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.
Claim 191 is 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.
Claim 191 claims the flavored sleeve is “downstream” of the aerosol-forming substrate. Claim 1 now requires the upstream filter element circumscribed by the flavored sleeve, which implies the upstream filter element is upstream of the aerosol-forming substrate. It is not clear if claim 191 is addition position of the flavored sleeve or is defining the upstream filter element as downstream of the aerosol-forming substrate. Claim 191 is interpreted as further limiting the flavored sleeve to be on the upstream filter element (i.e. upstream of the aerosol-forming substrate) and additionally also located downstream of the aerosol-forming substrate.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 5-8, 11-14 and 191-193 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. US 2014/0373856 in view Owens, Jr. US 4,082,098 and Camus et al. US 2016/01433348.
Regarding claims 1 and 11, Zuber et al. disclose a smoking system comprising a smoking article 1 (aerosol-generating article) and aerosol-generating device 11 comprising heating element 8.
The smoking article comprises an upstream front-plug filter 2 (upstream filter element), aerosol-forming substrate 7 and mouthpiece filter 3 (terminal filter element). Zuber et al. disclose the smoking article comprises hollow cellulose acetate tube 6 (spacer element) and thin walled tube for cooling [0053], [0058] thus spacer element and aerosol cooling element between and axially spacing the upstream filter plug (upstream filter element) and mouthpiece filter (terminal filter element).
Zuber et al. do not disclose a flavor sleeve of absorbent material impregnated with flavorant circumscribing the mouthpiece filter.
Owens, Jr. teach that a cigarette (aerosol-forming article) can be provided with volatile flavoring agent, such as menthol, by providing an air permeable porous paper plug wrap enclosing the filter of the cigarette, the plug wrap impregnated with the volatile flavoring agent absorbs the flavoring agent (col. 3, lines 4-47). The use of a filter plug wrap as the carrier for the flavoring agent results in smooth high deliver rate while permitting longer shelf life (col. 1, lines 34-59).
Camus et al. teach that a smoking article such as a filter cigarette in which tobacco material is combusted to form smoke may alternatively be heated rather than combusted to form an aerosol [0008].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the smoking article of Zuber et al. with an air permeable porous paper plug wrap impregnated with the volatile flavoring agent and enclosing both the upstream front-plug filter and the mouthpiece filter of the cigarette as providing flavor such as menthol to smoking articles is well known in the art and the use of the flavoring agent-impregnated plug wrap as the carrier for the flavoring agent results in smooth high deliver rate while permitting longer shelf life. It would have been obvious to one of ordinary skill in the art to have provided the flavoring agent-impregnated plug wrap on the filters of the smoking article of Zuber et al. that is used for providing aerosol by heating rather than being combusted because Camus et al. teach that a smoking article such as a filter cigarette in which tobacco material is combusted to form smoke may alternatively be heated rather than combusted to form an aerosol. Thus the teaching of Owens Jr. of providing flavoring to a cigarette is relevant to a smoking article that is heated to generate an aerosol as analogous art directed to smoking articles.
Regarding claim 5, Zuber et al. disclose the mouthpiece filter 3 is the terminal filter element at the downstream axial end of the article.
Regarding claim 6, Owens Jr. disclose that the flavored plug wrap (flavored sleeve) is encircled by tipping envelope 8 and enclosed between the tipping and filter plug (Fig 1, col 3, lines 66-68).
Regarding claim 7, Zuber et al. disclose the smoking article comprises an upstream front-plug 2 that can be made of filter material [0025] and all elements of the smoking article assembled by a cigarette paper [0053].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have also or alternatively provided the flavoring agent-impregnated paper plug wrap as enclosing the upstream front plug filter to provide the volatile agent to any filter in the smoking article suitable to feed or mix the volatile flavoring agent with the aerosol of the smoking article.
Regarding claim 8, Zuber et al. disclose a cigarette paper 5 enclosing the elements of the smoking article, thus a wrapping layer that circumscribes the upstream front plug filter with the flavoring agent-impregnated paper plug wrap enclosed between the cigarette paper and the upstream front plug filter.
