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 § 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 1–7 and 9–15 are rejected under 35 U.S.C. § 103 as being unpatentable over Rojo-Calderon et al. (US 2018/0295885 A1) in view of Courbat et al. (US 2018/0289067 A1).
Regarding claim 1, Rojo-Calderon teaches an aerosol delivery device comprising (inductively heatable aerosol-generating device; ¶ [0143]):
a control body having a housing with an opening defined in one end thereof (main housing 70 having cavity 701 accessible upon removal of mouthpiece 71; ¶ [0149]);
a resonant transmitter (induction coil 703 surrounding cavity 701 for inductively heating the susceptor material; ¶ [0144]);
a control component configured to drive the resonant transmitter (power-management system provided in main housing 70; ¶ [0145]);
an aerosol source member, at least a portion of which is configured to be positioned proximate the resonant transmitter (consumable 9 comprising pellet 3 received in cavity 701 surrounded by induction coil 703; ¶ [0144]);
wherein the aerosol source member comprises a substrate (aerosol-forming substrate coating the susceptor material; ¶ [0004]) and a plurality of porous susceptor particles (susceptor particles that may be partially or entirely porous; ¶ [0064]); and
wherein the aerosol source member includes an outer shell forming a capsule (casing 8 in the form of a capsule containing the aerosol-generating particles; ¶ [0122]).
Rojo-Calderon further teaches coating the susceptor particles with aerosol-forming substrate (¶ [0004]) and teaches that the aerosol-forming substrate may be provided as a slurry (¶ [0066]). However, Rojo-Calderon does not teach wherein the porous susceptor particles are infused with an aerosol precursor composition.
Courbat is directed to the same inductive aerosol-heating environment and similarly employs porous inductively heatable susceptor material in association with aerosol-forming material. Courbat teaches that a susceptor may comprise a plurality of susceptor elements formed from open-porous inductively heatable ceramic material (¶ [0034]), and further teaches individual susceptor pellets soaked with aerosol-forming liquid to form a susceptor granulate (¶ [0107]). Courbat teaches that the open porosity provides high retention capacity for the aerosol-forming liquid and reduces leakage or spillage (¶ [0029]).
It has been held that use of a known technique to improve similar devices in the same way is obvious where the results are predictable. MPEP § 2143.
Therefore, it would have been obvious before the effective filling date of the claimed invention to modify Rojo-Calderon’s porous susceptor particles, which Rojo-Calderon already teaches coating with aerosol-forming material, by soaking the porous susceptor particles with aerosol-forming liquid as taught by Courbat such that the aerosol-forming composition is infused into the porous susceptor particles, because Courbat teaches that utilizing the open porous structure in this manner increases retention of the aerosol-forming liquid and reduces leakage or spillage, thereby predictably improving retention of the aerosol-forming material.
Regarding claim 2, modified Rojo-Calderon teaches wherein the capsule has a two-piece configuration (standard two-part capsule; Rojo-Calderon, ¶ [0124]).
Regarding claim 3, modified Rojo-Calderon teaches wherein at least one porous susceptor particle of the plurality of porous susceptor particles has a shape selected from a flake-like shape, a spherical shape, a hexagonal shape, a cubic shape, and an irregular shape (susceptor flake having a substantially flat, flake-like shape; Rojo-Calderon, ¶ [0057]).
Regarding claim 4, modified Rojo-Calderon teaches wherein at least one porous susceptor particle of the plurality of porous susceptor particles comprises a material selected from a cobalt material, an iron material, a nickel material, a zinc material, a manganese material, a stainless steel material, a ceramic material, a silicon carbide material, a carbon material, and combinations thereof (susceptor comprising stainless steel; Rojo-Calderon, ¶ [0051]).
Regarding claim 5, modified Rojo-Calderon teaches wherein the aerosol source member has a substantially cylindrical shape (cylindrical casing containing the aerosol-generating material; Rojo-Calderon, ¶ [0017]).
Regarding claim 6, modified Rojo-Calderon teaches wherein the substrate comprises at least one of tobacco beads and tobacco powder (tobacco substrate comprising tobacco dust particles; Rojo-Calderon, ¶ [0068]).
Regarding claim 7, modified Rojo-Calderon teaches wherein the outer shell comprises a material selected from a gelatin material, a cellulose material, and a saccharide material (capsule casing comprising gelatin; Rojo-Calderon, ¶ [0031]).
Regarding claim 9, Rojo-Calderon teaches an aerosol source member comprising (aerosol-generating material contained in capsule casing 8; ¶ [0122]):
a substrate (aerosol-forming substrate coating the susceptor material; ¶ [0004]);
a plurality of porous susceptor particles (susceptor particles that may be partially or entirely porous; ¶ [0064]); and
wherein the aerosol source member includes an outer shell forming a capsule (casing 8 in the form of a capsule containing the aerosol-generating particles; ¶ [0122]).
The recitation for use with an inductively heating aerosol delivery device constitutes intended-use language and does not impose an additional structural limitation on the claimed aerosol source member. Nevertheless, Rojo-Calderon teaches use of the aerosol source member with an inductively heatable aerosol-generating device (¶ [0143]).
Rojo-Calderon does not teach wherein the plurality of porous susceptor particles are infused with an aerosol precursor composition.
Courbat teaches a plurality of susceptor elements formed from open-porous inductively heatable ceramic material (¶ [0034]) and further teaches individual susceptor pellets soaked with aerosol-forming liquid to form a susceptor granulate (¶ [0107]). Courbat teaches that the open porosity provides high retention capacity for the aerosol-forming liquid and reduces leakage or spillage (¶ [0029]).
Therefore, it would have been obvious before the effective filling date of the claimed invention to modify Rojo-Calderon’s porous susceptor particles, which Rojo-Calderon already teaches coating with aerosol-forming material, by soaking the porous susceptor particles with aerosol-forming liquid as taught by Courbat such that the aerosol-forming composition is infused into the porous susceptor particles, because Courbat teaches that utilizing the open porous structure in this manner increases retention of the aerosol-forming liquid and reduces leakage or spillage, thereby predictably improving retention of the aerosol-forming material.
Regarding claim 10, modified Rojo-Calderon teaches wherein the capsule has a two-piece configuration (standard two-part capsule; Rojo-Calderon, ¶ [0124]).
Regarding claim 11, modified Rojo-Calderon teaches wherein at least one porous susceptor particle of the plurality of porous susceptor particles has a shape selected from a flake-like shape, a spherical shape, a hexagonal shape, a cubic shape, and an irregular shape (susceptor flake having a substantially flat, flake-like shape; Rojo-Calderon, ¶ [0057]).
Regarding claim 12, modified Rojo-Calderon teaches wherein at least one porous susceptor particle of the plurality of porous susceptor particles comprises a material selected from a cobalt material, an iron material, a nickel material, a zinc material, a manganese material, a stainless steel material, a ceramic material, a silicon carbide material, a carbon material, and combinations thereof (susceptor comprising stainless steel; Rojo-Calderon, ¶ [0051]).
Regarding claim 13, modified Rojo-Calderon teaches wherein the aerosol source member has a substantially cylindrical shape (cylindrical casing containing the aerosol-generating material; Rojo-Calderon, ¶ [0017]).
Regarding claim 14, modified Rojo-Calderon teaches wherein the substrate comprises at least one of tobacco beads and tobacco powder (tobacco substrate comprising tobacco dust particles; Rojo-Calderon, ¶ [0068]).
Regarding claim 15, modified Rojo-Calderon teaches wherein the outer shell comprises a material selected from a gelatin material, a cellulose material, and a saccharide material (capsule casing comprising gelatin; Rojo-Calderon, ¶ [0031]).
Claims 8 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Rojo-Calderon et al. (US 2018/0295885 A1) in view of Courbat et al. (US 2018/0289067 A1) and further in view of Ampolini et al. (US 2017/0071249 A1).
Regarding claim 8, modified Rojo-Calderon teaches the outer shell of the aerosol source member (casing 8 forming a capsule containing the aerosol-generating particles; Rojo-Calderon, ¶ [0122]). Rojo-Calderon further teaches that its capsule casing is opened during use by piercing or perforating the casing to permit airflow through the casing and aerosol to exit therefrom (¶ [0009]). However, modified Rojo-Calderon does not teach wherein the outer shell of the aerosol source member comprises a heat degradable material.
Ampolini is directed to aerosol delivery devices and similarly teaches capsules containing aerosol precursor material within an outer shell (¶ [0065]). Ampolini teaches that heat can degrade the physical integrity of the capsule wall and release the encapsulated liquid contents (¶ [0067]). Thus, Ampolini supplies the heat-degradable capsule-wall property absent from modified Rojo-Calderon.
It has been held that the simple substitution of one known element for another to obtain predictable results supports a conclusion of obviousness. MPEP § 2143.
Therefore, it would have been obvious to modify Rojo-Calderon’s capsule casing, which Rojo-Calderon already teaches is opened during use, to comprise the heat-degradable capsule-wall material taught by Ampolini in place of a casing requiring mechanical opening, because Ampolini teaches heat degradation as a known manner of opening an aerosol-precursor-containing capsule, thereby predictably providing heat-actuated opening of the capsule and release of its contents.
Regarding claim 16, modified Rojo-Calderon teaches the outer shell (casing 8 forming a capsule containing the aerosol-generating particles; Rojo-Calderon, ¶ [0122]). Rojo-Calderon further teaches opening the capsule casing during use by piercing or perforating the casing (¶ [0009]). However, modified Rojo-Calderon does not teach wherein the outer shell comprises a heat degradable material.
Ampolini teaches that heat can degrade the physical integrity of an aerosol-precursor-containing capsule wall and release the encapsulated liquid contents (¶ [0067]).
Therefore, it would have been obvious to modify Rojo-Calderon’s capsule casing to comprise the heat-degradable capsule-wall material taught by Ampolini in place of a casing requiring mechanical opening, because Ampolini teaches heat degradation as a known manner of opening an aerosol-precursor-containing capsule, thereby predictably providing heat-actuated opening of the capsule and release of its contents.
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 1, 3-7, 9, and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-10, and 13-14 of U.S. Patent No. 11,191,298.
Regarding claim 1, patented claim 1 recites the control body having a housing with an opening, resonant transmitter, control component, aerosol source member positioned proximate the resonant transmitter, tobacco substrate, plurality of porous susceptor particles infused with an aerosol precursor composition, and a capsule-configured aerosol source member including an outer shell. Patented claim 1 further narrows the present claim by requiring the substrate to be a tobacco substrate, specifying the outer-shell material, defining a receiving chamber, and requiring contact between the outer shell and the receiving chamber. Present claim 1 is therefore broader than, and not patentably distinct from, patented claim 1.
Regarding claim 3, patented claim 2 further recites at least one porous susceptor particle having a shape selected from a flake-like shape, a spherical shape, a hexagonal shape, a cubic shape, and an irregular shape. Present claim 3 is therefore not patentably distinct from patented claim 2.
Regarding claim 4, patented claim 3 further recites at least one porous susceptor particle comprising a material selected from cobalt, iron, nickel, zinc, manganese, stainless steel, ceramic, silicon carbide, carbon, and combinations thereof. Present claim 4 is therefore not patentably distinct from patented claim 3.
Regarding claim 5, patented claim 6 further recites the aerosol source member having a cylindrical shape. A cylindrical source member falls within the recited substantially cylindrical shape. Present claim 5 is therefore not patentably distinct from patented claim 6.
Regarding claim 6, patented claim 7 further recites the tobacco substrate comprising at least one of tobacco beads and tobacco powder. Present claim 6 is therefore not patentably distinct from patented claim 7.
Regarding claim 7, patented claim 1 recites the outer shell comprising a material selected from a gelatin material, a cellulose material, and a saccharide material. Present claim 7 is therefore not patentably distinct from patented claim 1.
Regarding claim 9, patented claim 8 recites a tobacco substrate, a plurality of porous susceptor particles infused with an aerosol precursor composition, and a capsule-configured aerosol source member including an outer shell. Patented claim 8 further narrows the present claim by requiring the substrate to be tobacco, specifying the outer-shell material, defining a receiving chamber in the intended device, and requiring the outer shell to contact at least a portion of that receiving chamber. Present claim 9 is therefore broader than, and not patentably distinct from, patented claim 8.
Regarding claim 11, patented claim 9 further recites at least one porous susceptor particle having a shape selected from a flake-like shape, a spherical shape, a hexagonal shape, a cubic shape, and an irregular shape. Present claim 11 is therefore not patentably distinct from patented claim 9.
