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 § 112 - Second Paragraph
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 20 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 20, the antecedent of “the layer of adhesive” (line 4) is not clearly set forth. Specifically, claim 20 appears to reference the coverage of the layer of adhesive in claim 18 (lines 7-8). Claim 18 recites that the coverage is based on an entire area of the inner surface. Claim 20, however, does not particularly point out or distinctly claim what the coverage is based upon. As currently written in claim 20, the basis upon which the coverage depends could be interpreted to be the entire area of the inner surface or something other than the entire area of the inner surface. One may, at first, think that “the layer of adhesive” (claim 20, line 4) could only refer back to the layer of adhesive having a coverage based on the entire area of the inner surface (claim 18, lines 7-8). However, this is challenged when claim 20 recites that the layer of adhesive covers “at least some of the inner surface”. The phrase “at least some of the inner surface” is interpreted to mean 1-100% whereas claim 18 recites at least 50% (i.e. 50-100%). Therefore, the antecedent of “the layer of adhesive”, in claim 20, is not clearly set forth.
Claim Rejections - 35 USC § 112 - Fourth Paragraph
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20, with respect to the layer of adhesive, claim 20 recites that the layer of adhesive covers “at least some” of the inner surface (line 4). This limitation encompasses 1-100% of the inner surface being covered by the layer of adhesive. This limitation fails to further limit subject matter in claim 18 upon which claim 20 depends. Using the assumption (reference is made to the rejection of claim 20 under 112-2ndparagraph) that the coverage is based on the entire area of the inner surface (claim 18, lines 7-6), then claim 20 does not further limit claim 18 with respect to the layer of adhesive. Claim 20 recites that the layer of adhesive covers “at least some of the inner surface”. The phrase “at least some of the inner surface” encompasses 1-100% whereas claim 18 recites at least 50% (i.e. 50-100%). Claim 20 broadens adhesive coverage area of the inner surface: claim 18 [Wingdings font/0xE0] 50-100% and claim 20 [Wingdings font/0xE0] 1-100%. Thus, claim 20 is rejected as being of improper dependent form for failing to further limit the subject matter (meaning the subject matter with respect to the layer of adhesive) of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 18-21 and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwanaga (CN 113163855 A).
Claim 18: Iwanaga teaches an aerosol-generating article comprising
●a rod 14 of aerosol-generating substrate 23 (pg4 Lns19-20; pg5 para3)
●a paper wrapper 41 (comprising at least paper sheet 44) wrapped around at least a
portion of the aerosol-generating article (for example – wrapped around the aerosol-generating substrate 23 which is part of the aerosol-generating article – Fig2) (pg6 Lns21-22; pg7, last paragraph) – the paper wrapper 41 comprising
●a basis weight (Iwanaga: “unit area weight” equals basis weight) of
40-80 gm/m2 (40-80 gm/m2 overlaps the claimed basis weight of 60-100 gm/m2) (pg8 Ln3)
●an inner surface and an outer surface with a layer of adhesive 46
disposed on the inner surface of the paper wrapper 41 (see Fig3 annotated below):
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wherein the layer of adhesive 46 covers at least 50% of an entire area of the inner surface of the paper wrapper 41 (pg7 para5; pg8 para4: “the second bonding portion 46 bonds the substrate sheet 42 to the second sheet 44, and preferably bonds them to the whole surface”; “whole surface” = 100% which is within the claimed value of “at least 50%”). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 19: the aerosol-generating article according to claim 18, wherein the paper wrapper 41 has a basis weight (Iwanaga: “unit area weight” equals basis weight) of 40-80 gm/m2 (40-80 gm/m2 overlaps the claimed basis weight of 75-100 gm/m2) (pg8 Ln3).
Claim 20: the aerosol-generating article according to claim 18, wherein
●at least a portion of the paper wrapper 41 circumscribes the rod 14 of aerosol-
generating substrate 23 (pg6 para6)
●the layer of adhesive 46 covers at least some of the inner surface of the paper
wrapper 41 circumscribing the rod 14 of aerosol-generating substrate 23 (pg7 para5; pg8 para4: “the second bonding portion 46 bonds the substrate sheet 42 to the second sheet 44, and preferably bonds them to the whole surface”; “whole surface” = 100% which is within the claimed value of “at least some”).
Claim 21: the aerosol-generating article according to claim 18, wherein the layer of adhesive 46 circumscribes the rod 14 of aerosol-generating substrate 23 around a full circumference of the rod 13 (pg6 para6).