Regarding claim 12, Zuber et al. disclose the aerosol-generating device having sheath 12 (housing) and heating element in the form of a blade with a point (elongated heating element) [[0062]-[0063].
Regarding claims 13 and 14, Zuber et al. disclose pushing the smoking article into the sheath and penetrating the smoking article with the heating element [0064]-[0065].
Regarding claim 191, Owens Jr. disclose that the flavored plug wrap (flavored sleeve) is downstream of the tobacco (aerosol-forming substrate) by being on the mouthpiece filter plug.
Regarding claim 192, Owens Jr. disclose that the flavored plug wrap 6 (flavored sleeve) encloses the filter (thus filter element fully circumscribed), thus obvious to also fully circumscribe the upstream front-plug filter.
Regarding claim 193, Owens Jr. disclose that the flavored plug wrap 6 (flavored sleeve) has the same axial length as the filter plug (Fig 1), thus obvious to also provide as the same axial length as the upstream front-plug filter.
Claims 4 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. US 2014/0373856 in view Owens, Jr. US 4,082,098 and Camus et al. US 2016/01433348 as applied to claims 1 and 13, further in view of Conner et al. US 2015/0083150.
Conner et al. teach that for a smoking article, flavor may be provided or enhanced by capsule or microcapsule materials on or within the substrate material of the aerosol-generating segment, the wrapping materials, the filter element, or any other component capable of holding and releasing flavorants, preferably with minimal thermal degradation that would undesirably alter the flavor [0046].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have also provided flavor material in the filter in form such as capsules in addition to flavoring agent impregnated in the plug wrap, as taught by Conner et al. to enhance flavor by providing on or within a smoking article component capable of holding and releasing flavorants with minimal thermal degradation that would undesirably alter the flavor (Per the present specification, the flavor pod may be a capsule [0038]).The use of both flavoring agent in the plug wrap as well as capsules within the filter plug would have been obvious to one ordinary skill in the art as means of providing sufficient flavorant to the cigarette. It would have been obvious to one of ordinary skill in the art that such capsules are ruptured or melted to release flavor.
Response to Arguments
Applicant's arguments, filed December 4, 2025, have been fully considered but they are not persuasive.
Applicant argues that the skilled artisan would not be motivated by the combined teachings of Zuber and Owens to provide the upstream filter element at least partly circumscribed by a flavored sleeve that comprises a flavorant which does not occur naturally in tobacco and which is in contact with the upstream filter element for permeating into the upstream filter element. For example, if the front plug 2 of Zuber were considered to be the upstream filter element, then the airflow around the sidewalls in Zuber would be limited by the form of the cavity, so the perforations 9 shown in Owens wouldn't function. And, Owens also teaches away from having flavourants at a distal end, due to concerns that the flavourant is lost to sidesmoke (i.e. smoke from the lit end of the stick). See Owens at col 1, lines 14-19.
Applicant’s argument is not convincing. For the aerosol-generating device of Zuber to function in the cavity of sheath surrounding it, as the user draws on the mouth end of the smoking article, air is drawn into the smoking article and volatile substances form an inhalable aerosol [0068]. The front plug may be made of filter material that allows air to be drawn through the front plug and of the same material as the mouthpiece filter [0025]. Clearly there must be airflow around the article including the upstream end and the front plug filter to allow air to be drawn through the front plug filter and into the aerosol forming substrate downstream of the front plug filter. This would not affect an air permeable porous paper plug wrap impregnated with volatile flavoring agent enclosing both the upstream front-plug filter and the mouthpiece filter.
Regarding the argument that Owens also teaches away from having flavourants at a distal end, due to concerns that the flavourant is lost to sidesmoke, this is related to volatile flavoring sprayed onto the tobacco itself, which is why Owens teaches to provide the volatile flavoring in an air permeable plug wrap. This is not a teaching away from providing flavorant at the distal end.
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.
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/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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