Regarding claim 12, patented claim 10 further recites at least one porous susceptor particle comprising a material selected from cobalt, iron, nickel, zinc, manganese, stainless steel, ceramic, silicon carbide, carbon, and combinations thereof. Present claim 12 is therefore not patentably distinct from patented claim 10.
Regarding claim 13, patented claim 13 further recites the aerosol source member having a cylindrical shape. A cylindrical source member falls within the recited substantially cylindrical shape. Present claim 13 is therefore not patentably distinct from patented claim 13.
Regarding claim 14, patented claim 14 further recites the tobacco substrate comprising at least one of tobacco beads and tobacco powder. Present claim 14 is therefore not patentably distinct from patented claim 14.
Regarding claim 15, patented claim 8 recites the outer shell comprising a material selected from a gelatin material, a cellulose material, and a saccharide material. Present claim 15 is therefore not patentably distinct from patented claim 8.
Claims 2 and 10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,191,298 in view of Rojo-Calderon et al. (US 2018/0295885 A1).
Regarding claim 2, patented claim 1 recites the aerosol delivery device and capsule-configured aerosol source member from which present claim 2 depends, but does not recite wherein the capsule has a two-piece configuration. Rojo-Calderon teaches a standard two-part capsule used to contain aerosol-generating material (¶ [0124]). Therefore, it would have been obvious to configure the capsule of patented claim 1 as the standard two-part capsule taught by Rojo-Calderon because Rojo-Calderon teaches that known construction for the same purpose of containing aerosol-generating material, thereby predictably providing the claimed two-piece capsule configuration. Present claim 2 is therefore not patentably distinct from patented claim 1 in view of Rojo-Calderon.
Regarding claim 10, patented claim 8 recites the aerosol source member and capsule configuration from which present claim 10 depends, but does not recite wherein the capsule has a two-piece configuration. Rojo-Calderon teaches a standard two-part capsule used to contain aerosol-generating material (¶ [0124]). Therefore, it would have been obvious to configure the capsule of patented claim 8 as the standard two-part capsule taught by Rojo-Calderon because Rojo-Calderon teaches that known construction for the same purpose of containing aerosol-generating material, thereby predictably providing the claimed two-piece capsule configuration. Present claim 10 is therefore not patentably distinct from patented claim 8 in view of Rojo-Calderon.
Claims 8 and 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,191,298 in view of Ampolini et al. (US 2017/0071249 A1).
Regarding claim 8, patented claim 1 recites the aerosol delivery device including a capsule-configured aerosol source member having an outer shell, but does not recite wherein the outer shell of the aerosol source member comprises a heat degradable material. Ampolini teaches that heat can degrade the physical integrity of an aerosol-precursor-containing capsule wall and release the encapsulated contents (¶ [0067]). Therefore, it would have been obvious to form the capsule outer shell of patented claim 1 from the heat-degradable capsule-wall material taught by Ampolini because Ampolini teaches thermal degradation of the capsule wall as a known manner of releasing aerosol precursor material during use, thereby predictably providing a thermally activated capsule shell. Present claim 8 is therefore not patentably distinct from patented claim 1 in view of Ampolini.
Regarding claim 16, patented claim 8 recites a capsule-configured aerosol source member having an outer shell, but does not recite wherein the outer shell comprises a heat degradable material. Ampolini teaches that heat can degrade the physical integrity of an aerosol-precursor-containing capsule wall and release the encapsulated contents (¶ [0067]). Therefore, it would have been obvious to form the capsule outer shell of patented claim 8 from the heat-degradable capsule-wall material taught by Ampolini because Ampolini teaches thermal degradation of the capsule wall as a known manner of releasing aerosol precursor material during use, thereby predictably providing a thermally activated capsule shell. Present claim 16 is therefore not patentably distinct from patented claim 8 in view of Ampolini.
Claims 1-7 and 9-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 and 9-14 of U.S. Patent No. 12,075,816 in view of Rojo-Calderon et al. (US 2018/0295885 A1).
