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 1-2, 4-13, and 16 are pending and are subject to this Office Action. Claim 1 has been amended. Claim 16 is newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 5/13/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-11, filed 5/13/2026, with respect to the rejection(s) of claim(s) 1-2 and 4-13 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended claim 1 to include the resistance to draw of the aerosol-generating section is between 4 millimetres H2O and 25 millimetres H2O, whereas previously this was not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found art and previously applied art.
The following is a modified rejection based on amendments made to the claims.
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.
Claim(s) 1-2, 4-12, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (WO2021/255453) in view of Wu (WO2023/138442, citations will refer to the English equivalent US2025/0107567).
Regarding claims 1-2, 4-5, 12, and 16 Hepworth teaches:
An aerosol-generating system (non-combustible aerosol provision system), comprising: an aerosol-generating article (article 1, page 33, seventh paragraph, fig. 2) comprising:
An aerosol-generating section (rod of aerosol-generating material 3, page 33, eighth paragraph, fig. 2) that has a length of at least 5 mm and less than 40 mm (as the length of the aerosol-generating material may be the same as the length of the strands of material, page 49, third paragraph, which has a length of at least 5 mm and less than 40 mm, page 12, third paragraph). The range taught by the prior art overlaps the claimed range of between 10 millimetres and 15 millimetres and is therefore prima facie obvious.
The aerosol-generating section comprising an aerosol-generating substrate comprising a plurality of strands of aerosol-generating material (shredded sheet of aerosolizable material that may comprise a plurality of strand or strips of the aerosolizable material, page 1, last paragraph).
Wherein the aerosol-generating substrate has a density of between 400 mg/cm3 and 900 mg/cm3 (page 3, last paragraph). The range taught by the prior art overlaps the claim 1 range of between 100 milligrams per cubic centimetre and 700 milligrams per cubic centimetre, and the claim 12 range of between 275 milligrams per cubic centimetre and 500 milligrams per cubic centimetre and is therefore prima facie obvious.
The resistance to draw of the aerosol-generation section is between 15 and 50 mm H2O (pressure drop, page 3, 10th paragraph). The range overlaps the claim 1 range of between 4 millimetres H2O and 25 millimetres H2O, and the claim 16 range of between 6 millimetres H2O and 15 millimetres H2O and is therefore prima facie obvious.
A downstream section located downstream of the aerosol-generating section (mouthpiece 2, page 33, last paragraph, fig. 2), the downstream section comprising a hollow tubular support element having an upstream end abutting the aerosol-generating section (cooling section 8 adjacent aerosol generating material 3 and comprises a hollow channel, page 36, second and third paragraphs, fig. 2).
A width of an opening at an end of the hollow tubular support element is between 1 mm and 4 mm (internal diameter of the hollow channel of colling section 8, page 36, third paragraph). An average width of the plurality of strands of aerosol-generating material is between 0.9 mm and 1.5 mm (cut width, page 12, second paragraph), which overlaps the claim 2 range of between 0.3 millimeter and 2 milimetres and is therefore prima facie obvious. Therefore, a ratio of a width of an opening at an end of the hollow tubular support element to an average width of the plurality of strands of aerosol-generating material is between 0.67 and 2.67. The range taught by the prior art overlaps the claim 1 range of at least 2 and less than or equal to 5 and is therefore prima facie obvious.
A ventilation zone at a location along the downstream section (ventilation provided via perforations 12, page 45, first paragraph, fig. 2).
Wherein the aerosol-generating article has a ventilation level of between 1% and 20% (page 44, last paragraph), which overlaps the claimed range of between 15% and 50% and is therefore prima facie obvious.
A distance between the ventilation zone and an upstream end of the aerosol-generating article is 28 mm or less (page 45, first paragraph), which overlaps the claimed range of between 27 millimetres and 37 millimetres and is therefore prima facie obvious.
An aerosol-generating device (aerosol-provision device 100, page 50, fourth paragraph, fig. 3) comprising an elongate internal heating element configured to be inserted into the aerosol-generating substrate of the aerosol-generating section of the aerosol generating article (heater 103 that is configured for insertion into the aerosol-generating material 3, page 51, fourth paragraph).
Wherein the elongate internal heating element is in a form of a pin or needle (needle, figs. 3 and 5).
Wherein the aerosol-generating substrate is a homogenized star anise material (the botanical may be star anise, page 8, third paragraph).
Hepworth does not appear to explicitly disclose (I) wherein the elongate internal heating element is a resistive heating element, (II) wherein the elongate internal heating element has a diameter between 1.5 millimetres and 3 millimetres and a length of between 8 millimetres and 25 millimetres, and (III) wherein a ratio of an average width of the plurality of strands of aerosol-generating material to a width of the elongate internal heating element is between 0.05 and 1.3
In regard to (I), Wu, directed to an aerosol-generating apparatus, teaches:
An aerosol generating apparatus (figure 1) with a heater 30 that is inserted into an aerosol generation product for heating when the aerosol generation product is received in the chamber ([0076]).
Heater 30 is a resistive heating element ([0082]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art to modify the elongate internal heating element of Hepworth to be a resistive heating element as taught by Wu, because both Hepworth and Wu are directed to aerosol generation devices with a heating element that is inserted into aerosol generating material for heating, and this merely involves incorporation of a known type of internal heating element to a similar aerosol generation device to yield predictable results.
In regard to (II), Hepworth is silent to the size of the elongate internal heating element.
