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, and 4-11, 119-124, and 126-133 are pending and are subject to this Office Action. Claim 1 has been amended. Claims 12 and 13 are withdrawn from consideration.
Response to Arguments
Applicant’s arguments, see pages 6-11, filed 1/23/2026, with respect to the rejections
of claims 1, 2, and 4-11, 119-133 under 35 U.S.C. 103 have been fully considered and are not persuasive.
Claim 1 has been amended to incorporate the limitations: each of the upstream filter element, terminal filter element, and intermediate filter element is a hollow bore filter element, and wherein the intermediate filter element comprises a hollow bore filter element comprising cellulose acetate or polypropylene tow
Applicant argues, page 7-8, that Malgat teaches the upstream hollow filter elements but fails to teach the terminal hollow filter element. Applicant further argues that the prior art of Zuber and Mironov, used to modify the teachings of Malgat, also fail to teach the hollow terminal filter element.
The Examiner acknowledges that the prior art of Malgat, Zuber, Mironov, and England all fail to teach or suggest the use of a hollow terminal filter element. The claim previously only required one of the upstream or terminal filter elements be a hollow filter element.
Applicant argues, page 8, that Fiebelkorn fails to make up for the deficiencies of Malgat, Zuber, or Mironov. The applicant argues that Fiebelkorn requires a middle (intermediate) section that does not contain a central tube as Fiebelkorn relies on a progressive blocking system for filtering the smoke.
Fiebelkorn is used to modify the teachings of Malgat, Zuber, and Mironov to include a hollow terminal filter element in a filter element that comprises a hollow upstream element and hollow intermediate filter element that is made of cellulose acetate. Fiebelkorn teaches the hollow terminal filter element can be used to aid in the reduction of the resistance to draw. [0004]
Applicant argues, page 8-9, that there would be no rational to add a hollow-bore intermediate filter element to the filter design of Fiebelkorn as the prior art teaches away from such design.
The Examiner acknowledges that the prior art teaches the use of a solid intermediate filter element. However, the prior art of Malgat, Zuber, and Mironov was not used to modify the teachings of Fiebelkorn. Fiebelkorn was used to modify the teachings of Malgat, Zuber, and Mironov by using a hollow terminal filter element that would allow for the reduction of the resistance to draw through the modified article.
The following is a modified rejection based on amendments made to the claims.
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, 4-6, 9-11, 119-124, and 126-133 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat, et al (US20160309781A1) and further in view of Zuber, et al (US20140305448A1) and Mironov, et al (US20150296882A1) or England (US20170042221A1), and Fiebelkorn (US 20110048436 A1).
Regarding claim 1, Malgat teaches a rod for generating an aerosol where the rod is comprised of an aerosol generating material. [0002] Malgat teaches that the rod made up of four parts: an aerosol forming substrate, a hollow cellulose acetate tube (upstream filter), a spacer element (intermediate filter), and a mouthpiece filter (terminal filter). [0073] The prior art discloses that the bore of the intermediate filter element is larger than the bore of the upstream filter element. (Figure 2)
Malgat teaches possible overall lengths for the aerosol generating rod but is silent with respect to the lengths of the individual components.
Zuber, directed to the design of aerosol generating articles for use in heat not burn devices, teaches a filter portion of an aerosol generating rod that is comprised of a support element (upstream filter element), a cooling section (intermediate filter element), and a mouth end filter element (terminal filter element). [CITE] Zuber teaches that the support element can have a length between approximately 5 millimeters and 15 millimeters. [0094] Zuber goes on to teach that the mouthpiece element can have a length of between approximately 5 millimeters and 20 millimeters. The teaches of Zuber disclose that there are known configurations of the filter element where the upstream filter element is shorter in length that the terminal filter element.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Malgat by using a length for the upstream that is relatively shorter in length than the terminal filter element as taught by Zuber because both Malgat and Zuber are directed to the design of aerosol generating articles, Zuber teaches the allows the user to insert the aerosol generating rod into the device without damaging the article or the heater while also preventing the aerosol generating material from shifting [0095, 0190], and this involves use of known technique to improve similar products in the same way.
Malgat discloses that the transfer section (intermediate filter element) comprises a thin walled tube but fails to disclose the material of the transfer section being cellulose acetate or polypropylene tow.
Mironov, directed to the design of smoking articles, teaches a smoking article with a transfer section (intermediate filter element) that can be part of the mouthpiece filter segment and that is comprised of a hollow cellulose acetate tube. ([0021]; [0076])
Alternatively, England, directed to the design of cooling elements for smokable material, teaches that the filter of a smoking article can contain tubes that extend through the cooling element to provide a through hole [0013] where the tube that forms the through hole is formed out of polypropylene [0017].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Malgat and Zuber by using cellulose acetate for the intermediate filter section as taught by Mironov or using polypropylene for the intermediate filter section as taught by England because Malgat, Zuber, Mironov, and England are directed to the design of aerosol generating articles, Mironov teaches the use of cellulose acetate helps transfer the aerosols from the aerosol generating substrate to the terminal filter [0021] and England also teaches the tubes are used to pass aerosol between the first and second ends of the filer rod [0013], and this involves use of known technique to improve similar products in the same way.