Claim 34: the aerosol-generating article according to claim 18, wherein the layer of adhesive 46 extends along at least 80 percent of an entire length of the rod 14 of aerosol-generating substrate 23 (pg7 para5; pg8 para4: “the second bonding portion 46 bonds the substrate sheet 42 to the second sheet 44, and preferably bonds them to the whole surface”; “whole surface” = 100% which is within the claimed value of “at least 80%”).
Claim 35: the aerosol-generating article according to claim 18, wherein the layer of adhesive 46 extends to a downstream end of the aerosol-generating article (see Fig1 annotated below):
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article.
Claim 36: Iwanaga teaches a method of producing an aerosol-generating article, the method comprising:
●providing a rod 14 of aerosol-generating substrate 23 (pg4 Lns19-20; pg5 para3)
●providing a paper wrapper 41 (comprising at least paper sheet 44) having a basis
weight (Iwanaga: “unit area weight” equals basis weight) of 40-80 gm/m2 (40-80 gm/m2 overlaps the claimed basis weight of 60-100 gm/m2) (pg8 Ln3), the paper wrapper 41 comprising an inner surface and an outer surface (see Fig3 annotated below):
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●applying a layer of adhesive 46 to at least 50% of an entire area of the inner surface of
the paper wrapper 41 (pg7 para5; pg8 para4: “the second bonding portion 46 bonds the substrate sheet 42 to the second sheet 44, and preferably bonds them to the whole surface”; “whole surface” = 100% which is within the claimed value of “at least 50%)
●wrapping the paper wrapper 41 around at least a portion of the aerosol-generating
article (for example – wrapped around the aerosol-generating substrate 23 which is part of the aerosol-generating article (Fig2) (pg6 Lns21-22; pg7, last paragraph) (pg9 Ln34 to pg10 Ln31).
Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
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 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga, as applied to claims 18-21 and 34-35 above, and further in view of Yamada (WO 03065828 A1).
Claim 22: Iwanaga teaches the aerosol-generating article according to claim 18. Iwanaga does not teach that the paper wrapper 41 further comprises an embossed portion circumscribing at least the rod 14 of aerosol-generating substrate 23.
Yamada teaches a tobacco rod 12 of aerosol-generating substrate having a paper wrapper 13 circumscribed thereabout. The paper wrapper 13 is embossed on the entire area thereof. The embossing helps to reduce the amount of carbon monoxide in the mainstream tobacco smoke (pg2 Ln8 to pg3 Ln14).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Iwanaga that the paper wrapper 41 further comprises an embossed portion circumscribing at least the rod 14 of aerosol-generating substrate 23 in that Yamada teaches such allows one to reduce the amount of carbon monoxide in the mainstream tobacco smoke which is a benefit to the consumer.
Claim 23: Iwanaga modified teaches the aerosol-generating article according to claim 22, wherein the layer of adhesive 46 covers at least some of an inner surface of the embossed portion of the paper wrapper 41 (see Fig3 of Iwanaga annotated below):
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Claims 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga in view of Yamada, as applied to claims 22-23 above, and further in view of Cheong (US 2021/0337859 A1).
Claim 24: Iwanaga modified teaches the aerosol-generating article according to claim 22. Iwanaga modified does not teach that at least the embossed portion of the paper wrapper 41 is a water-resistant wrapper.
Cheong teaches a paper wrapper 136 which is wrapped around an outer side surface of a rod- shaped smoking material (paras72-73). The paper wrapper 136 is water-resistant (paras76-77). The water-resistance is provided because additives within the smoking material stain and weaken the paper; and, the water-resistance helps prevent such for occurring (paras76-77).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Iwanaga modified that the paper wrapper 41 is water-resistant in that Cheong teaches additives within a smoking material stain and weaken a paper wherein the water-resistance helps prevent such for occurring; and, as modified at least the embossed portion of the paper wrapper 41 is water-resistant.
Claim 25: Iwanaga modified teaches the aerosol-generating article according to claim 24, wherein the embossed portion of the paper wrapper 41 directly circumscribes the rod 14 of aerosol-generating substrate 23 in that there is direct contact between the paper wrapper 41 and the aerosol-generating substrate 23 (i.e. nothing therebetween) (Iwanaga: Fig1 Fig3). Applicant’s instant specification defines “direct contact” as having nothing therebetween – and defined “indirect contact” as having other items therebetween (pg10 Lns3-15).
Claim 26: Iwanaga modified teaches the aerosol-generating article according to claim 24, wherein the embossed portion of the paper wrapper 41 circumscribes the rod 14 of aerosol-generating substrate 23 around a full circumference of the rod 14 in that Yamada teaches embossing the entire area of the paper wrapper 13 (i.e. 100%) (Yamada: pg2 Ln8 to pg3 Ln14).
