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 .
Priority
In the Non-Final Office Action of 09/25/2024, acknowledgement was made regarding a claim to foreign priority, as well as acknowledgement that certified copies of all priority documents had been received. However, the application was reviewed again as part of the Final Rejection of 01/13/2025, and it was determined that the file does not appear to contain all the required certified priority documents.
Thus, acknowledgment is made of applicant's claim for foreign priority based on an application filed in GB on 10/29/2018.
It is noted, however, that applicant has not filed a certified copy of the GB 1817558.8 application as required by 37 CFR 1.55.
Response to Amendment
The Response of 10/13/2025 is entered, claim 1 is amended, claims 11-15 remain withdrawn, claims 2-10 and 17-21 are previously presented, and claim 16 is cancelled.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive. Any changes to the rejection below were necessitated by the amendments to the claims.
Applicant has amended claim 1 to require that the filter membrane is adjacent to the cylindrical smoking body. Applicant argues that because a depicted embodiment comprises an upstream filter segment and cavity, the disclosure of Blanc requires such an element, and thus the limitation requiring the filter membrane to be adjacent to the cylindrical smoking body is not met. This is not persuasive.
Patent publications are not limited to what applicants describe as their own inventions or to the problems with which they are concerned, they are part of the literature of the art, relevant for all they contain, MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, MPEP 2123 II. Nonpreferred and Alternative Embodiments Constitute Prior Art. Thus, if Blanc reasonably discloses the filter membrane adjacent to the cylindrical smoking body, the combination of Blanc and Wang still render the claimed invention obvious.
Fig 1 discloses an upstream filter segment between the smoking body and the transverse barrier, and Applicants further assert that there is an upstream cavity/space between the transverse barrier and the tobacco rod. See Remarks, pg 8 annotated Fig 1. Examiner agrees that if either of these features were required by Blanc, and not merely preferred embodiments, Applicant arguments would be persuasive. Blanc makes clear these features are not required, and thus the disclosure still renders obvious the added claim limitations.
Blanc discloses that the mouth end cavity may be fully defined by the first downstream tubular portion where the first downstream tubular portion extends from the transvers barrier to the mouth end of the filter, ([pg 6 lines 11-13]). While it is true that Blanc discloses an alternative where the mouth end cavity may include an upstream portion, this is not required by the broad disclosure, which places the transvers barrier at the upstream portion of this element, towards the tobacco rod.
Blanc also discloses the upstream filter segment is not required, ([pg 11 lines 8-9]). Blanc recites is: “Filters according to the invention may further comprise one or more additional filter segments upstream of the flow restriction element.” This language is permissive, not required. Because these features are not required by the disclosure, Applicant arguments are not persuasive.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Blanc et al. (WO 2013/034512 A1) in view of Wang (US 2019/0343170 A1).
Regarding claim 1, Blanc discloses:
An elongated smoking article, ([pg 1 line 3-5]), comprising:
a cylindrical smoking body, with a combustible material, ([pg 2 lines 19-25], [pg 14 lines 1-2] Fig. 1 ref 12);
a hollow element downstream to the cylindrical smoking body and comprising a first base area facing the cylindrical smoking body, a second base area opposite the first base area, and a hollow bore extending longitudinally from the first base area to the second base area, the hollow bore defining a flow path within the elongated smoking article, the hollow bore having a substantially cylindrical shape, ([pg 1 lines 28-31] the tubular portion) having a bore diameter between 2mm and 4mm, ([pg 8 lines 24-25] providing an external diameter of the flow restriction element between 6 – 9 mm, [pg 8 lines 15-16] providing a thickness of the material forming the flow restriction element is between 0.2 – 2.0 mm] providing a calculated bore of the tubular element of between 2 – 8.6 mm, rendering the claimed range obvious);
a filter membrane, adjacent to the cylindrical smoking body, ([pg 6 lines 11-13], [pg 11 lines 8-9] together reasonably disclosing an embodiment where the transverse barrier is adjacent to the cylindrical smoking body), and arranged between the cylindrical smoking body and the hollow element, the filter membrane comprising at least one filter aperture, ([pg 1 lines 28-31]) the transverse barrier including one or more orifices meeting the limitation of a membrane), aligned with the hollow bore, ([pg 6 lines 1-3]), and permeable for vapor emitted by the cylindrical smoking body when the cylindrical smoking body is heated, ([pg 5 lines 21-22]), the at least one filter aperture having an effective size between 0.5 µm and 1.5 mm, ([pg 5 lines 22-25] indicating that the number of orificies provided in the transverse barrier and the dimensions of each orifice may be selected to achieve a desired RTD, [pg 5 lines 27-29] disclosing a preferred size of orifice between 0.2 – 1.2 mm anticipating the claimed range), wherein the vapor passes through the flow path of the hollow bore.
Blanc does not disclose a humectant being present in the combustible material of the cylindrical smoking body in an amount of at least 10 wt %
Wang teaches a dual use cigarette, ([0002]), that may be used as a heat not burn cigarette or with conventional combustion, ([005]). It has a tobacco filler that comprises 5-50% propylene glycol and vegetable glycerine, with a preferred amount comprising 10%, ([0019] propylene glycol and vegetable glycerine are known humectants). Wang teaches adding the humectants in such amounts makes the smoke softer and the taste more comfortable, (00015]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have improved upon the smoking article of Blanc and modified the combustible material according to the teachings of Wang, by including a humectant in the combustible material of Blanc in an amount of at least 10 wt%, to have improved the smoking experience as taught by Wang.
