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
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 16, 18-20, 23, 25, 26, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Marquez et al. (US 2008/0149119A1) in view of Dunlap et al. (US 2008/0173320), Kobayashi et al. (US 2013/0220353), and Shimizu (US 2011/0290269).
Claim 16. Marquez et al. discloses a cigarette 91 including a tobacco rod 92 (aerosol-generating substrate) and filter component 93 (mouthpiece) in the form of a plug-space-plug filter. The filter component 93 includes a mouthpiece filter 94 (additive segment), a space 96 (upstream cavity), and a plug 95 (intermediate segment). The plug can be in a form of a tube and can be composed of a solid piece of material such as polypropylene or cellulose acetate fibers. The tobacco rod 92 and the filter component 93 are joined together with tipping paper 97. The filter component 93 may include a filter overwrap 98 (wrapper). Flavor-enhanced fibers can be incorporated into the mouthpiece filter 94, the plug 95, and/or the space 96. The flavor-enhanced fibers can be incorporated into any element of the filter component of a cigarette so that the fibers are substantively in parallel with the long axis of the smoking article. Fibers enhanced with non-flavorant additives can be prepared as described for flavor-enhanced fibers for manufacturing smoking articles (Figure 9; [0057]).
Marquez et al. teaches that flavor-enhanced fibers can be incorporated into the mouthpiece filter 94 (additive segment) ([0057]), but does not explicitly disclose that the mouthpiece filter 94 (additive segment) comprises one or more breakable capsules comprising an outer shell and an inner core containing an additive.
Dunlap et al. discloses a filter element 20 of a smoking article, the filter comprising a mouth-end section of filter material 36 comprising at least one breakable capsule 54 contained therein. The capsule 54 can be simply imbedded in the filter material 36. Each breakable capsule 54 carries a payload incorporating a compound that is intended to introduce some change to the nature or character of mainstream smoke drawn through that filter element (e.g., a flavoring agent). The smoker may selectively rupture the capsule 54 in order to release the flavoring agent (Figure 8; [0072]). The capsule 54 is generally spherical in shape and possesses a rigid outer shell that surrounds an internal payload (inner core/additive) (Figure 8; [0077]).
Dunlap et al. teaches that the smoker may rupture the capsule 54 at any time before, during, or even after, the smoking experience. Breakage of the capsule 54 acts to release the contents that are contained and sealed therein. Release of the contents of the capsule 54 into the filter element 20 thus enables the smoker to achieve the intended benefit of action of certain of those contents, whether that benefit results from flavoring or scenting the smoke, cooling or moistening the smoke, freshening the scent of the cigarette butt, or achieving some other goal associated with modifying the overall composition of the smoke or altering the performance characteristics of the cigarette ([0074]). It would have been obvious to one of ordinary skill in the art before the effective filing date that a breakable capsule 54 such as that taught by Dunlap et al. be incorporated into the cigarette in addition to, or alternatively in place of, the flavor-enhanced fibers of the mouthpiece filter 94 (additive segment) of Marquez et al. as a means of delivering a flavoring agent. The breakable capsule allows the user to determine when in the smoking experience to release the flavorant or whether to release the flavorant at all, a feature which is not available with the flavor-enhanced fibers of Marquez et al.
Marquez et al. in view of Dunlap et al. discloses that the article may comprise ventilation holes 30 in the filter element 20 (Dunlap [0031]), but does not explicitly disclose that the ventilation holes are provided over the upstream cavity.
Kobayashi et al. discloses a multi-segment filter for a smoking article comprising a first segment 71 and the second segment 72 with a gap 110 provided between the first segment 71 and the second segment 72. Ventilation holes 501' are provided in that portion of the tipping paper 50 which surrounds the gap 110 (Figure 7; [0059]).
