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 16-29 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Claim Objections
Claim 21 objected to because of the following informalities: Claim 21 recites "the peripheral wall provides at least 150 milligrams of The claim language does not align with the specification. Appropriate correction is required.
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 16, 20-21, 25-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), hereinafter SELBY, in view of Chapman et al. (WO 9603060 A1), hereinafter CHAPMAN; and further in view of Keritsis et al. (US 4625737), hereinafter KERITSIS.
Regarding Claim 16, SELBY discloses an aerosol-generating article comprising aerosol-generating substrate in a hollow tubular structure (Figure 1C, element 20) having a multi-layered peripheral wall defining a longitudinal airflow channel (Figure 5C, element 30). The peripheral wall is formed of a plurality of overlapping layers loosely wrapped in multiple layers by rolling a reconstituted tobacco sheet (Page 10, L2-L3 and Page 9; L18-L22). SELBY further discloses a downstream section provided with the downstream of the aerosol-generating substrate tube (see Figure 3C). SELBY also discloses that the reconstituted tobacco films are of a uniform thickness (Page 2, L18-L20).
SELBY does not explicitly disclose that the peripheral wall has density of at least 200 milligrams per cubic centimeter and that the longitudinal airflow channel has a diameter of at least 3 millimeters.
However, CHAPMAN teaches a hollow smokable article rod (Figure 2, element 22) having an internal airflow diameter within a range of 0.5 to 6.5 mm (Page 3, L36-L38). This range directly overlaps with the claimed range of at least 3 mm. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the aerosol-generating article of SELBY by incorporating a longitudinal airflow channel of diameter of at least 3 mm as taught by CHAPMAN. One would be motivated to size the longitudinal airflow channel according to the range taught by CHAPMAN to balance easy inhaling with good vapor production for user satisfaction.
Furthermore, while SELBY (as modified by CHAPMAN) does not explicitly disclose that the peripheral wall has density of at least 200 milligrams per cubic centimeter, KERITSIS teaches a cylindrical tobacco-containing smoking article having a density within the range of about 0.05 to about 1.5 g/cc (equivalent to 50 to 1500 mg/cm3) (C3, L9-L11), which encompasses claimed peripheral wall density of at least 200 mg/cm3. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the peripheral wall density of SELBY in view of CHAPMAN and KERITSIS within the 50 to 1500 mg/cm3 range (specifically at least 200 mg/cm3) taught by KERITSIS. One would be motivated to select and routine-test a peripheral wall density within a range of KERITSIS to secure the necessary structural integrity of the hollow tube during handling while ensuring an appropriate thermal mass for efficient heat transfer and consistent aerosol generation.
Regarding Claim 20, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. SELBY further teaches a plurality of overlapping layers loosely wrapped in multiple layers by rolling a reconstituted tobacco sheet (Page 10, L2-L3 and Page 9; L18-L22) using a spiral wind technique (Page 9, L18-19). Specifically, SELBY discloses an air channel located on the outside of the aerosol-forming substrate. This air channel includes at least one sheet of reconstituted tobacco rolled to form a substantially cylindrical tube, which is disposed substantially longitudinally through the aerosol-forming substrate (Page 4, L25-L28].
Regarding Claim 21, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While SELBY does not explicitly teach that the peripheral wall provides “at least 150 milligrams of homogenized tobacco material per centimeter of the hollow tubular substrate element,” KERITSIS discloses a foamed cigarette rod having a tobacco density of 0.22 g/cc (see Page 9; C15, Example 9) and a preferred diameter range of from about 2 to about 35 mm (Page 3; C3, L9-L11) for the tobacco rod. This yields a cross-sectional radius (r) of 0.1 to 1.75 cm. Linear Density (mg/cm) is calculated by Bulk Density (mg/cm3) times Cross-Sectional Area (cm2).
Applying the disclosed values of KERITSIS produces a linear density range spanning from 6.91 mg/cm to over 1000 mg/cm, overlapping the applicant’s claimed threshold of “at least 150 milligrams per centimeter”. It would have been obvious to a person of ordinary skill in art before the effective filing date of the invention to modify the combination of SELBY, CHAPMAN and KERITSIS with the known tobacco density of KERITSIS. A person having ordinary skill in the art would have been motivated to configure this modification to achieve a desired aerosol-delivery profile and optimized burn rates.