Regarding claim 2, modified Blanc discloses the elongated smoking article of claim 1. Blanc further discloses a similarly structured filter membrane that is also similarly situated to the claimed filter membrane. Although Blanc does not expressly disclose that the filter membrane is configured to distribute heat emitted by the heated smoking body, the distribution of heat is considered to be a function of the filter membrane of modified Blanc. MPEP 2114 I. Inherency and Functional Limitations in Apparatus Claims.
Regarding claim 3, modified Blanc discloses the elongated smoking article of claim 1. Blanc further discloses the filter membrane is configured to mix vapor components, ([pg 1-2 lines 36-1]).
Regarding claim 4, modified Blanc discloses the elongated smoking article of claim 1. Blanc discloses that the filter membrane may have a plurality of aperatures, and that the size is not particularly limited, ([pg 5 lines 22-25] indicating that the number of orificies provided in the transverse barrier and the dimensions of each orifice may be selected to achieve a desired RTD). Although Blanc discloses a preferred embodiment where the flow restriction element is formed of a material with a lower particulate efficiency than conventional cellulose acetate filter materials, the filtration of particles emitted by the heated smoking body this is considered to be an inherent function of the filter membrane Blanc. MPEP 2114 I. Inherency and Functional Limitations in Apparatus Claims. Because the claimed property is met by Blanc, the limitation is considered to be met.
Regarding claim 5: modified Blanc discloses the elongated smoking article of claim 1. As noted in the rejections of claims 3 and 4 above, modified Blanc is considered to meet both the filtering limitation and the mixing limitation as claimed.
Regarding claim 6: modified Blanc discloses the elongated smoking article of claim 1. Blanc further discloses a disk-shaped membrane, ([pg 6 lines 1-3]).
Regarding claim 7: modified Blanc discloses the elongated smoking article of claim 1. Blanc further discloses the flow restriction element may be made of any suitable material or combination of materials, ([pg 7, lines 27-28] including cellulosic material, [pg 7 line 36] which is considered to include paper, a common cellulosic material).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Blanc and selected a cellulosic material which reasonably suggests a paper material for the formation of the flow restriction element because Blanc discloses any suitable material may be used, specifically discloses cellulosic materials are acceptable, and one of ordinary skill in the art would know that paper is a cellulosic material.
Regarding claim 8, modified Blanc discloses the elongated smoking article of claim 1. Blanc further the filter membrane comprises at least one first portion extending along a lateral surface of the hollow element and bent from a second portion extending over the first base area and comprising the at least one filter aperture, ([pg 6 lines 10-16] disclosing an embodiment with the transverse barrier as part of a downstream tubular element and an alternate embodiment with an upstream tubular element and a downstream element, with the transverse barrier between the two tubular elements, Fig 2 depicting the alternate embodiment, but showing a first portion extending laterally along the tubular element and a bend in the second portion where the material transitions from the perpendicular portion of the structure to the lateral portion of the structure.
Regarding claim 9, modified Blanc discloses the elongated smoking article of claim 8. Claim 9 requires several possible limitations in the alternative. Modified Blanc discloses the flow restrictor element may be formed of paper, see the rejection of claim 7 above. Blanc discloses that the flow restriction element may be affixed to the plug wrap with a suitable adhesive, ([pg 12 lines 2-4]). Either of these is considered sufficient to meet the limitations as claimed.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blanc et al. (WO 2013/034512 A1) in view of Wang (US 2019/0343170 A1) as applied to claim 8 above, and further in view of Li et al. (US 2008/021653 A1) and Oglesby et al. (US 2010/0024834 A1).
Regarding claim 10, modified Blanc discloses the elongated smoking article of claim 1. Blanc discloses that the filter membrane may have a plurality of aperatures, and that the size is not particularly limited, ([pg 5 lines 22-25] indicating that the number of orificies provided in the transverse barrier and the dimensions of each orifice may be selected to achieve a desired RTD). Blanc further discloses the flow restriction element may be made of any suitable material or combination of materials, ([pg 7, lines 27-28]). Blanc does not disclose that the transverse barrier is formed of metal mesh.
Li teaches a similar flow restriction element, ([0015]). Li teaches that the flow restrictor may be constricuted of paper, plastic or metal, ([0026]). Li also teaches that the number, size, and placement or locations of the orifices in the partition can vary, such that a desired pressure drop within the filter can be established, ([0028]).
Oglesby teaches a smoking article for use in a vaporizing device, ([0001]). Oglesby teaches providing the tobacco in a disposable sachet, ([0099]). Oglesby teaches a gauze mesh made of metal, ([0099] the downstream cap abutting the smokeable material, are made from a metal gauze material, which meets the limitation of a metal mesh).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have improved upon modified Blanc according to the teachings of Li and Oglesby by using the metal as the material of construction for the second portion. Li teaches that metal is an additional material that is acceptable for use as the transverse barrier, Oglesby teaches containing the smokeable material in a metal gauze that surrounds the smokeable material, including the end caps. One of ordinary skill in the art would appreciate that the metal mesh could be incorporated into the transverse barrier of modified Blanc, and form one end of the container for the smokeable material as taught by Oglesby and would have recognized that metal would have improved heat resistant characteristics compared to paper, and that paper in close proximity to the combustible material may lead to an off taste and user dissatisfaction in the smoking experience. One of ordinary skill in the art would have had the capability to form a metal mesh according to the requirements of modified Blanc, and been motivated to do so for the obvious advantages metal have over paper when in proximity to combustible material.
Allowable Subject Matter
Claim 17-21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The reasons for allowance of claim 17 are contained in the Office Action dated 9/25/2024.
Claims 18-21 are considered allowable by virtue of their dependency on an allowable base claim.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747