Kobayashi et al. teaches that ventilation holes ensure that cigarette mainstream smoke does not concentrate in the portion of the filter in which the ventilation holes are formed ([0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date to include ventilation holes through the tipping paper and filter overwrap 98 (wrapper) surrounding space 96 (upstream cavity) of the filter component 93 (mouthpiece) of Modified Marquez et al. in order to ensure that cigarette mainstream smoke does not concentrate or become trapped in the space 96 (upstream cavity) as taught by Kobayashi et al.
Modified Marquez et al. does not explicitly disclose the use of the cigarette with a device comprising one or more electrical heating elements configured to heat the aerosol-generating substrate without combustion to produce an aerosol.
Shimizu discloses a cigarette heater configured to heat a cigarette so as to vaporize nicotine from the tobacco leaves at a relatively low temperature and enable its inhalation ([0018]). The device comprises a heater 1 within a heater sleeve 7 into which a cigarette is inserted. The heater is electrically powered via connector 6 which receives electric power from outside ([0044]; [0047]-[0048]; Figure 2).
Shimizu teaches that the cigarette heater allows a user to vaporize nicotine from tobacco leaves at a suitable temperature to enable smoker to inhale the nicotine without combusting the tobacco leaves ([0017]) without producing harmful tar, carbon monoxide, benzopyrene, and so on that are produced at the time of lighting tobacco for smoking and are inhaled into the body ([0020]). Shimizu also teaches that since the heating portion is located near the center of the cigarette, the temperature of heating the wrapping paper containing many chemicals is lowered, thereby enabling reduction of the vaporization of harmful chemicals from the wrapping paper ([0022]). It would have been obvious to one of ordinary skill in the art before the effective filing date that the article of claim 16, disclosed by Modified Marquez et al., be used with a cigarette heater such as that of Shimizu to allow for the vaporization of nicotine without producing harmful tar, carbon monoxide, benzopyrene, and so on which are products of combustion of tobacco and further to reduce the vaporization of harmful chemicals from the wrapping paper.
Claims 18-20. Modified Marquez et al. discloses that the space 96 (upstream cavity) is a hollow tube formed from filter overwrap 98 (wrapper) and tipping paper 97 (Marquez Figure 9; [0057]).
Claim 23. Modified Marquez et al. discloses a single breakable capsule 54 provided approximately centrally along the length of the filter element (Dunlap Figure 8).
Claim 25. Modified Marquez et al. discloses that the cigarette 91 comprises tobacco rod 92 (aerosol-generating substrate) (Marquez Figure 9; [0057]).
Claim 26. Modified Marquez et al. discloses the article of claim 16, wherein the total length is about 70 mm to about 120 mm, often about 80 mm to about 100 mm (Dunlap [0034]). Since Marquez et al. does not explicitly teach a specific length for the cigarette 91, it would have been obvious to one of ordinary skill in the art before the effective filing date that the smoking article of Marquez would be made to a length of smoking articles known in the art, such as that of Dunlap et al. Furthermore, since the range of “about 70 mm to about 120 mm, often about 80 mm to about 100 mm” overlaps the claimed range of “between about 40 millimeteres and about 90 millimetres”, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claims 30 and 31. Modified Marquez et al. discloses ventilation holes 501' are provided in that portion of the tipping paper 50 (wrapper circumscribing the additive segment) which surrounds the gap 110 (Kobayashi Figure 7; [0059]).
Claim 32. Modified Marquez et al. discloses a slender heater 1 in a heater sleeve 7 (Shimizu Figure 2, [0044]) configured to vaporize nicotine and enable inhalation of vaporized nicotine without burning the cigarette (Shimizu Abstract).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Marquez et al. (US 2008/0149119A1) in view of Dunlap et al. (US 2008/0173320), Kobayashi et al. (US 2013/0220353), Shimizu (US 2011/0290269), and further in view of Houck Jr. et al. (US 4649944).
Claim 17. Modified Marquez et al. discloses the article of claim 16 but does not explicitly teach specific lengths of the mouthpiece filter 94 (additive segment) and space 96 (upstream cavity).
