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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/21/26 has been entered.
Status of the Claims
Claims 1-2, 7-11, 235-236, and 238-243 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 9/21/26.
Claims 1, 7, 8, and 243 are amended.
Claim 237 is cancelled
Response to Arguments
Applicant’s arguments (filed 9/21/26, pages 7-9) with respect to the rejection(s) of Claims 1, 2, 7, 237, 238, and 239 under Hu have been fully considered and are persuasive in view of Applicant’s amendments to Claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fiebelkorn.
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, 2, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fiebelkorn (US 20110048436 A1).
Regarding Claim 1, Fiebelkorn discloses an aerosol-forming article ([0007]) comprising:
an aerosol-forming substrate (tobacco rod 15, [0020], Fig 1);
a terminal filter element at a downstream axial end of the article (third filter element 51, [0021], Fig 1); and
an upstream filter element provided upstream of the terminal filter element (first filter element 31, [0021], Fig 1);
wherein the terminal filter element comprises a hollow bore extending from an upstream axial end of the terminal filter element to a downstream axial end of the terminal filter element (Third filter section 51 includes a tube 55 which may be a hollow tube which extends along the length of the filter section. [0022]-[0023], Fig 1)
wherein the hollow bore is off-set from an axial centre of the terminal filter element such that there is no bore at the axial center (Hollow tube 55 may not be located along the central axis, such that the tube would be off-set from axial center and there would be no bore at the axial center. [0036]);
wherein the terminal filter element is formed of a smoke permeable material comprising cellulose acetate or polypropylene tow (Third filter element 51 comprises filter material 52 which may be cellulose acetate or polypropylene. [0024], Fig 1);
the porosity of the smoke permeable material of the upstream filter element being greater than the porosity of the smoke permeable material of the terminal filter element (The relative filtration efficiency of the filter materials in the first and third filter elements may be different; such as the first filter material may have a lower filtration efficiency than the third filter material. [0011]. The relative filter efficiencies may be adjusted by changing the type and/or density of the filter materials used, which would directly affect the porosity of the first filter material relative to the third filter material. [0038])
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (First filter element 31 includes a tube 35 which may be a hollow tube which extends along the length of the filter section. [0022]-[0023], Fig 1); and
wherein a diameter of the axial bore in the upstream filter element is greater than a diameter of the off-set hollow bore in the terminal filter element (The diameter of tubes 35, 55 may be different and may be adjusted depending on the desired properties of the filter. [0010], [0023]).
Regarding Claim 2, Fiebelkorn discloses an aerosol-forming article wherein the aerosol-forming article may be used a heat-not-burn (HNB) consumable (The filter arrangement may be used in a wider range of smoking articles. [0038]). The limitation “wherein the aerosol-forming article is a heat-not-burn (HNB) consumable” is a statement of intended use of the aerosol-forming article. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the aerosol-forming article of Fiebelkorn is capable of being used as a heat-not-burn consumable and thus Claim 2 is not patentably distinguishable from the prior art.
Regarding Claim 7, Fiebelkorn discloses an aerosol-forming article wherein the upstream and terminal filter elements are spaced apart by a cooling element and/or a spacer element (First filter element 31 and third filter element 51 are spaced apart by filter element 41. [0021], Fig 1).
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 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 238 and 239 are rejected under 35 U.S.C. 103 as being unpatentable over of Fiebelkorn.
Regarding Claim 238, Fiebelkorn discloses an aerosol-forming article wherein the hollow bore has a bore diameter of between 1 and 5 mm (The diameter of the hollow tubes may be approximately 0.1-3.0 mm. [0022]-[0023]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Regarding Claim 239, Fiebelkorn discloses an aerosol-forming article wherein the axial bore of the upstream filter element has a bore diameter of between 1 and 5 mm (The diameter of the hollow tubes may be approximately 0.1-3.0 mm. [0022]-[0023]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20160150825 A1) in view of Fiebelkorn.
Regarding Claim 8, Mironov discloses an aerosol-forming system ([0001]) comprising:
a smoking substitute article having a downstream axial end (aerosol-generating article 10, [0126], Fig 3), the smoking substitute article comprising:
an aerosol-forming substrate (aerosol-forming substrate 20, [0126], Figure 3);
a terminal filter element at a downstream axial end of the article (Mouthpiece 50 comprises a filter. [0086], [0126], [0131], Figure 3); and
an upstream filter element provided upstream of the terminal filter element (support element 30, [0126], Fig 3);
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (The support element is a hollow cellulose acetate tube. [0130]); and
a device comprising a heating element (The aerosol-generating article is used with a device which comprises an induction heating element that induces heat in a susceptor, heating the aerosol-generating article. [0038])
wherein the aerosol-forming article further comprises: an aerosol-cooling element formed of a crimped/gathered sheet of material configured to cool aerosol generated from the aerosol-forming substrate (Aerosol-cooling element 40 comprises a crimped and gathered sheet of a material selected from a group comprising cellulose acetate. [0081]-[0082], [0130], Fig 3).
