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
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 11 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.
Claims 11 and 14 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention.
Regarding claim 11, the phrase “the first and second contact portions of the cover” lacks antecedent basis. Claim 1, from which claim 11 depends, does not previously introduce first and second contact portions of the cover. It is therefore unclear which portions constitute the recited first and second contact portions.
For purposes of continued examination, “the first and second contact portions of the cover” will be interpreted as two spaced-apart portions of the cover by which the cover is fixed to the support.
Regarding claim 14, claim 14 depends from claim 11 and therefore inherits the indefiniteness concerning “the first and second contact portions of the cover.”
For purposes of continued examination, the limitation will be interpreted consistently with claim 11 as referring to two spaced-apart portions of the cover by which the cover is fixed to the support.
Regarding claim 38, the phrase “the cover is self supporting when the support is removed from between the support and the cover” is internally inconsistent because it requires the support to be removed from between itself and the cover. It is unclear whether the first occurrence of “the support” was intended to refer to the cover support.
For purposes of continued examination, the limitation will be interpreted as requiring the cover to be self-supporting when the cover support is removed from between the support and the cover.
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.
Claims 1, 10, 19, 36, 42, 53, and 57–59 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Batista et al. (US 2017/0164657 A1).
Regarding claim 1, Batista teaches a method of making a consumable for use with a non-combustible aerosol provision system (manufacturing cartridge 220 containing an aerosol-forming substrate that is heated rather than combusted; ¶¶ [0061], [0014]), in which the consumable comprises aerosol generating material (aerosol-forming substrate 224; ¶ [0086]), a support (base layer 222; ¶ [0086]), and a cover (protective foil 230; ¶ [0086]), in which
a support is provided (base layer foil provided at a first manufacturing station; ¶ [0112]),
a cover is provided (protective foil 230 applied over cover layer 228; ¶ [0117]), a cover support is provided (cover layer 228; ¶ [0115]),
the cover support is positioned adjacent the support between a portion of a first surface of the support and the cover in a cover position (cover layer 228 positioned between base layer 222 and protective foil 230 in the cartridge stack; ¶ [0086]),
and the cover is fixed to the support (protective foil attached indirectly to the base through the intermediate cover layer; ¶ [0057]), in which at least one discrete portion of aerosol generating material is applied to the first surface of the support (aerosol-forming substrate 224 placed in a cavity in the top surface of base layer 222; ¶ [0114]), and the cover support when located in the cover position overlies at least one discrete portion of aerosol generating material (cover layer 228 placed over aerosol-forming substrate 224; ¶ [0115]).
Regarding claim 10, Batista further teaches the support comprises a sheet material (individual base layers cut from a web of base-layer foil; ¶ [0067]), and the first surface is one of the major surfaces of the sheet material (planar top surface of the base layer; ¶ [0062]).
Regarding claim 19, Batista further teaches the cover support is penetrable by aerosol (cover layer 228 having aerosol-permeable window 242 formed by mesh 244; ¶ [0089]) and the cover support is retained between the support and the cover (cover layer 228 retained between base layer 222 and protective foil 230; ¶ [0086]).
Regarding claim 36, Batista further teaches the cover comprises a laminate comprising at least two layers (protective foil 230 comprising a flexible multilayer polymer sheet; ¶ [0090]).
Regarding claim 42, Batista further teaches material forming the cover comprises one or more fold lines (protective foil 230 having transverse fold line 249; ¶ [0091]).
Regarding claim 53, Batista teaches a consumable produced by the method of claim 1 (cartridge 220 having base layer 222, discrete aerosol-forming substrate 224, intervening cover layer 228, and protective foil 230; ¶ [0086]). The product-by-process language does not distinguish the claimed consumable from a prior-art consumable having the same resulting structure.
Regarding claim 57, Batista teaches a device for use with a consumable according to claim 53 (aerosol-generating device 10 configured to receive removable cartridge 20; ¶ [0084]) and an aerosol generator configured to heat the aerosol generating material of the consumable (electric heater configured to heat the aerosol-forming substrate; ¶ [0033]).
Regarding claim 58, Batista teaches a non-combustible aerosol provision system comprising a device and a consumable according to claim 53 (aerosol-generating device 10 and removable cartridge 20 forming an aerosol-generating system; ¶ [0084]).
Regarding claim 59, Batista teaches a method of generating aerosol using a device according to claim 53 (operating an aerosol-generating device having an electric heater; ¶ [0033]), in which the aerosol generator heats but does not burn the aerosol generating material (heating the aerosol-forming substrate to about 180–310°C, in contrast to combustion at approximately 800°C; ¶ [0043]), and the aerosol generator comprises a resistive heater (electric heater formed from electrically resistive material; ¶ [0038]).
Because claim 59 recites a resistive heater or, alternatively, a magnetic-field generator used with a susceptor, Batista’s resistive-heater embodiment satisfies the alternative limitation.
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.
Claims 4, 5, 11, 14, and 38 are rejected under 35 U.S.C. § 103 as being unpatentable over Batista et al. (US 2017/0164657 A1) in view of Nerudia Limited (EP 3 782 492 A1).
Regarding claim 4, Batista teaches the method of claim 1 but does not expressly teach fixing of the cover to the support comprises impelling at least one contact portion of the cover against the support after the at least one contact portion of the cover has been fixed to the support.
Nerudia teaches upper wall 22 joined to lower wall 23 by hinge portion 26, thereby fixing the upper wall to the lower wall along the hinged edge before closure (¶ [0197]). Nerudia further teaches subsequently closing the housing by pivoting the upper wall about hinge portion 26, which physically drives the already-hingedly-fixed upper wall against the lower wall and supported consumable components (¶ [0198]).
Batista and Nerudia concern aerosol-generating consumables having a cover or housing secured over supported aerosol-generating material. Applying Nerudia’s hinged-closing technique to Batista would permit a contact portion of Batista’s cover to remain fixed along an edge while being driven against the support to close and retain the consumable components.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by hingedly fixing a contact portion of the cover to the support and subsequently pivoting that already-fixed contact portion against the support to provide controlled closure and retention of the aerosol-generating material.
Regarding claim 5, Batista teaches the method of claim 1 and the cover support extends in a first direction (elongated cover layer 328 aligned with base layer 322; ¶ [0099]), but does not expressly teach fixing the cover by two elongated contact portions having the claimed orientation.
Nerudia teaches the cover is fixed to the support by a first contact portion (longitudinal junction 25 sealed with glue; ¶ [0198]) and a second contact portion (longitudinal hinge 26 joining the housing wall portions; ¶ [0197]), the first contact portion has a long dimension and a short dimension (longitudinal junction 25; ¶ [0196]), the second contact portion has a long dimension and a short dimension (longitudinal hinge 26; ¶ [0197]), and the long dimension of at least one of the first and second contact portions is approximately parallel to the first direction (junction 25 extending longitudinally along housing 16; ¶ [0196]).
Nerudia is in the same field of aerosol-generating consumables and uses opposed longitudinal attachment regions to secure an elongated housing. Applying that attachment arrangement to Batista’s aligned cover and cover support would provide secure edge attachment while leaving the central region available over the aerosol-generating material.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by providing spaced elongated fixing regions extending parallel to the cover support to provide secure, continuous closure along the consumable.
Regarding claim 11, Batista teaches the method of claim 1 but does not expressly teach the interpreted spaced contact portions and passage.
Nerudia teaches the first and second contact portions of the cover are spaced apart (junction 25 and hinge 26 on opposed longitudinal sides; ¶ [0197]), the cover is not fixed to the support between the first and second contact portions (upper and lower walls separated between junction 25 and hinge 26; Fig. 4c), and the cover and support define a passage having a first end and a second end (chamber 20 having an open upstream end and a downstream mouthpiece aperture; ¶ [0192]).
Nerudia is in the same field and its spaced attachment regions both secure the housing and preserve an intermediate aerosol-flow chamber. Applying that arrangement to Batista would retain the cover at spaced regions while defining a passage between them.
It has been held that applying a known technique to a known device ready for improvement to yield predictable results supports a prima facie conclusion of obviousness. MPEP § 2143(I)(D).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by employing Nerudia’s spaced longitudinal joining arrangement to define a passage through which aerosol can travel.
Regarding claim 14, Batista as modified for claim 11 does not expressly teach a mouthpiece or mouthpiece socket at or adjacent an end of the passage.
Nerudia further teaches a mouthpiece or a socket configured to receive a mouthpiece is located on the first surface of the support or on the cover, at or adjacent a position where an end of the passage is formed (mouthpiece aperture in downstream end wall 21 at the downstream end of chamber 20; ¶ [0192]).
Nerudia is in the same field and places the mouthpiece aperture at the outlet end of the same chamber relied on for claim 11. Applying that outlet placement to Batista’s passage would allow withdrawal of the generated aerosol.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by positioning a mouthpiece or mouthpiece socket at an end of the passage to permit aerosol to be withdrawn from the consumable.
Regarding claim 38, Batista teaches the method of claim 1 but does not expressly teach, under the interpretation stated above, the cover is self-supporting when the cover support is removed from between the support and the cover.
Nerudia teaches the cover is self-supporting (substantially rigid, self-supporting housing 16 surrounding the aerosol-forming brick; ¶ [0190]).
Nerudia is in the same field and uses a self-supporting housing to retain aerosol-forming material. Using that known housing construction for Batista’s cover would allow the cover to retain its shape after removal of the intervening cover support.
It has been held that applying a known technique to a known device ready for improvement to yield predictable results supports a prima facie conclusion of obviousness. MPEP § 2143(I)(D).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by forming the cover as a self-supporting housing so that the cover retains its shape independently after removal of a temporary cover support.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Batista et al. (US 2017/0164657 A1) in view of Nerudia Limited (EP 3 782 492 A1) and further in view of Spieles et al. (WO 2020/239599 A1) using (US2022/0211101) A1 as a citing reference.