Regarding claim 1, patented claim 6, by dependence from patented claim 1, recites the control body, resonant transmitter, control component, aerosol source member positioned proximate the resonant transmitter, tobacco substrate, porous susceptor particles infused with an aerosol precursor composition, and an outer shell. Patented claim 6 additionally requires longitudinal openings and specifies the outer-shell material. The patented claim does not recite the outer shell forming a capsule. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to configure the outer shell of patented claim 6 as the capsule casing taught by Rojo-Calderon, because Rojo-Calderon teaches that capsule structure as a known manner of containing aerosol-generating material, thereby predictably providing an outer shell forming a capsule. Present claim 1 is therefore not patentably distinct from patented claim 6 in view of Rojo-Calderon.
Regarding claim 2, patented claim 1 recites the underlying aerosol delivery device but does not recite the capsule limitations of present claims 1 and 2. Rojo-Calderon teaches a casing in the form of a capsule (¶ [0122]) and further teaches a standard two-part capsule (¶ [0124]). Therefore, it would have been obvious to enclose the aerosol-generating material of patented claim 1 within the standard two-part capsule taught by Rojo-Calderon because that construction is a known structure for containing aerosol-generating material, thereby predictably providing the outer shell forming a two-piece capsule. Present claim 2 is therefore not patentably distinct from patented claim 1 in view of Rojo-Calderon.
Regarding claim 3, patented claim 2 recites the underlying device and the same recited susceptor-particle shape alternatives, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 2 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material, thereby providing the claimed outer shell forming a capsule. Present claim 3 is therefore not patentably distinct from patented claim 2 in view of Rojo-Calderon.
Regarding claim 4, patented claim 3 recites the underlying device and the same recited susceptor-material alternatives, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 3 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material, thereby providing the claimed outer shell forming a capsule. Present claim 4 is therefore not patentably distinct from patented claim 3 in view of Rojo-Calderon.
Regarding claim 5, patented claim 1 recites the underlying aerosol delivery device but does not recite the capsule or substantially cylindrical source-member limitations. Rojo-Calderon teaches a cylindrical casing containing aerosol-generating material and expressly uses cylindrical to include substantially cylindrical configurations (¶ [0017]). Rojo-Calderon also teaches that the casing may be in the form of a capsule (¶ [0122]). Therefore, it would have been obvious to house the aerosol-generating material of patented claim 1 in Rojo-Calderon's substantially cylindrical capsule casing for the known purpose of containing the aerosol-generating material, thereby predictably providing a substantially cylindrical aerosol source member having an outer shell forming a capsule. Present claim 5 is therefore not patentably distinct from patented claim 1 in view of Rojo-Calderon.
Regarding claim 6, patented claim 5 recites the tobacco substrate comprising at least one of tobacco beads and tobacco powder, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 5 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material. Present claim 6 is therefore not patentably distinct from patented claim 5 in view of Rojo-Calderon.
Regarding claim 7, patented claim 6 recites an outer shell comprising a material selected from a gelatin material, a cellulose material, and a saccharide material, but does not recite that the outer shell forms a capsule. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to configure the outer shell of patented claim 6 as the capsule casing taught by Rojo-Calderon because that capsule is a known structure for containing aerosol-generating material. Present claim 7 is therefore not patentably distinct from patented claim 6 in view of Rojo-Calderon.
Regarding claim 9, patented claim 14, by dependence from patented claim 9, recites a tobacco substrate, a plurality of porous susceptor particles infused with an aerosol precursor composition, and an outer shell. Patented claim 14 additionally requires longitudinal openings and specifies the outer-shell material. The patented claim does not recite the outer shell forming a capsule. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to configure the outer shell of patented claim 14 as the capsule casing taught by Rojo-Calderon, because Rojo-Calderon teaches that capsule structure as a known manner of containing aerosol-generating material, thereby predictably providing an outer shell forming a capsule. Present claim 9 is therefore not patentably distinct from patented claim 14 in view of Rojo-Calderon.
Regarding claim 10, patented claim 9 recites the underlying aerosol source member but does not recite the capsule limitations of present claims 9 and 10. Rojo-Calderon teaches a casing in the form of a capsule (¶ [0122]) and further teaches a standard two-part capsule (¶ [0124]). Therefore, it would have been obvious to enclose the aerosol-generating material of patented claim 9 within the standard two-part capsule taught by Rojo-Calderon because that construction is a known structure for containing aerosol-generating material, thereby predictably providing the outer shell forming a two-piece capsule. Present claim 10 is therefore not patentably distinct from patented claim 9 in view of Rojo-Calderon.
