerosol-former is selected from a group consisting of: polyhydric alcohols, glycerine, esters of polyhydric alcohols, and aliphatic esters of mono-, di-, or polycarboxylic acids (“The aerosol generating substrate 16 comprises…tobacco…[and] may include an aerosol-former, such as glycerine or propylene glycol…”—page 11, lines 1-6).It is noted that in the above citation, ROGAN expressly teaches an aerosol-former may be included in an aerosol-forming substrate comprising tobacco.
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 aerosol-forming substrate, as taught by HU in claim 25, by adding an aerosol-former consisting of glycerine, as taught by ROGAN, because both HU and ROGAN are directed to aerosol generating systems and articles, and because ROGAN teaches the addition of an aerosol-former, “…to facilitate the generation of a vapour or aerosol when heated.”, on page 11, line 6. This modification merely involves combining prior art elements according to known methods to yield predictable results, as each element performs the same function as it does separately.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as anticipated by HU or, in the alternative, under 35 U.S.C. 103 as obvious over HU (CN111657542A) in view of ROGAN (WO2021209499A1).
Regarding claim 27 as being anticipated by HU; HU as shown above, teaches all of the limitations of claim 25.
HU further teaches that; at least one susceptor element is located in the substrate section (Fig.8 and [0050]— “A smoking device…including internal heating…”. When the aerosol-generating article is placed into the aerosol-generating system a susceptor is located in the substrate section).
Alternatively, regarding claim 27 as being obvious over HU in view of ROGAN; HU as shown above, teaches all of limitations of claim 25.
HU does not teach that the susceptor element is a component of the substrate section itself, rather, the susceptor element is attached to the aerosol-generating device.
ROGAN, does however teach of an aerosol generating system with an aerosol generating article wherein at least one susceptor element is located in the substrate section, and the susceptor element is integral to the substrate section itself (“The induction heatable susceptor may alternatively comprise a particulate susceptor material which is dispersed throughout the aerosol generating substrate 16…”— page 16, lines 8-10).
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 substrate section, as taught by HU in claim 25, by, adding the feature that at least one susceptor element is located in the substrate section, as taught by ROGAN, because both HU and ROGAN are directed to aerosol generating systems and articles, and because ROGAN teaches this addition can be done, “…during the manufacture and assembly of the aerosol generating article…”— page 16, lines 10-11. This modification merely involves applying a known technique to a known device for improvement during manufacturing to yield predictable results.
Claims 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over HU (CN111657542A) in view of MOTODAMARI (WO2022230408A1).
Regarding claim 28, HU, as shown above, teaches all of the limitations of claim 16.
HU does not explicitly teach that; The aerosol-generating article according to claim 16, further comprises a ventilation zone.
MOTODAMARI, does however teach of a non-combustion heating type flavor inhalation article that comprises a ventilation zone (Fig.6 shows an ‘inhalation article’— 20 with a series of concentrically positioned ‘openings’— V within ‘the cooling segment’— 22).
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 aerosol-generating article, as taught by HU in claim 16, by adding a ventilation zone, as taught by MOTODAMARI, because both HU and MOTODAMARI are directed to articles for use in heat-not-burn devices, and because MOTODAMARI teaches that; “The opening V…facilitates the inflow of outside air due to the user's suction, and this inflow of air can lower the temperature of the components and air flowing in from the tobacco rod portion…”— [0050]. This modification merely involves combining prior art elements according to known methods to yield predictable results, as each element performs the same function as it does separately.
Regarding claim 29, HU in view of MOTODAMARI, as shown above, teach all of the limitations of claim 28.
MOTODAMARI further teaches that; the ventilation zone is located upstream of the protruding sections (Fig.6 shows ventilation zone ‘V’ located in ‘the cooling segment’— 22, which is located upstream from ‘the filter segment’— 23 and ‘tip paper’— 25). MOTODAMARI also states an explicit motivation for this design choice; “…air can lower the temperature of the components and air flowing in from the tobacco rod portion…”— [0050].
Regarding claim 30, HU in view of MOTODAMARI, as shown above, teach all of the limitations of claim 28.
MOTODAMARI further teaches that; wherein the ventilation zone comprises perforations (Fig.6 shows a series of concentrically positioned ‘openings’— V as a dotted line). MOTODAMARI also states an explicit motivation for this design choice; “… (to) facilitate[s] the inflow of outside air due to the user's suction, and this inflow of air can lower the temperature of the components and air flowing in from the tobacco rod portion…”— [0050].
Regarding claim 31, HU in view of MOTODAMARI, as shown above, teach all of the limitations of claim 30.
MOTODAMARI further teaches that; the perforations are configured to draw ambient air into the ventilation zone (“The opening V…facilitates the inflow of outside air due to the user's suction…”— [0050]). MOTODAMARI also states an explicit motivation for this design choice; “…this inflow of air can lower the temperature of the components and air flowing in from the tobacco rod portion…”— [0050].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A CEFARATTI whose telephone number is (571)270-0482. The examiner can normally be reached Monday-Friday 7:30am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSEPH ARTHUR CEFARATTI/Examiner, Art Unit 1749 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights