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, 7-11 and 235-243 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 5/12/26.
Claims 1, 8, 240, and 242 are amended.
Claim 6 is cancelled
Response to Arguments
Applicant's arguments (filed 5/12/26, pages 6-10) have been fully considered but are not persuasive. Applicant argues: (1) that Hu does not disclose the claimed smoke permeable material, (2) Hu is silent on any porosity relationship between the solid segments, (3) in the rejection to Claim 6, the Examiner referenced relative bore sizes in reference to the porosity of the filters, (4) Minorov does not remedy the deficiencies of Hu where Hu teaches the explicit use of non-porous materials, and (5) the claimed porosity is not merely a design choice or routine optimization, it serves a specific technical purpose. The Examiner respectfully disagrees.
Regarding argument (1), Hu explicitly discloses several materials of which one of ordinary skill in the art would conclude are smoke permeable materials. While Hu does refer to the bore comprising segments as “solid segments” and does state that the segments may be made from a metal, Hu further teaches that the segments may also be made from plant material ([0038]). Specifically, Hu teaches the segments may be made from plant materials such as wood or bamboo and provides a list of a variety of said woods ([0040]). Plant materials, such as wood or bamboo, are porous and thus it cannot be reasonably concluded that Hu explicitly teaches that the segments must be non-porous. Moreover, Hu also teaches that the segments may be made from ceramics ([0041]), which also comprise both porous and non-porous varieties.
Regarding argument (2), while Hu is silent on the specific porosity of the solid segments, Hu teaches that the solid segments may be made from different materials ([0038]-[0043]) and teaches several specific plant materials ([0040]) which have unequal porosities. Therefore, without specifically teaching the porosity of each segment, utilizing the different plant materials disclosed in Hu for the segment materials would yield upstream and downstream segments with unequal porosities.
Regarding argument (3), Applicant’s argument is moot because the new ground of rejection of Claim 1 necessitated by Applicant’s amendments does not rely on the rejection specifically challenged in the argument.
Regarding argument (4), Applicant’s argument is specifically dependent on the conclusion that Hu teaches the explicit use of non-porous materials in the solid segments. As discussed above, Hu does not explicitly teach the use of non-porous materials and instead teaches multiple materials which are porous. Therefore, Applicant’s argument regarding the predictability of deriving the elements of Claim 1 from Hu in view of Minorov is unpersuasive.
Regarding argument (5), while the Applicant may have determined the claimed porosity relationship in order to serve a specific technical purpose, the standard for determining obviousness is whether a person of ordinary skill would have a reasonable expectation of success through routine experimentation of arriving at the claimed porosity relationship. See MPEP 2144.05(II). Here, where Hu teaches the use of multiple types of porous plant materials and/or ceramics as the segment material, a person of ordinary skill in the art, through routine experimentation of various combinations of the porous materials disclosed in Hu, would likely arrive at a combination of the porous materials such that the porosity of the smoke permeable material of the upstream filter element is greater than the porosity of the smoke permeable material of the downstream filter element, similarly as claimed
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 237 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation of Claim 237 was incorporated by amendment into Claim 1 and Claim 237 depends from Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1, 2, 7, 237, 238, and 239 are rejected under 35 U.S.C. 103 as being unpatentable over of Hu (CN 107772530 A, cited in IDS dated 4/28/21. See previously 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).
Hu discloses an aerosol-forming article wherein the filter elements may comprise of different materials ([0038]-[0043]) and that those materials may comprise plant or ceramic materials ([0040]-[0041]) which may be porous. However, the relative density/porosity of the section material is not discussed and Hu does not explicitly disclose wherein the porosity of the smoke permeable material of the upstream filter element is greater than the porosity of the smoke permeable material of the downstream filter element.
However, given that the relative 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 relative 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 combination of the porous materials such that the porosity of the material of the upstream filter element is greater than the porosity of the material of the downstream filter element as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
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 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 237, as discussed above (see rejection of Claim 237 under 35 U.S.C. 112(d)), the limitations of Claim 237 were incorporated into independent Claim 1. Therefore, all elements of Claim 237 are obvious in view of Hu (See Claim 1).
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]).
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);
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 discloses an aerosol-forming article wherein the filter elements may comprise of different materials ([0038]-[0043]) and that those materials may comprise plant or ceramic materials ([0040]-[0041]) which may be porous. However, the relative density/porosity of the section material is not discussed and Hu does not explicitly disclose wherein the porosity of the smoke permeable material of the upstream filter element is greater than the porosity of the smoke permeable material of the downstream filter element.
However, given that the relative 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 relative 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 combination of the porous materials such that the porosity of the material of the upstream filter element is greater than the porosity of the material of the downstream filter element as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
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
THIS ACTION IS MADE FINAL. 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 Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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