Houck Jr. et al. discloses a filter cigarette comprising a first filter segment 7 and second filter segment 3 which are separated by a void 8. The first segment 7 is movable along the longitudinal axis of the cigarette towards the second segment 3 either by rotation or by translation. Movement along this axis compresses the plug wrap between the segments thereby decreasing the volume of the void 8 which varies the RTD value of the cigarette (Figure 3; Column 3, lines 1-33).
One of ordinary skill in the art before the effective filing date would recognize the length of the space 96 (upstream cavity) as a result effective variable since Houck Jr et al. teaches that decreasing the volume of the void 8 which varies the RTD value of the cigarette (Houck Column 3, lines 1-33). Thus, it would have been obvious to one of ordinary skill in the art would be motivated to modify the length of the space 96 (upstream cavity) relative to the length of the mouthpiece filter 94 (additive segment) in order to achieve a desired resistance to draw value. The determination of the optimum or workable ranges of the lengths of the space 96 (upstream cavity) and mouthpiece filter 94 (additive segment) are a matter of routine experimentation (See MPEP §2144.05(II)).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Marquez et al. (US 2008/0149119A1) in view of Dunlap et al. (US 2008/0173320), Kobayashi et al. (US 2013/0220353), Shimizu (US 2011/0290269), and further in view of Tanasheva et al. (US 2014/0238427).
Claim 21. Modified Marquez et al. discloses the article of claim 19 but does not explicitly disclose that at least one of the paper layers is made from a paper with a basis weight of at least about 100 grams per square meter.
Tanasheva et al. discloses a smoking article comprising a mouthpiece 101 comprising at least one segment and a wrapper circumscribing the at least one segment and defining a mouth end cavity 106 (Abstract; Figures 1 and 2). The wrapper is a sheet material having a basis weight of is preferably between about 40 grams per square meter (gsm) and about 160 gsm, more preferably between about 45 gsm and about 150 gsm, most preferably between about 80 gsm and about 140 gsm ([0011]).
Tanasheva et al. teaches that it is advantageous to use stiffer wrapper material than for conventional smoking articles to reduce the possibility of the mouth end cavity collapsing upon smoking the smoking article ([0011]). It would have been obvious to one of ordinary skill in the art before the effective filing date that at least one of the paper layers of Marquez et al. be made to have a basis weight of at least about 100 grams per square meter to reduce the possibility of the space 96 (upstream cavity) collapsing as taught by Tanasheva et al.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Marquez et al. (US 2008/0149119A1) in view of Dunlap et al. (US 2008/0173320), Kobayashi et al. (US 2013/0220353), Shimizu (US 2011/0290269), and further in view of Kaneki et al. (US 6568402).
Claim 22. Modified Marquez et al. discloses the article of claim 18, wherein the space 96 (upstream cavity) is surrounded by tipping paper 97 and filter overwrap 98 (wrapper) (Marquez Figure 9; [0057]), but does not explicitly disclose a thickness of the tipping paper 97 and filter overwrap 98 or that the wall thickness of the hollow tube segment is at least about 100 micrometers.
Kaneki et al. discloses a filter-tipped cigarette comprising a filter portion 10 wrapped with a filter wrapper paper 12 and attached to a tobacco portion 20 via a perforated tip paper 30 (Figure 1; Column 3, line 61 – Column 4, line 14). The wrapper paper 12 having a multi-ply combination structure of the present invention has a layer 121 which provides a first surface 12a and a layer 122 which provides a second surface 12b are combined into an integral combination structure (Column 6, lines 10-14). The high permeability layer 121 should preferably have a single-layer thickness of 30 to 100 .mu.m, and the low permeability layer 122 should preferably have a single-layer thickness of 15 to 35 .mu.m. It is particularly preferable that the wrapper paper 12 should have a total thickness of 40 to 130 .mu.m (Column 7, lines 44-59).
