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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/8/25 has been entered.
Status of the Claims
Claims 1, 2, 6-11 and 235-243 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 8/8/25.
Claims 1, 6-8, 237, and 239 are amended.
Claims 3-5 are cancelled
Response to Arguments
Applicant’s arguments (filed 8/8/25, pages 7-8), with respect to the rejection(s) of Claims 1 and 8 as amended under 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hu (CN 107772530 A).
Claim Objections
Claims 240 and 242 are objected to because of the following informalities:
In Claim 240, “the aerosol-cooling element” should read “an aerosol-cooling element.”
In Claim 242 “the tubular spacer element” should read “a tubular spacer element.”
Appropriate correction is required.
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, 6-7, 238, and 239 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu (CN 107772530 A, cited in IDS dated 4/28/21. See provided machine translation).
Regarding Claim 1, Hu discloses an aerosol-forming article ([0048]) comprising:
an aerosol-forming substrate (The filter tip is connected to a tobacco segment. [0011], [0066], Fig 2);
a terminal filter element at a downstream axial end of the article (second solid section 3. [0066] Fig 2); and
an upstream filter element provided upstream of the terminal filter element (first solid section 1. [0066] Fig 2);
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 (The second solid segment 3 is composed of three channels 3a which penetrate the length of the segment. [0066] Fig 2);
wherein the hollow bore is off-set from an axial center of the terminal filter element such that there is no bore at the axial center (The three channels are evenly distributed around the axis such that no bore overlaps the axial center. [0067], Figs 2 & 5k);
wherein the terminal filter element is formed of a smoke permeable material (The solid segment may be made from polymer materials, plant materials, or composite materials such as plant fibers and ceramics and such materials may be smoke permeable. [0038]-[0043]);
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (first solid segment 1 is composed of a channel 1a. [0066] Fig 2); 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 (Wherein the outer diameter of the second solid section 3 and first solid section 1 are the same, the ratio of the cross-section of channel 1a to the cross-section of one of the channels 3a is 3:2 and thus, the diameter of a round axial bore in the upstream filter is greater than a diameter of a round off-set hollow bore in the terminal filter element. [0013], [0055]-[0067], Fig 2).
Regarding Claim 2, Hu discloses an aerosol-forming article wherein the aerosol-forming article is a heat-not-burn (HNB) consumable ("the tobacco segment does not burn, but generates smoke by means of heat sources" [0048]).
Regarding Claim 6, Hu discloses an aerosol-forming article wherein the porosity of the upstream filter element is less than the porosity of the terminal filter element (Wherein the ratio of the cross-section of channel 1a to the cross-section of each channel 3a is 3:2 and second solid section 3 comprises three channel 3a and the channels have a round cross-section, the ratio of the cross-section of channel 1a to the cross-section of all channels 3a is 1:2; such that, if the sections are made from the same materials, the second solid section 3 as a whole comprises greater porosity. [0013],[0055]-[0067], Fig 2).
Regarding Claim 7, Hu discloses an aerosol-forming article wherein the upstream and terminal filter elements are spaced apart by a cooling element and/or a spacer element (Second solid section 3 and first solid section 1 are spaced apart by cellulose acetate filament section 2a. [0055]-[0067], Fig 2).
Regarding Claim 238, Hu discloses an aerosol-forming article wherein the hollow bore has a bore diameter of between 1 and 5mm. (Wherein the ratio of the cross-section of the channel 3a to the cross-section of the second solid segment 3 is 1:5 and the diameter of the second solid segment is 7.4 mm, the diameter of each round channel 3a is about 3.3 mm. [0013], [0066]-[0067]).
Regarding Claim 239, Hu discloses an aerosol-forming article wherein the axial bore of the upstream filter element has a bore diameter of between 1 and 5mm (Wherein the ratio of the cross-section of the channel 1a to the cross-section of the first solid segment 1 is 3:10 and the diameter of the first solid segment is 7.4 mm, the diameter of the round channel 1a is about 4.1 mm. [0013], [0066]).
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.
Regarding Claim 237, Hu discloses an aerosol-forming article wherein the filter elements may comprise of different materials ([0038]-[0043]). However, the relative density/porosity of the section fiber/medium is not discussed and Hu does not explicitly disclose wherein the porosity of the upstream filter element is greater than the porosity of the terminal filter element.
However, given that the porosity of the filter elements directly effects the flow rate of the smoke through the filters and is dependent on the particular section material selected, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of porosity of the various sections. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the section materials disclosed in Hu, would arrive at a porosity of the upstream filter element greater than the porosity of the terminal filter element as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Claims 8-11, 235-236, and 240-243 are rejected under 35 U.S.C. 103 as being unpatentable over Hu in view of Mironov (US 20160150825 A1)
Regarding Claim 8, Hu discloses an aerosol-forming system ([0048]) comprising:
an aerosol-forming substrate (The filter tip is connected to a tobacco segment. [0011], [0066], Fig 2);
a terminal filter element having an upstream axial end and downstream axial end (second solid section 3. [0066] Fig 2), and
a hollow bore extending from the upstream axial end of the terminal filter element to the downstream axial end of the terminal filter element (The second solid segment 3 is composed of three channels 3a which penetrate the segment. [0066] Fig 2);
wherein the hollow bore is off-set from an axial center of the terminal filter element such that there is no bore at the axial center (The three channels are evenly distributed around the axis such that no bore overlaps the axial center. [0067], Figs 2 & 5k);
wherein the terminal filter element is formed of a smoke permeable material (The solid segment may be made from polymer materials, plant materials, or composite materials such as plant fibers and ceramics and such materials may be smoke permeable. [0038]-[0043]); and
an upstream filter element provided upstream of the terminal filter element (first solid section 1. [0066] Fig 2);
wherein the upstream filter element is a hollow bore filter element comprising an axial bore (first solid segment 1 is composed of a channel 1a. [0066] Fig 2); 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 (Wherein the diameter of the second solid section 3 and first solid section 1 are the same and the channels are round, the ratio of the cross-section of channel 1a to the cross-section of channel 3a is 3:2. [0013], [0055]-[0067], Fig 2).