Mironov does not explicitly disclose a filter arrangement of the article wherein the terminal filter element of the article comprises a hollow bore.
However, Fiebelkorn teaches an aerosol-forming article ([0007]) comprising:
an aerosol-forming substrate (tobacco rod 15, [0020], Fig 1);
a terminal filter element at a downstream axial end of the article (third filter element 51, [0021], Fig 1); and
an upstream filter element provided upstream of the terminal filter element (first filter element 31, [0021], Fig 1);
wherein the terminal filter element comprises a hollow bore extending from an upstream axial end of the terminal filter element to a downstream axial end of the terminal filter element (Third filter section 51 includes a tube 55 which may be a hollow tube which extends along the length of the filter section. [0022]-[0023], Fig 1)
wherein the hollow bore is off-set from an axial centre of the terminal filter element such that there is no bore at the axial center (Hollow tube 55 may not be located along the central axis, such that the tube would be off-set from axial center and there would be no bore at the axial center. [0036]);
wherein the terminal filter element is formed of a smoke permeable material comprising cellulose acetate or polypropylene tow (Third filter element 51 comprises filter material 52 which may be cellulose acetate or polypropylene. [0024], Fig 1);
the porosity of the smoke permeable material of the upstream filter element being greater than the porosity of the smoke permeable material of the terminal filter element (The relative filtration efficiency of the filter materials in the first and third filter elements may be different; such as the first filter material may have a lower filtration efficiency than the third filter material. [0011]. The relative filter efficiencies may be adjusted by changing the type and/or density of the filter materials used, which would directly affect the porosity of the first filter material relative to the third filter material. [0038])
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (First filter element 31 includes a tube 35 which may be a hollow tube which extends along the length of the filter section. [0022]-[0023], Fig 1); and
wherein a diameter of the axial bore in the upstream filter element is greater than a diameter of the off-set hollow bore in the terminal filter element (The diameter of tubes 35, 55 may be different and may be adjusted depending on the desired properties of the filter. [0010], [0023]); and
a second filter element configured positioned between the first and third filter elements (Second filter element 41 comprises filter material 42 which may be paper or cellulose acetate. [0021], [0024], Fig 1).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the first and third filters of the aerosol generating article filter arrangement of Mironov with the first and third filters taught by Fiebelkorn because Mironov and Fiebelkorn are both directed to smoking articles comprising filter elements, Fiebelkorn teaches that a smoking article comprising the filter elements discussed above provides a graduated and controlled rise in the filtration efficiency of the filter as the smoking article is consumed ([0008]), and this merely involves applying a known filter arrangement component to a similar aerosol generating article to yield predictable results.
Regarding Claim 9, Mironov teaches a device for a smoking article:
wherein the device comprises a main body for housing the heating element (The aerosol-generating device 200 comprises an inductor 210, the inductor 210 located adjacent a distal portion 231 of a substrate receiving chamber 230 of the aerosol-generating device 200. [0134], Fig 4) and
the heating element comprises an elongated heating element (Susceptor 4 penetrates the aerosol-generating article and is heated by the surrounding inductor 210 to generate heat. [0136], Fig 5)
Regarding Claim 10, Mironov teaches a method of using the system and device of Claim 8 ([0134]), the method comprising:
inserting the article into the device (A user inserts aerosol-generating article 10 into the substrate receiving chamber 230 of the aerosol-generating device 200. [0134], Figs 4 & 5); and
heating the article using the heating element (The susceptor heats the aerosol-forming substrate 20 of the aerosol-generating article 10. [0136], Fig 5)
Regarding Claim 11, Mironov teaches a method of using the system comprising
inserting the article into a cavity within a main body of the device (A user inserts aerosol-generating article 10 into the substrate receiving chamber 230 of the aerosol-generating device 200. [0134], Figs 4 & 5) and
penetrating the article with the heating element upon insertion of the article (Susceptor 4 penetrates the aerosol-generating article and is heated by the surrounding inductor 210 to generate heat. [0136], Fig 5).
Claims 235-236 and 240-243 are rejected under 35 U.S.C. 103 as being unpatentable over Fiebelkorn as applied to Claim 1 above, and further in view of Mironov.
Regarding Claims 235 and 236, Fiebelkorn discloses the aerosol-forming article comprising an aerosol-forming substrate of tobacco ([0020], Fig 1) and wherein the filter elements may be used with a wider range of smoking articles ([0038]), but does not explicitly disclose, and is silent on, the tobacco composition and any additives therein.
However, Mironov teaches a similar smoking article wherein the aerosol-forming substrate is formed from tobacco ([0045]-[0047]) and further comprises a humectant ("aerosol-formers are known in the art and include, but are not limited to: polyhydric alcohols…" [0060]) and wherein the humectant content of the aerosol-forming substrate is at least 1 wt% up to 50 wt% ("aerosol-forming substrate may have an aerosol former content of between approximately 5% and approximately 30% on a dry weight basis" [0064]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the substrate of Fiebelkorn with a humectant as taught by Mironov because Fiebelkorn and Mironov are both directed to smoking articles comprising tobacco, Fiebelkorn is silent on the addition of additives to the substrate, Mironov teaches the use of aerosol-former compounds to facilitate the formation of an aerosol when heated ([0059]), and this merely involves applying a known smoking article component to a similar smoking article to yield predictable results.