Claim 27: Iwanaga modified teaches the aerosol-generating article according to claim 24, wherein the embossed portion of the paper wrapper 41 circumscribes the rod 14 of aerosol-generating substrate 23 along an entire length of the rod 14 in that Yamada teaches embossing the entire area of the paper wrapper 13 (i.e. 100%) (100% is within the claimed range of at least 80%) (Yamada: pg2 Ln8 to pg3 Ln14).
Claim 28: Iwanaga modified teaches the aerosol-generating article according to claim 24, wherein the embossed portion of the paper wrapper 41 circumscribes the rod 14 of aerosol-generating substrate 23 along an entire length of the rod 14 in that Yamada teaches embossing the entire area of the paper wrapper 13 (i.e. 100%) (100% is within the claimed range of at least 90%) . (Yamada: pg2 Ln8 to pg3 Ln14).
Claim 29: Iwanaga modified teaches the aerosol-generating article according to claim 24, wherein the embossed portion of the paper wrapper 41 circumscribes the rod 14 of aerosol-generating substance 23 along 100% of an entire length of the rod 14 in that Yamada teaches embossing the entire area of the paper wrapper 13 (i.e. 100%) (Yamada: pg2 Ln8 to pg3 Ln14).
Claim 30: Iwanaga teaches the aerosol-generating article according to claim 18, wherein the rod 14 of aerosol-generating substrate 23 comprises an aerosol former (for example – dry tobacco and/or perfume) (pg6 Lns21-32). Iwanaga does not teach being present in at least about 5% weight basis.
However, the weight basis percent to which one skilled in the art would consider when providing the aerosol-generating article is a function of, among other variables, the desired composition of the smoke product inhaled, the other material in the aerosol-generating substrate, and the temperature and/or pressure during use. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized weight basis percent to which one skilled in the art would consider when providing the aerosol-generating article based on known variables, such as those listed for example; and thus, the claimed weight basis percent cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanaga (CN 113163855 A) in view of Yamada and Cheong, as applied to claims 24-30 above, and further in view of Jordil (WO 2021/233918 A1).
Claims 31-33: Iwanaga teaches the aerosol-generating article according to claim 30 wherein the aerosol-generating substrate is a plug of porous medium (i.e. the tobacco); however, Iwanaga does not teach that the rod 14 of aerosol-generating substrate 23 further comprises a loaded gel composition having the tobacco.
Jordil teaches an aerosol-generating article (abstract) having a rod of aerosol-generating substrate (for example – tobacco) (pg1 paras1-2) loaded with a gel composition (pg28, last paragraph) capable of delivering a high nicotine/low total particulate matter aerosol to the consumer (pg19 paras3-4).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Iwanaga modified that the rod 14 of aerosol-generating substrate 23 further comprises a loaded gel composition having the tobacco in that Jordil teaches such is capable of delivering a high nicotine/low total particulate matter aerosol to the consumer.
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 18-32 and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-34 of copending Application No. 18/253,417.
Instant claims 18-32 and 34-35: although the claims at issue are not identical, they are not patentably distinct from each other because claims 16 and 20-21 of the copending application, in combination, teach instant independent claim 18. Instant claim 18 is the only independent structural claim. Also, the instant depending claims are taught by various claims of claims 16-35 of the copending application – which is detailed herein. Also, the instant set of claims 18-32 and 34-35 and the copending set of claims 16-35 are both directed to the same invention which is to “an aerosol-generating article”.
Herein represents specific mapping of instant claims 18-32 and 34-35 with respect to claims 16-35 of the copending application:
Instant Claim Number Copending Application Claim Number(s)
claim 18 claims 16, 20, and 21
claim 19 claim 16
claim 20 claim 21
claim 21 claim 21
claim 22 claim 16
claim 23 claims 16, 20, and 21
claim 24 claim 19
claim 25 claim 25
claim 26 claim 16
claim 27 claim 16
claim 28 claim 16
claim 29 claim 16
claim 30 claim 24
claim 31 claim 31
claim 32 claims 24 and 31
claim 34 claim 21
claim 35 claim 20
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 33 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-34 of copending Application No. 18/253,417 in view of Jordil.
Instant claim 33: claims 16-34 of the copending application teach at least two plugs (claim 20 of the copending application: “plurality of segments”). However, claims 16-34 of the copending application do not teach that the plugs are porous and loaded with the gel composition.