Hu further discloses that the substrate generates smoke by means of a heat source ([0048]) and that the article further comprises a cellulose acetate filter ([0061]), but does not explicitly disclose a device comprising a heating element and/or wherein the aerosol-forming article comprises an aerosol-cooling element formed of a crimped/gathered sheet of material configured to cool aerosol generated from the aerosol-forming substrate or 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.
However, Mironov teaches a similar smoking article and accompanying device 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) and the device comprising a heating element ("a system comprising such an aerosol-generating article and an aerosol-generating device having an inductor for heating the aerosol-generating device." [0001], Figure 5)
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 system of Hu with a device comprising a heating element and a filter formed of a crimped sheet of material as taught by Mironov because Hu and Mironov are both directed to heated smoking articles, Hu is silent on the specific structure of the device heating the article, a person having ordinary skill in the art would be motivated to search for known heated devices for smoking articles, Mironov teaches the use of an electrically heated device for use with a similar smoking article, Mironov further teaches the use of a crimped cellulose acetate sheet as the central cooling element between to end filter components, and this merely involves applying known smoking device components to a similar smoking system 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. As shown in FIG. 4, the inductor 210 is located adjacent a distal portion 231 of a substrate receiving chamber 230 of the aerosol-generating device 200. [0134]) 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], Figure 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 ("In use, the user inserts an aerosol-generating article 10 into the substrate receiving chamber 230 of the aerosol-generating device 200 such that the aerosol-forming substrate 20 of the aerosol-generating article 10 is located adjacent to the inductor 210." [0134], Figures 4 & 5); and
heating the article using the heating element ("The heated susceptor heats the aerosol-forming substrate 20 of the aerosol-generating article 10 to a sufficient temperature to form an aerosol." [0136], Figure 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 ("the user inserts an aerosol-generating article 10 into the substrate receiving chamber 230 of the aerosol-generating device 200 such that the aerosol-forming substrate 20 of the aerosol-generating article 10 is located adjacent to the inductor 210." [0134], Figure 5) and
penetrating the article with the heating element upon insertion of the article (susceptor 4 penetrates the aerosol-generating article and is heated but the surrounding inductor 210 to generate heat. [0136], Figure 5).
Regarding Claims 235 and 236, Hu discloses a smoking article and a device comprising an aerosol-forming substrate ([0066]), but does not explicitly disclose wherein the aerosol-forming substrate comprises a humectant or wherein the humectant content of the aerosol-forming substrate is at least 1 wt% up to 50 wt%.
Mironov teaches a device for a similar smoking article wherein the aerosol-forming substrate 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 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 Hu with an a humectant as taught by Mironov because Hu and Mironov are both directed to electrically heated smoking articles, Hu is silent on the addition of aerosol-formers 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 device component to a similar smoking device to yield predictable results.
Regarding Claim 240, Hu discloses a smoking article comprising a cellulose acetate filter between upstream and downstream hollow bore filters ([0055]-[0067]). Hu does not explicitly disclose wherein the cellulose acetate filter comprises an aerosol-cooling element.
However, Mironov teaches a device for a similar smoking article wherein the aerosol-forming article further comprises:
an aerosol-cooling element which may be formed of a crimped/gathered sheet of material configured to cool aerosol (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) and/or a tubular spacer element that defines an entirely hollow cavity ("A support element may be located immediately downstream of the aerosol-forming substrate and may abut the aerosol-forming substrate." [0070]. "The support element 30 also acts as a spacer to space the aerosol-cooling element 40 of the aerosol-generating article 10 from the aerosol-forming substrate 20.” [0130], Fig 3),
wherein the aerosol-cooling element is formed of a plastics material ("the support element may be formed from one or more materials selected from the group consisting of: cellulose acetate; cardboard; crimped paper, such as crimped heat resistant paper or crimped parchment paper; and polymeric materials, such as low density polyethylene (LDPE)" [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 configuration of Hu with the aerosol-cooling element taught by Mironov because Hu and Mironov are both directed to heated smoking articles, Mironov teaches the use of a cellulose acetate cooling element to cool the aerosol, and this merely involves applying a known smoking device component to a similar smoking device to yield predictable results.
Regarding Claim 241, Mironov discloses a smoking article wherein the plastics material is selected from the group consisting of: polylactic acid (PLA), polyvinyl chloride (PVC), polyethylene (PE), and polyethylene terephthalate (PET). ("the support element may be formed from… low density polyethylene (LDPE)" [0071]).
Regarding Claim 242, Hu discloses a smoking article comprising a cellulose acetate filter between an upstream and downstream hollow bore filter ([0055]-[0067]). Hu does not explicitly disclose wherein the cellulose acetate filter comprises a spacer element.
However, Mironov teaches a device for 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]. "The support element 30 also acts as a spacer to space the aerosol-cooling element 40 of the aerosol-generating article 10 from the aerosol-forming substrate 20.” [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 one or more materials selected from the group consisting of… cardboard (LDPE) [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 configuration of Hu with a support element taught by Mironov because Hu and Mironov are both directed to electrically heated smoking articles, Mironov teaches the use of a support element to act as a spacer between the substrate and further filters ([0130]), and this merely involves applying a known smoking device component to a similar smoking device to yield predictable results.
Regarding Claim 243, Mironov discloses a smoking article comprising the tubular spacer element, 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)).
Conclusion
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755