Regarding Claim 240, Fiebelkorn discloses that the smoking article comprises a second filter element between the upstream and downstream hollow bore filters (second filter element 41, [0021], Fig 1) which comprises a filter material such as cellulose acetate, paper, or polypropylene (second filter element 41 comprises filter material 42 which may be cellulose acetate, paper, or polypropylene. [0021], [0024], Fig 1). Fiebelkorn does not explicitly disclose wherein the cellulose acetate filter comprises an aerosol-cooling element.
However, Mironov teaches a similar smoking substitute article comprising:
an aerosol-forming substrate (aerosol-forming substrate 20, [0126], Figure 3);
a terminal filter element at a downstream axial end of the article (Mouthpiece 50 comprises a filter. [0086], [0126], [0131], Figure 3); and
an upstream filter element provided upstream of the terminal filter element (support element 30, [0126], Fig 3);
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (The support element is a hollow cellulose acetate tube. [0130]); and
an aerosol-cooling element formed of a plastics material (Aerosol-cooling element 40 comprises a crimped and gathered sheet of a material selected from a group comprising: cellulose acetate, polypropylene, polyvinylchloride, polypropylene, polylactic acid, or polyethylene terephthalate. [0081]-[0082], [0130], Fig 3).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the second filter of Fiebelkorn with the cooling element formed from a plastics material as taught by Mironov because Fiebelkorn and Mironov are both directed to smoking articles comprising multi-segmented filter arraignments, Mironov teaches the use of the second filter element as an aerosol-cooling element, and this merely involves applying a known smoking article component to a similar smoking article to yield predictable results.
Regarding Claim 241, Mironov further discloses wherein the plastics material is selected from the group consisting of: polylactic acid, polyvinyl chloride, polyethylene, and polyethylene terephthalate (Aerosol-cooling element 40 comprises a crimped and gathered sheet of a material selected from a group comprising: cellulose acetate, polypropylene, polyvinylchloride, polypropylene, polylactic acid, or polyethylene terephthalate. [0081]-[0082], [0130], Fig 3).
Regarding Claim 242, Fiebelkorn discloses the smoking article may comprise more than three filter segments to further filter the produced smoke (Increasing the number of filter sections allows further control over the filter behavior. [0013]. The type and density of the filter material, and the number and structure of the filter sections can be adjusted to provide the desired overall filter characteristics. [0038]), but does not explicitly disclose wherein the filter arrangement comprises a spacer element formed from a cardboard tube.
However, Mironov teaches a similar smoking article wherein the aerosol-forming article further comprises:
a tubular spacer element that defines an entirely hollow cavity between the aerosol-forming substrate and the downstream axial end of the aerosol- forming article ("A support element may be located immediately downstream of the aerosol-forming substrate and may abut the aerosol-forming substrate." [0070]. Support element 30 also acts as a spacer between the aerosol-generating article and a filter element. [0130], Fig 3),
comprising the tubular spacer element, wherein the tubular spacer element consists of a cardboard tube (The support element may be formed from cardboard. [0071]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the filter arrangement of Fiebelkorn with the support element taught by Mironov because Fiebelkorn and Mironov are both directed to smoking articles comprising multi-segmented filter arrangements, Mironov teaches the use of a tubular cardboard support element to act as a spacer between the substrate and filters ([0130]), and this merely involves applying a known smoking article component to a similar smoking article to yield predictable results.
Regarding Claim 243, Fiebelkorn discloses the smoking article may comprise more than three filter segments to further filter the produced smoke (Increasing the number of filter sections allows further control over the filter behavior. [0013]. The type and density of the filter material, and the number and structure of the filter sections can be adjusted to provide the desired overall filter characteristics. [0038]), but does not explicitly disclose a spacer element with an axial length of at least 10 mm.
However, Mironov teaches a similar smoking article wherein the aerosol-forming article further comprises:
a tubular spacer element that defines an entirely hollow cavity between the aerosol-forming substrate and the downstream axial end of the aerosol-forming article ("A support element may be located immediately downstream of the aerosol-forming substrate and may abut the aerosol-forming substrate." [0070]. Support element 30 also acts as a spacer between the aerosol-generating article and a filter element. [0130], Fig 3),
wherein the tubular spacer element has an axial length of at least 10mm ("The support element may have a length of between approximately 5 millimetres and approximately 15 mm" [0075]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the filter arrangement of Fiebelkorn with a support element comprising an axial length of at least 10mm as taught by Mironov because Fiebelkorn and Mironov are both directed to smoking articles comprising multi-segmented filter arrangements, Mironov teaches the use of a support element comprising an axial length of at least 10mm to act as a spacer between the substrate and further filters ([0075], [0130]), and this merely involves applying a known smoking article component to a similar smoking article to yield predictable results.
Conclusion
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