Regarding Claim 25, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. SELBY does not explicitly teach that the hollow tubular substrate element has a length of “at least 15 millimeters,” CHAPMAN explicitly discloses a hollow smokable article rod (Figure 2, element 22) having a length of 20 to 125 mm long (Page 3, L36-38). This disclosed range of 20 to 125 mm is entirely encompassed by the claimed range of “at least 15 millimeters”. It would have been obvious to one of ordinary skill in the art at the time of invention to modify the assembly of modified SELBY in view of CHAPMAN and KERTSIS to have the hollow tubular length of CHAPMAN’s disclosed range of 20 to 125 mm as it is known aerosol generating article to have the desired internal volume and aerosol path in the article.
Regarding Claim 26, which depends on claim 16, the primary combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While the modified SELBY does not explicitly recite a ratio of a length of the hollow tubular substrate element to a total length of the aerosol-generating article is at least 0.15, CHAPMAN explicitly discloses a hollow smokable article rod cut to a length of 70 mm (Figure 2, element 22) and a cylindrical cellulose acetate filter plug 30 mm long attached in an end-to-end relation using a filter wrap (see Page 10, Example 7). This arrangement yields a smokable article of total length 100mm. A mathematical calculation of these explicitly disclosed dimensions results in a ratio of 0.70 (70 mm / 100 mm), which falls within and satisfies the claimed limitation of “at least 0.15”.
Therefore, it would have been obvious to a person of ordinary skill in art before the effective filing date of the invention to modify SELBY (as modified by CHAPMAN and KERITSIS) to maintain the structural dimensions enclosed by CHAPMAN. A person of ordinary skill in art at would have been motivated to utilize these structural dimensions because CHAPMAN teaches that this specific ratio and arrangement reduce the amount of side stream smoke produced.
Regarding Claim 27, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. SELBY further discloses an aerosol generating article comprising a hollow tubular element (Figures 3a-c, element 80) towards downstream section of a hollow tubular substrate (Page 11, L13-16).
Regarding Claim 29, which depends on claim 27, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 27. SELBY further discloses that the downstream section further comprises a mouthpiece element (Figure 3C, element 90) at a downstream end of the article (Page 11, L13-16).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), hereinafter SELBY; Chapman et al. (WO 9603060 A1), hereinafter CHAPMAN; and Keritsis et al. (US 4625737), hereinafter KERITSIS as applied to claim 16 above, and further in view of Pijnenburg et al. (US 20180177228 A1), hereinafter PIJNENBURG.
Regarding Claim 17, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While the combination of SELBY, CHAPMAN and KERITSIS does not explicitly teach that the peripheral wall of the hollow tubular substrate element has a cross-sectional porosity of at least 0.3, PIJNENBURG details the design of aerosol-forming substrates by controlling the porosity and porosity distribution of an aerosol-forming rod to give the desired quality and repeatability of the smoking experience ([0010] and [0011]). Furthermore, PIJNENBURG discloses a preferred cross-sectional porosity ranging from 0.15 and 0.45 [0045], which directly overlaps with the claimed value of “at least 0.3.”
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the aerosol-generating article of modified SELBY by configuring the peripheral wall of the hollow tubular substrate element to have a cross-sectional porosity of at least 0.3 as taught by PIJNENBURG A person having ordinary skill in the art would have been motivated to select a porosity within the overlapping range to give the desired quality and repeatability of the smoking experience taught by PIJNENBURG.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), Chapman et al. (WO 9603060 A1), and Keritsis et al. (US 4625737) as applied to claim 16 above, and further in view of Kossmehl et al. (US 5617881 A), hereinafter KOSSMEHL.
Regarding Claim 18, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While SELBY, CHAPMAN AND KERITSIS remain silent on second homogenized tobacco material having a different composition from that of the first homogenized tobacco material, KOSSMEHL teaches a rod-like smoking product having a two-layered mantle comprising a first and a second layer of reconstituted tobacco sheets with different compositions (see C7, Example 2 and C8, Example 6). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the aerosol-generating article of modified SELBY by utilizing layers of homogenized tobacco materials with different compositions as taught by KOSSMEHL. One of ordinary skills in art would have been motivated to do so to optimize the flavor profile or customize aerosol delivery characteristics based on predetermined layer composition.