However, Wu further teaches:
In addition, the heater 30 may have a length of about 12 mm to 20 mm and an outer diameter of about 2 mm to 4 mm ([0080]).
Therefore, as Hepworth is silent to size of the elongate internal heating element, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of elongate heating element sizes that one of ordinary skill could apply to Hepworth with a reasonable expectation of success in the elongate internal heating element being suitable sized for use in an aerosol generating device.
As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Hepworth the length and width the elongate heating element being about 12 mm to 20 mm and 2 to 4 mm, respectively, as taught by Wu, because both Hepworth and Wu are directed to aerosol generating devices with an elongate internal heating element for heating an aerosol generating article, and this merely involves incorporating a known length and width of an elongate internal heating element to a similar aerosol generating device to yield predictable results.
The range taught by the prior art of the width being about 2 mm to 4 mm overlaps the claimed range of a diameter between 1.5 mm and 3 mm and is therefore prima facie obvious. The range taught by the prior art of the length being about 12 mm to 20 mm falls within the claimed range of a length between 8 mm and 25 mm and is therefore prima facie obvious.
In regard to (III), Hepworth further teaches an average width of the plurality of strands of aerosol-generating material is between 0.9 mm and 1.5 mm (cut width, page 12, second paragraph). Therefore, a ratio of an average width of the plurality of strands of aerosol-generating material to a width of the elongate internal heating element is between 0.23 and 0.75. The range taught by the prior art overlaps the claimed range of between 0.05 and 1.3 as recited in claim 1, between 0.06 and 1.3 as recited in claim 4, and between 0.13 and 1.3 as recited in claim 5, and is therefore prima facie obvious.
Regarding claim 6-7, Hepworth is silent to the mass of the aerosol-generating substrate.
However, Hepworth teaches aerosol-generating substrate has a density of between 400 mg/cm3 and 900 mg/cm3 (page 3, last paragraph); the aerosol generating substrate has a circumference between 20 mm and 26 mm (page 34, third paragraph); and the aerosol generating substrate has a length between 5 and 40 mm (the length of the aerosol-generating material may be the same as the length of the strands of material, page 49, third paragraph, which has a length of at least 5 mm and less than 40 mm, page 12, third paragraph).
Therefore, it would be obvious to one of ordinary skill in the art to determine the mass of the aerosol-generating substrate from the disclosed density, circumference, and length of the aerosol generating substrate and arrive at a mass of the aerosol generating substrate being between 63.6 mg and 1935.9 mg.
The range taught by the prior art overlaps the claim 6 range of between 120 and 340 mg and the claim 7 range of between 160 and 280 mg and therefore is prima facie obvious.
Regarding claim 8, Hepworth further teaches an average length of the plurality of strands of the aerosol-generating material is at least 5 mm and less than 40 mm (page 12, third paragraph).
Therefore, a ratio of an average length of the plurality of strands of aerosol-generating material to a length of the elongate internal heating element is between 0.25 and 3.33. The range taught by the prior art overlaps the claimed range of between 0.1 and 1 and is therefore prima facie obvious.
Regarding claim 9, Hepworth further teaches the length of the plurality of strands of aerosol-generating material is at least 5 mm and less than 40 mm (page 12, third paragraph). The range taught by the prior art overlaps the claimed range of between 1 mm and 15 mm and is therefore prima facie obvious.
Regarding claim 10, Hepworth further teaches the aerosol generating substrate has a circumference between 20 mm and 26 mm (page 34, third paragraph).
Therefore, it would be obvious to one of ordinary skill in the art to determine the diameter of the aerosol-generating substrate from the disclosed circumference, and thus the width of the aerosol-generating section, and arrive at a width of the aerosol-generating section is between 6.37 mm and 8.28 mm.
Therefore, a ratio of the width of the elongate internal heating element to a width of the aerosol-generating section is about 0.24 to 0.63 which falls within the claimed range of between 0.1 and 0.8.
Regarding claim 11, Hepworth further teaches the aerosol-generating material comprises between 10 percent by weight and 25 percent by weight of aerosol former (page 2, fourth paragraph).
The range taught by the prior art falls within the claimed range of between 15 percent by weight and 30 percent by weight of aerosol former and therefore is prima facie obvious.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (WO2021/255453) in view of Wu (WO2023/138442, citations will refer to the English equivalent US2025/0107567) as applied to claim 1 above, and further in view of Zuber (WO2013/098410, previously cited).
Regarding claim 13, Hepworth does not appear to disclose the aerosol- generating article further comprising an upstream section located upstream of the aerosol- generating section, the upstream section comprising an upstream element having a downstream end abutting the aerosol-generating section.
However, Zuber, directed to a smoking article, teaches:
An aerosol-generating article (smoking article 1, fig. 1) further comprising an upstream section (front-plug 2) located upstream of an aerosol-generating section (aerosol-forming substrate 2), the upstream section comprising an upstream element having a downstream end abutting the aerosol-generating section (fig. 1, page 10, third paragraph).
The front plug may prevent egress of the aerosol-forming substrate from the distal end of the rod during handling and shipping (page 4, fourth paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art to modify the aerosol-generating article of Hepworth to have a front plug located upstream of the aerosol generating section and comprising an upstream element having a downstream end abutting the aerosol-generating section as taught by Zuber, because both Hepworth and Zuber are directed to aerosol generating article with aerosol generating substrates, Zuber teaches the front plug prevents egress of the aerosol-forming substrate, and this merely involves incorporation of a known aerosol-generating article element (i.e. front plug) according to known methods to a similar aerosol-generating article to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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