DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1, 3-6, 10-11, and 15-16 are pending. Claims 15-16 are new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 3/27/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Applicant argues that “nothing has been found in Fiebelkorn to disclose or suggest that a portion of a filter of a mouthpiece adjacent to a cooling segment may be encapsulated by a corrugated inner wrapper.” This argument is not persuasive as Fiebelkorn is not relied upon for disclosing a cooling element. Instead, as noted in the rejection of claim 1, Minzoni discloses a cooling segment and, in the obvious modification of Minzoni in view of Fiebelkorn, contains a portion of a filter of a mouthpiece adjacent to a cooling segment as claimed. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that “nothing has been found in Fiebelkorn to disclose or suggest that a first end of the corrugated inner wrapper . . . directly contacts a first section of filter material 3a.” This argument is not persuasive as Fiebelkorn is not relied upon for disclosing a first end of the corrugated inner wrapper directly contacts a first section of filter material 3a. Instead, as discussed in the rejection of claim 1, Fiebelkorn is relied upon for disclosing a corrugated inner wrapper around a portion of a filter and, in the obvious modification of Minzoni in view of Fiebelkorn, the corrugated inner wrapper would be placed around the portion of the filter which is directly adjacent to the cooling segment. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that “the Office [a]ction’s ‘design choice’ assertion appears to be unsupported by [the] evidence of record, and amounts to improper hindsight reasoning.” This argument is not persuasive because, as noted in the rejection of claim 1, the evidence of record states that the corrugated inner wrapper of Fiebelkorn need only be placed around a “portion” of the filter (¶ 0050 of Fiebelkorn), and there is a portion of the filter of Minzoni which is directly adjacent to the cooling segment. In the device of the combination, it is therefore an obvious matter of design choice to place the corrugated inner wrapper around said portion adjacent to the cooling segment, which results in the corrugated inner wrapper being directly adjacent to the cooling segment.
Applicant further argues that when the first end of the corrugated inner wrapper directly contacts the cooling segment, it “provides a benefit of improving aerosol transfer”, and “if the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obvious rejection.” This argument is not persuasive as Applicant has not even alleged that any particular feature is critical, let alone demonstrate a feature as critical.
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 1, 4-6, 10-11, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Minzoni (US 2018/0177235 A1) in view of Fiebelkorn (US 2011/0186063 A1) and Lemmouchi et al. (US 2017/0020186 A1).
Regarding claim 1, Minzoni teaches a cigarette (“aerosol-generating article 1”, Figs. 1 and 4c, ¶ 0065) comprising:
a tobacco rod (“aerosol-forming substrate 2”, Fig. 1, ¶ 0065, 0067);
a support segment (“support element in the form of a hollow cellulose acetate tube 3”, Fig. 1, ¶ 0065) located at a downstream end of the tobacco rod (Fig. 1, ¶ 0068);
a cooling segment (“aerosol-cooling element 4”, Fig. 1, ¶ 0065) located at a downstream end of the support segment (Fig. 1, ¶ 0068), wherein the cooling segment is a unitary cooling element (Fig. 1) formed by polylactic acid (“polylactic acid”, ¶ 0020); and
a mouthpiece (combination of “mouthpiece filter 5” and “cardboard tube 6” at “mouth-end 22”, Fig. 1, ¶ 0065, wrapped in “cigarette paper 7” and “tipping paper 8”, Fig. 4c, ¶ 0065) located at a downstream end of the cooling segment (Fig. 1, ¶ 0073),
wherein the mouthpiece comprises an inner wrapper (“cigarette paper 7”, Fig. 4c, ¶ 0065); and
an outer wrapper (“tipping paper 8”, Fig. 4c, ¶ 0065) wrapped around the inner wrapper (Fig. 4c).
However, Minzoni does not teach that the inner wrapper is corrugated or that a passage is formed between the corrugated inner wrapper and the outer wrapper, and the passage extends from a first end of the corrugated inner wrapper, in a length direction of the cigarette, to a second end of the corrugated inner wrapper, that is opposite to the first end, and that aerosol is able to pass through an entirety of the passage from the first end to the second end of the corrugated inner wrapper, and the first end of the corrugated inner wrapper directly contacts the cooling segment.
Fiebelkorn, in the same field of endeavor, teaches a corrugated inner wrapper (“band of corrugated paper 24”, Fig. 4, ¶ 0050) around a filter (“filter material 18”, Fig. 4, ¶ 0050) to support an outer wrapper (“tipping paper 21”, Fig. 4, ¶ 0050). Fiebelkorn also teaches a passage (“longitudinal channels 25”, Fig. 4, ¶ 0025) formed between the corrugated inner wrapper and outer wrapper. Fiebelkorn teaches that the passage extends from a first end (upstream end) of the corrugated inner wrapper, in a length direction of the cigarette, to a second end (downstream end) of the corrugated inner wrapper, that is opposite to the first end, and that aerosol is able to pass through an entirety of the passage from the first end to the second end of the corrugated inner wrapper (see the arrows indicating the flow of aerosol along second passageway II in Fig. 1a through “longitudinal channels 11” of Fig. 1, corresponding to “longitudinal channels 25” of Fig. 4). Fiebelkorn also teaches a benefit of a corrugated inner wrappers in that it provides a means of supporting the outer wrapper (¶ 0050). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the inner wrapper taught by Minzoni to make it corrugated between the filter of the mouthpiece and the outer wrapper, as taught by Fiebelkorn, in order to achieve this benefit.