Regarding Claim 19, which depends on claim 18, the combination of SELBY, CHAPMAN, KERITSIS, and KOSSMEHL teaches all the elements of claim 18. While the modified SELBY does not explicitly teach that the first homogenized tobacco material and the second homogenized tobacco material have a different porosity from each other, KOSSMEHL teaches an enveloped or enclosed, rod-like smoking product having a reconstituted mantle formed from tobacco sheets having satisfactory porosity making it possible to control the smoke supply [Page 2; C2, L23- L32]. Specifically, KOSSMEHL teaches that the smoking tobacco rod consists of several tobacco sheets and that either the outermost layer or the inner layer tobacco sheet can be highly porous and the other layer less porous [Page 4; C6, L21- L25].
Therefore, it would have been obvious to a person of ordinary skill in art before the effective filing date of the invention to modify the homogenized tobacco materials of modified SELBY as taught by KOSSMEHL to provide distinct, variable porosity layers. One of ordinary skill in the art would have been motivated to utilize layers of different porosities to precisely regulate and optimize air flow and control smoke delivery rate during consumption.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), Chapman et al. (WO 9603060 A1), and Keritsis et al. (US 4625737) as applied to claim 16 above, and further in view of Sur (US 20200237018 A1), hereinafter SUR.
Regarding Claim 22, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While SELBY, CHAPMAN and KERITSIS remain silent on the aerosol-generating substrate further comprising a susceptor element, SUR discloses a susceptor arrangement for induction-heated aerosol delivery device. Specifically, SUR teaches that a substrate portion of an aerosol source comprises a plurality of susceptor coils ([0006]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the combined teachings of SELBY, CHAPMAN and KERITSIS to include the susceptor arrangement as taught by SUR. One would be motivated to make this modification to improve heating efficacy, provide uniform heat distribution throughout the substrate, and enhance overall consistency of aerosol delivery.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), Chapman et al. (WO 9603060 A1), Keritsis et al. (US 4625737), and Sur (US 20200237018 A1) as applied to claim 22 above, and further in view of Aoun et al. (US20210161201 A1), hereinafter AOUN.
Regarding Claim 23, which depends on claim 22, the combination of SELBY, CHAPMAN, KERITSIS and SUR teaches all the elements of claim 22. While SELBY, CHAPMAN, and KERITSIS remain silent on the aerosol-generating article further comprising a tubular susceptor element on at least one surface of the hollow tubular substrate element, AOUN discloses a consumable with a hollow tube structure (Figure 1, element 1) comprising a hollow tubular carrier (Figures 2-5, element 16, [0017]). The carrier comprises a metal foil, such as aluminum foil, that functions as a susceptor ([0101]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify aerosol-generating article of the combined SELBY by integrating the hollow tubular metal foil carrier of AOUN onto a surface of the substrate element. One would be motivated to make this modification to efficiently provide an inductive heating element (susceptor) directly on the structural substrate, thereby optimizing rapid heat transfer and enhancing overall aerosol generation.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), Chapman et al. (WO 9603060 A1), and Keritsis et al. (US 4625737) as applied to claim 16 above, and further in view of McMurtrie (US 5016656 A), hereinafter McMurtrie.
Regarding Claim 24, which depends on claim 16, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 16. While SEBLY, CHAPMAN and KERITSIS do not explicitly disclose that an outer surface of the hollow tubular substrate element is at least partially exposed on an outer surface of the aerosol-generating article, McMurtrie teaches a cigarette (Figure 6, element 110) featuring a tube of tobacco material (Figure 6, element 112, C2, L35-59). McMurtrie further teaches that a filter rod (Figure 6, element 114) is coaxially located with the tobacco tube at one end of the tobacco tube and affixed to the tobacco tube by a tipping material (Figure 6, element 124). McMurtrie demonstrates that the tipping material only circumferentially overlaps the tobacco tube at their junction rather fully covering it, inherently leaving most of the outer surface of the tobacco tube exposed to the atmosphere (see Figure 6, C2, L35-59).
Consequently, it would have been obvious to a person of ordinary skill in art before the effective filing date of the invention to modify the SELBY article by incorporating McMurtrie’s overlapping tipping material arrangement. One of ordinary skill in the art would have been motivated to use this localized overlap at the joint to securely couple structural components while deliberately leaving the rest of the outer surface of the hollow tubular substrate surface partially exposed to optimize heat transfer.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al. (WO 2020181358 A1), Chapman et al. (WO 9603060 A1), and Keritsis et al. (US 4625737) as applied to claim 27 above, and further in view of Zuber et al. (US 20140305448 A1), hereinafter ZUBER .