Kaneki et al. teaches that the multi-ply structure of the wrapper paper 12 provides a high ventilation rate while also suppressing the exudation of glue so as to be able to continuously make filter tipped cigarettes without difficulties (Column 1, lines 36-54). It would have been obvious to one of ordinary skill in the art that the filter overwrap 98 of Marquez et al. be modified to have the multi-ply combination structure of the filter wrapper paper 12 of Kaneki et al. in order to provide a high ventilation rate and prevent exudation of glue during a continuous cigarette making process, as taught by Kaneki et al. Examiner notes that the thickness of the hollow tube segment would be 40 to 130 µm (the thickness of the filter overwrap/wrapper paper 12) plus the thickness of the tipping paper, which is not explicitly disclosed. Since the range 40 to 130 µm overlaps the claimed range of at least about 100 micrometers, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Response to Arguments
Applicant's arguments filed 12/23/25 have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious to combine the Marquez et al., Dunlap et al., Kobayashi et al., and Shimizu references to arrive at a system analogous to that of the system of claim 16. Specifically, Applicant asserts that the results of the proposed combination would not have been predictable to one of ordinary skill in the art because Shimizu describes using a commercially available cigarette and the article of modified Marquez et al. is not a commercially available or conventional cigarette. Examiner disagrees, as the Marquez et al., Dunlap et al., Kobayashi et al. describe smoking articles known in the art and Shimizu discloses a device which uses known or “commercially available” cigarettes. Examiner finds nothing in the references which would render the combination “unpredictable”.
Applicant argues that Dunlap cannot be combined with the combination of Kobayashi and Marquez because Dunlap describes the rupturing of the capsule flavoring or scenting the smoke, which one of ordinary skill in the art would have found unpredictable because the device of Shimizu does not produce smoke. Examiner argues that one of ordinary skill in the art would recognize that the aerosol produced by Kobayashi may be flavored or scented in a similar, predictable, manner as smoke.
Applicant also argues that Dunlap describes that rupturing the capsule after smoking may provide the benefit of freshening the scent of the cigarette butt which would have unpredictable effects in the combination because the device of Shimizu does not have an unpleasant smell. Examiner maintains that it would have been obvious to one of ordinary skill in the art before the effective filing date that a breakable capsule 54 such as that taught by Dunlap et al. be incorporated into the cigarette in addition to, or alternatively in place of, the flavor-enhanced fibers of the mouthpiece filter 94 (additive segment) of Marquez et al. as a means of delivering a flavoring agent. The breakable capsule allows the user to determine when in the smoking experience to release the flavorant or whether to release the flavorant at all, a feature which is not available with the flavor-enhanced fibers of Marquez et al. The fact that Dunlap et al. teaches additional benefits (adding scent to a cigarette butt) which may not apply to the proposed combination does not render the entire combination “unpredictable”.
Applicant further argues that there is no articulated reason to include ventilation zones over the upstream cavity in the proposed combination of references. Applicant states that the advantages recognized by the inventor, namely that the ventilation zone introduces cooler air into the aerosol upstream of the one or more capsules provides an additional cooling effect and minimizes the impact of the aerosol on the breakability of the outer shell, are not taught by the prior art references. Examiner argues that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant misstates Examiner’s motivation to combine the Kobayashi reference as “the cigarette mainstream smoke does not concentrate in the central portion of the filter” (Page 11 of Remarks submitted 12/23/25). The motivation statement provided by Examiner on Page 6 the Non-Final Rejection actually states “Kobayashi et al. teaches that ventilation holes ensure that cigarette mainstream smoke does not concentrate in the portion of the filter in which the ventilation holes are formed ([0058])” (emphasis added). While the original statement regarding preventing concentration of the smoke in the filer is stated in [0058] of Kobayashi which discusses embodiments in which the ventilation holes are provided surrounding filter segments, Examiner maintains that it would have been obvious to one of ordinary skill in the art that the ventilation holes, wherever they are located, prevent the accumulation or concentration of smoke. Thus, Examiner maintains that it would have been obvious to one of ordinary skill in the art that if the ventilation holes are provided over a gap as in the embodiment of Kobayashi Figure 7, then they prevent smoke from concentrating in the gap 110.
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 Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached on (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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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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