Malgat, Zuber, Mironov all fail to teach that the terminal filter element would be a hollow filter element.
Fiebelkorn directed to the design of filters for smoking, teaches “a smoking article that has a first, second and third filter section that are along the axis of the article. The third filter section has at least one tube (Abstract) that provides a low resistance path for the smoke to pass through. [0026]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Zuber and Mironov by substituting the solid terminal filter with a hollow terminal filter element as taught by Fiebelkorn because Zuber, Mironov, and Fiebelkorn are directed to the design of filters for smoking, Fiebelkorn teaches the addition of the hollow bore in the terminal filter allows for a reduction in the resistance to draw [0026] and this involves using a known technique to improve a similar device.
Regarding claim 2, Malgat teaches that the aerosol generating rod is heated to create the aerosol rather than burned. [0002-0003]
Regarding claims 4 and 5, Malgat teaches that the aerosol generating article has an outer diameter of about 7.2 millimeters and an inner diameter of about 6.9 millimeters. [0074] The prior art teaching of an inner diameter would lead a person having ordinary skill to conclude that the inner diameter would be the diameter of the intermediate filter element (spacer element). As such the range, as taught by Malgat, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 6, Malgat discloses that the upstream filter element (support element) has a smaller bore than the intermediate filter element (spacer element). (Figure 2)
Regarding claim 9, Malgat discloses that the terminal filter element (mouthpiece filter) is a solid filter element. (Figure 2)
Regarding claims 10 and 11, Malgat teaches that the heating device for use with the aerosol generating rod comprises a heating element (heating blade) [0079] located in the main body (housing) of the aerosol generating device. [0081]
Regarding claim 119, the prior art teaches the upstream filter element and intermediate filter element are distinct and non-integral elements. Malgat teaches that the aerosol generating rod is comprised of four distinct elements arranged sequentially. [0073]
Regarding claim 120, Malgat teaches that the upstream filter element is a hollow cellulose acetate tube [0073] but is silent as to the upstream filter element is formed of the same material as the intermediate filter element.
As discussed in claim 1, Mironov discloses that the intermediate filter section could be made of cellulose acetate to facilitate the transfer of aerosol from the aerosol generating substrate to the terminal filter section.
Regarding claims 121-124, Malgat discloses a filter design where the transfer section is in abutment with the terminal filter section, interposed and between the terminal filter element and the upstream filter element. Malgat teaches that the filter elements are coaxially aligned and joined using cigarette paper. [0073]
Regarding claims 126-129, as discussed in claim 1, a modified Malgat discloses a spacer element, a single hollow element. (Figure 2)
Regarding claim 130 and 131, Malgat teaches that the aerosol generating rods have layers of homogenized tobacco material and that the aerosol generating material may have an aerosol former content of between about 5% and about 30%. [0052] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 132 and 133, Malgat teaches the aerosol former may be propylene glycol or glycerin. ([0004], [0052])
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat, et al (US20160309781A1), Zuber, et al (US20140305448A1) and Mironov, et al (US20150296882A1) as applied to claim 1 above, and further in view of Fu (CN108113051A, hereinafter referring to the English machine translation provided)
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat, et al (US20160309781A1), Zuber, et al (US20140305448A1) and Mironov, et al (US20150296882A1) as applied to claim 1 above, and further in view of Fiebelkorn (US 20110048436 A1).
Regarding claim 7, Neither Zuber nor Mironov teach wherein the terminal filter element is a hollow bore filter element having a smaller bore diameter than the intermediate filter element.
Fiebelkorn directed to the design of filters for smoking teaches “In one embodiment, the tube(s) of the first section and/or the third section have a diameter in the range 0.1-3 mm, or more particularly in the range 0.5-1.5 mm” (p 1 [0010]) As discussed in claim 7, Fu teaches the cooling section (intermediate element) has a diameter of 5 to 8 mm.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Zuber and Mironov by substituting the solid terminal filter with a hollow terminal filter element as taught by Fiebelkorn because Zuber, Mironov, and Fiebelkorn are directed to the design of filters for smoking, Fiebelkorn teaches the addition of the hollow bore in the terminal filter allows for a reduction in the resistance to draw to be reduced when someone begins to consume the heat not burn article (Fiebelkorn p 1 [0004]) and this involves using a known technique to improve a similar device. It would also be obvious that the terminal hollow filter element would have a smaller bore diameter then the intermediate cooling section as shown by Fiebelkorn.
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 VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755