Regarding Claim 28, which depends on claim 27, the combination of SELBY, CHAPMAN and KERITSIS teaches all the elements of claim 27. While SELBY, CHAPMAN, and KERITSIS do not teach that a ratio between a length of the hollow tubular substrate element and the length of the hollow tubular element of the downstream section is between 0.25 and 1.25, ZUBER teaches an aerosol generating article (Figure 1, element 10) comprising an aerosol-forming substrate (Figure 1, element 20) and a hollow acetate tube (Figure 1, element 30) at downstream section. ZUBER explicitly teaches that the aerosol-forming substrate may have a length of length of between approximately 7 mm and approximately 15 mm ([0087]) and the length of the hollow acetate tube may be between approximately 5 mm and approximately 15 mm ([0094]). Selecting a substrate length within ZUBER’s range (e.g., 7 mm – 15 mm) and an acetate tube length within ZUBER’s range (e.g., 5 mm – 15 mm) yields a calculated ration range spanning from 0.46 (7 mm / 15 mm) to 3.0 (15 mm / 5 mm). This mathematically overlaps the claimed ratio of range of 0.25 to 1.25 which establishes a prima facie case of obviousness.
It would have been obvious to a person having ordinary skill in art before the effective filing date of the invention to incorporate the structural dimensions taught by ZUBER into the aerosol-generating article of SELBY (as modified by CHAPMAN and KERITSIS). One of ordinary skill in the art would configure this modification because optimizing this ratio directly controls the cooling residence time of the aerosol as it moves from the substrate through the downstream section, thereby directly determining the final aerosol temperature and particulate delivery to the user.
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, 17, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16, 29 and 30 of copending Application No. 18/713911 in view of SELBY et al. (WO 2020181358 A1), KERITSIS et al. (US 4625737) and CHAPMAN et al. (WO 9603060 A1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conflicting claim 16 of an application 18/713911 discloses an aerosol-generating device with a hollow tubular substrate formed of homogenized plant material and a downstream section. The instant claim 16 specifies that the plant material is homogenized tobacco arranged in overlapping layers with a peripheral wall density of at least 200 mg/cm3 and a longitudinal airflow channel diameter of at least 3 mm.
It would have been obvious to a person having ordinary skill in the art to modify the plant material substrate of Conflicting Claim 16 to utilize overlapping layers of tobacco as the specific plant material as taught by SELBY (Page 10, L2-3 and Page 9; L18-22), and an overlapping layer configuration provides a structurally stable, uniform substrate that ensures consistent thermal distribution and even aerosol generation. CHAPMAN teaches an overlapping airflow channel diameter range of 0.5 to 6.5 mm (Page 3, L36-L38, which encompasses the claimed “at least 3 mm”), and KERITSIS teaches a density range of 50 to 1500 mg/cm3 (C3, L9-L11, which encompasses claimed “at least 200 mg/cm3”). It would be obvious to a person of ordinary skill in the art to have a peripheral wall density of at least 200 mg/cm3 as it is known in the art for peripheral wall densities to have a range of 50 to 1500 mg/cm3, taught by KERITSIS, and this would ensure the necessary structural integrity of the hollow tube during handling while ensuring an appropriate thermal mass for efficient heat transfer and consistent aerosol generation. Likewise, a person of ordinary skill world be motivated to incorporate a longitudinal airflow channel of diameter of at least 3 mm, as taught by CHAPMAN to balance easy inhaling with good vapor production for user satisfaction, as it is known in the art for a longitudinal airflow channel to have a range of 0.5 to 6.5 mm, taught by CHAPMAN.
Dependent claims 17 and 23 of the instant application recite the same limitations of dependent claims 29 and 30 of conflicting application 18/713911.
Regarding claim 22, the instant application generically claims an “aerosol- generating article” wherein the substrate comprises a “susceptor element.” Conflicting claim 30 explicitly claims an “aerosol-generating article” wherein the substrate comprises a specific species of that element “a tubular susceptor element on at least one surface of the hollow tubular substrate element.” The generic “susceptor element” of the instant application encompasses and is patentably indistinct from the specific “tubular susceptor element” on a tubular substrate in the co-pending application. This is a provisional nonstatutory double patenting rejection.
Conclusion
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/PRADEEP PAUDEL/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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