Jordil teaches an aerosol-generating article (abstract) having a rod of aerosol-generating substrate (for example – tobacco) (pg1 paras1-2) loaded with a gel composition (pg28, last paragraph) capable of delivering a high nicotine/low total particulate matter aerosol to the consumer (pg19 paras3-4).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in instant claim 33 that the plugs are porous and loaded with the gel composition in that Jordil teaches such is capable of delivering a high nicotine/low total particulate matter aerosol to the consumer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 36 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 35 of copending Application No. 18/253,417 in view of Iwanaga.
Instant claim 36: claim 35 of the copending application teaches the method steps of instant claim 36. However, claim 35 of the copending application does not teach applying a layer of adhesive to at least 50 percent of an entire area of the inner surface of the paper wrapper.
The above discussion of Iwanaga applies herein.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in instant claim 36 applying a layer of adhesive to at least 50 percent of an entire area of the inner surface of the paper wrapper in that Iwanaga teaches that such helps keep the paper wrapper attached to the aerosol-generating substrate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-32 and 34-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-31 and 33-36 of copending Application No. 18/253,445 in view of Iwanaga.
Instant claims 18, 20, and 23: claims 16, 18, and 25 of the copending application, in combination, teach instant independent claims 18, 20, and 23. However, claims 16, 18, and 25 (including the other dependent claims) do not teach a layer of adhesive disposed on the inner surface of the paper wrapper wherein the layer of adhesive covers at least 50 percent of an entire area of the inner surface of the paper wrapper.
The above discussion of Iwanaga applies herein.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in instant claims 18, 20, and 23 a layer of adhesive disposed on the inner surface of the paper wrapper wherein the layer of adhesive covers at least 50 percent of an entire area of the inner surface of the paper wrapper in that Iwanaga teaches that such helps keep the paper wrapper attached to the aerosol-generating substrate.
Instant claim 18 is the only independent structural claim. Also, the instant depending claims are taught by various claims of claims 16-31 and 33-36 of the copending application – which is detailed herein. Also, the instant set of claims 18-32 and 34-35 and the copending set of claims 16-31 and 33-36 are both directed to the same invention which is to “an aerosol-generating article”.
Herein represents specific mapping of instant claims 18-32 and 34-35 with respect to claims 16-31 and 33-36 of the copending application:
Instant Claim Number Copending Application Claim Number(s)
claim 18 discussed above
claim 19 claim 25
claim 20 discussed above
claim 21 claim 16
claim 22 claim 16
claim 23 discussed above
claim 24 claim 20
claim 25 claim 21
claim 26 claim 16
claim 27 claim 16
claim 28 claim 16
claim 29 claim 16
claim 30 claim 16
claim 31 claim 16
claim 32 claim 34
claim 34 claim 16
claim 35 claim 16
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 33 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-31 and 33-36 of copending Application No. 18/253,445 in view of Jordil.
Instant claim 33: claims 16-31 and 33-36 of the copending application teach the gel composition. However, claims 16-31 and 33-36 do not teach that the rod of aerosol-generating substrate further comprises a plug of a porous medium loaded with the gel composition.
The above discussion of Jordil applies herein.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in instant claim 33 that that the rod of aerosol-generating substrate further comprises a plug of a porous medium loaded with the gel composition in that Jordil teaches such is capable of delivering a high nicotine/low total particulate matter aerosol to the consumer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) “Improvements in Filter Making Machines” discusses a method of wrapping a tobacco rod in a wrapper having a layer of adhesive applied thereon, by an adhesive applicator, before wrapping – Applicant’s specification indicates applying adhesive to a paper wrapper before wrapping (pg38 EX44).
(b) Yamamoto (WO 2020071089 A1) discusses making a wrapping for a cigarette rod by applying adhesive to the paper wrapper with the adhesive being in the form of a strip or dots – Applicant’s specification indicates different percentages of the entire area of the inner surface of the paper wrapper is covered by the layer of adhesive (pg12 para5).
(c) “Modeling the Diffusion of Carbon Monoxide and Other Gases from the Paper Wrapper of a Cigarette During Puffing” discusses a cigarette tobacco rod having a paper wrapper wherein diffusion of materials and aerosol from the tobacco rod are impacted by the paper wrapping thickness and permeability – Applicant’s specification indicates that paper wrapper thickness is important (pg2 para1).
(d) England (TW 202100033 A) discusses paper wrappers, in the tobacco art, made to withstand axial compressive force and bending moment that may be generated during manufacturing – Applicant’s specification indicates that bending moment of the paper wrapper is important (pg11 Ln34 to pg12 Ln2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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