Regarding claim 11, patented claim 10 recites the underlying aerosol source member and the same recited susceptor-particle shape alternatives, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 10 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material. Present claim 11 is therefore not patentably distinct from patented claim 10 in view of Rojo-Calderon.
Regarding claim 12, patented claim 11 recites the underlying aerosol source member and the same recited susceptor-material alternatives, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 11 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material. Present claim 12 is therefore not patentably distinct from patented claim 11 in view of Rojo-Calderon.
Regarding claim 13, patented claim 9 recites the underlying aerosol source member but does not recite the capsule or substantially cylindrical source-member limitations. Rojo-Calderon teaches a cylindrical casing containing aerosol-generating material and expressly uses cylindrical to include substantially cylindrical configurations (¶ [0017]). Rojo-Calderon also teaches that the casing may be in the form of a capsule (¶ [0122]). Therefore, it would have been obvious to house the aerosol-generating material of patented claim 9 in Rojo-Calderon's substantially cylindrical capsule casing for the known purpose of containing the aerosol-generating material, thereby predictably providing a substantially cylindrical aerosol source member having an outer shell forming a capsule. Present claim 13 is therefore not patentably distinct from patented claim 9 in view of Rojo-Calderon.
Regarding claim 14, patented claim 13 recites the tobacco substrate comprising at least one of tobacco beads and tobacco powder, but does not recite the capsule limitation. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to provide the aerosol source member of patented claim 13 within the capsule casing taught by Rojo-Calderon for the known purpose of containing aerosol-generating material. Present claim 14 is therefore not patentably distinct from patented claim 13 in view of Rojo-Calderon.
Regarding claim 15, patented claim 14 recites an outer shell comprising a material selected from a gelatin material, a cellulose material, and a saccharide material, but does not recite that the outer shell forms a capsule. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Therefore, it would have been obvious to configure the outer shell of patented claim 14 as the capsule casing taught by Rojo-Calderon because that capsule is a known structure for containing aerosol-generating material. Present claim 15 is therefore not patentably distinct from patented claim 14 in view of Rojo-Calderon.
Claims 8 and 16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 6 and 14 of U.S. Patent No. 12,075,816 in view of Rojo-Calderon et al. (US 2018/0295885 A1) and Ampolini et al. (US 2017/0071249 A1).
Regarding claim 8, patented claim 6, by dependence from patented claim 1, recites the underlying aerosol delivery device and an outer shell, but does not recite the outer shell forming a capsule or wherein the outer shell of the aerosol source member comprises a heat degradable material. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Ampolini teaches that heat can degrade the physical integrity of an aerosol-precursor-containing capsule wall and release the encapsulated contents (¶ [0067]). Therefore, it would have been obvious to configure the outer shell of patented claim 6 as the capsule casing taught by Rojo-Calderon and to form that capsule wall from the heat-degradable material taught by Ampolini, because Rojo-Calderon teaches a capsule as a known structure for containing aerosol-generating material and Ampolini teaches thermal degradation of the capsule wall as a known manner of releasing aerosol precursor material during use, thereby predictably providing an aerosol-source capsule having a heat-degradable outer shell. Present claim 8 is therefore not patentably distinct from patented claim 6 in view of Rojo-Calderon and Ampolini.
Regarding claim 16, patented claim 14, by dependence from patented claim 9, recites the underlying aerosol source member and an outer shell, but does not recite the outer shell forming a capsule or wherein the outer shell comprises a heat degradable material. Rojo-Calderon teaches a casing in the form of a capsule containing aerosol-generating material (¶ [0122]). Ampolini teaches that heat can degrade the physical integrity of an aerosol-precursor-containing capsule wall and release the encapsulated contents (¶ [0067]). Therefore, it would have been obvious to configure the outer shell of patented claim 14 as the capsule casing taught by Rojo-Calderon and to form that capsule wall from the heat-degradable material taught by Ampolini, because Rojo-Calderon teaches a capsule as a known structure for containing aerosol-generating material and Ampolini teaches thermal degradation of the capsule wall as a known manner of releasing aerosol precursor material during use, thereby predictably providing an aerosol-source capsule having a heat-degradable outer shell. Present claim 16 is therefore not patentably distinct from patented claim 14 in view of Rojo-Calderon and Ampolini.
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.
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.
/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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