Regarding claim 8, modified Batista in view of Nerudia teaches the method of claim 5 but does not expressly teach the support has a second surface opposite the first surface, and at least part of at least one of the first and second contact portions is fixed to the second surface of the support.
Spieles teaches the support has a second surface opposite the first surface (opposed major surfaces 12a and 12b of slab 10; ¶ [0061]) and at least part of at least one of the first and second contact portions is fixed to the second surface of the support (wrapper 18 extending around an edge onto second major surface 12b and adhesively fixed to slab 10; ¶ [0061]).
Spieles is in the same field of aerosol-generating consumables and secures a flexible wrapper to opposed major surfaces of a sheet-like aerosol substrate. Applying that wraparound attachment to Batista’s flexible cover and sheet-like support would improve retention without changing the aerosol-generating material.
It has been held that applying a known technique to a known device ready for improvement to yield predictable results supports a prima facie conclusion of obviousness. MPEP § 2143(I)(D).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by extending at least one contact portion of the cover around an edge and fixing it to the second surface of the support to improve retention and structural integrity and reduce bending.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Batista et al. (US 2017/0164657 A1) in view of Fox (US 2004/0056479 A1).
Regarding claim 18, Batista teaches the method of claim 1 but does not expressly teach removing the cover support from between the cover and the support.
Fox teaches removing the cover support from between the cover and the support (insert removed from between substrate and oversheet while the oversheet remains intact and affixed; ¶ [0017]).
Fox is reasonably pertinent because it addresses removal of an intervening sheet from between a substrate and a fixed outer sheet without disturbing the fixed sheet. Applying Fox’s removable-insert arrangement to Batista’s intervening cover support would permit its removal while preserving Batista’s fixed cover-to-support interface.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by removing the intervening cover support after fixing the cover to the support, thereby retaining the cover while permitting removal of the intervening member without substantial damage.
Claims 37, 41, 43, and 48 are rejected under 35 U.S.C. § 103 as being unpatentable over Batista et al. (US 2017/0164657 A1) in view of Lafferty (US 2008/0230537 A1).
Regarding claim 37, Batista teaches the method of claim 1 but does not expressly teach the cover comprises a composite material comprising one or more stiffening elements.
Lafferty teaches the cover comprises a composite material (layered structure comprising susceptor films, support layers, and a corrugated base; ¶ [0025]) comprising one or more stiffening elements (flutes 112 of corrugated base 110; ¶ [0026]).
Lafferty is reasonably pertinent because it addresses dimensional stability in a layered sheet by using a corrugated stiffening layer. Incorporating that layer into Batista’s flexible multilayer cover would resist deformation without changing the cover’s position over the aerosol-generating material.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by forming the cover as a layered composite incorporating corrugated stiffening elements to improve dimensional stability and structural integrity.
Regarding claim 41, Batista teaches the method of claim 1 but does not expressly teach the cover is permeable.
Lafferty teaches the cover is permeable (apertures through the layered structure permitting vapor to escape and providing venting; ¶ [0047]).
Lafferty is reasonably pertinent because it addresses making a layered sheet permeable by forming apertures through it. Forming corresponding apertures in Batista’s cover, aligned with its underlying aerosol-permeable region, would permit aerosol passage while retaining the cover.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by providing apertures through the cover to make the cover permeable and permit vapor or aerosol to pass through it.
Regarding claim 43, Batista teaches the method of claim 1 but does not expressly teach the cover comprises one or more corrugations.
Lafferty teaches the cover comprises one or more corrugations (corrugated base 110 comprising angular, rounded, or sinusoidal flutes 112; ¶ [0026]).
Lafferty is reasonably pertinent because it uses corrugations to provide dimensional stability in a layered sheet. Corrugating a layer of Batista’s multilayer cover would increase rigidity without changing its attachment or position over the aerosol-generating material.
It has been held that use of a known technique to improve similar devices in the same way supports a prima facie conclusion of obviousness. MPEP § 2143(I)(C).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by corrugating at least part of the cover to increase rigidity and dimensional stability.
Regarding claim 48, Batista teaches the method of claim 1 but does not expressly teach the support comprises a susceptor.
Lafferty teaches the support comprises a susceptor (dimensionally stable base having susceptors overlying its opposite sides; ¶ [0007]).
Lafferty is reasonably pertinent because it uses a susceptor carried by a support to convert incident electromagnetic energy into heat. Incorporating a thin susceptor into or on Batista’s support would provide localized electromagnetic heating adjacent the aerosol-generating material without changing the support-and-cover construction.
It has been held that applying a known technique to a known device ready for improvement to yield predictable results supports a prima facie conclusion of obviousness. MPEP § 2143(I)(D).
Therefore, it would have been obvious to one of ordinary skill in the art to modify Batista by incorporating a susceptor into or on the support so that incident electromagnetic energy is converted into heat for heating the aerosol-generating material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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