Regarding the limitation “the first end of the corrugated inner wrapper directly contacts the cooling segment”, Fiebelkorn teaches that the corrugated inner wrapper encapsulates a portion of the length of the filter material (¶ 0050), so choosing to encapsulate the portion of the filter of the mouthpiece of Minzoni that is in direct contact with the cooling segment is simply an obvious matter of design choice (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); MPEP § 2144.04(VI)(C)). Therefore, in the cigarette of the combination, the first end (upstream end) of the corrugated inner wrapper will directly contact the cooling segment of Minzoni (“mouthpiece filter 5” directly contacts “aerosol-cooling element 4”, Fig. 1, ¶ 0065, so a corrugated inner wrapper surrounding “mouthpiece filter 5” to support “tipping paper 8” at the portion of “mouthpiece filter 5” that directly contacts “aerosol-cooling element 4” will also directly contact “aerosol-cooling element 4”, see Figs. 1 and 4c).
Minzoni does not explicitly disclose that the cooling element is formed by woven fibers of degradable polymer. Instead Minzoni teaches that the cooling element is formed by sheets of polylactic acid (¶ 0020) that function to provide high porosity (¶ 0020). However, Lemmouchi, in the same field of endeavor, teaches that polylactic acid (“polylactide (PLA)”, ¶ 0057) is a degradable polymer (“biodegradable material”, ¶ 0057) that can be incorporated into cigarette sections (¶ 0069) as fibers (¶ 0051-0053) in woven form (“woven form”, ¶ 0059). Lemmouchi further teaches that these fibers function to provide large pores (¶ 0052). One of ordinary skill in the art would have understood that the sheets of polylactic acid taught by Minzoni and the woven fibers of degradable polymer comprising polylactic acid taught by Lemmouchi both provide the same function of providing a porous segment made of polylactic acid. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the woven fibers of degradable polymer comprising polylactic acid taught by Lemmouchi in place of the sheets of polylactic acid taught by Minzoni (see MPEP § 2143(I)(B)).
Regarding claim 4, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 1, as stated above. With regards to forming the corrugations of the corrugated inner wrapper by a stamping roller, this limitation refers to the specific process used to make the product. Therefore, as Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the product resulting from these process steps, the claim is unpatentable. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); MPEP § 2113(I)).
Regarding claim 5, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 1, as stated above. However, Minzoni does not teach that air is able to flow into the cooling segment from the outside through perforations formed in at least a portion of the cooling segment. Fiebelkorn teaches perforations (“perforations”, ¶ 0052-0053, 0055) that allow outside air to flow into a cooling segment of a cigarette (¶ 0004). Fiebelkorn also teaches benefits of perforations in that by introducing cooler ambient air into the cigarette which then reduces the temperature of the smoke entering the mouth and throat, perforations result in a more pleasant and agreeable smoking effect (¶ 0004). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the cooling segment taught by Minzoni to include perforations, as taught by Fiebelkorn, in order to achieve these benefits.
Regarding claim 6, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 5, as stated above. Minzoni also teaches that the outer wrapper wraps the cooling segment (“tipping paper 8” wraps “aerosol-cooling element 4”, Fig. 4c, ¶ 0081). However, Minzoni does not teach that the perforations are formed through the outer wrapper and the cooling segment such that air is able to flow into the cooling segment from the outside through the perforations. Fiebelkorn teaches perforated outer wrappers (“perforations in the tipping paper”, ¶ 0053) for cigarettes. Fiebelkorn also teaches benefits of perforations in that by introducing cooler ambient air into the cigarette which then reduces the temperature of the smoke entering the mouth and throat, perforations result in a more pleasant and agreeable smoking effect (¶ 0004). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the outer wrapper and cooling segment taught by Minzoni to include perforations, as taught by Fiebelkorn, in order to achieve these benefits.
Regarding claim 10, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 1, as stated above. Fiebelkorn teaches that the first end and the second end of the corrugated inner wrapper are within the mouthpiece (“band of corrugated paper 24” is shown with both ends surrounding “filter material 18”, Fig. 4, which corresponds to “mouthpiece filter 5” of Minzoni).
Regarding claim 11, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 10, as stated above. However, Minzoni does not teach that air is able to flow into the cooling segment from the outside through perforations formed in at least a portion of the cooling segment. Fiebelkorn teaches perforations (“perforations”, ¶ 0052-0053, 0055) that allow outside air to flow into a cooling segment of a cigarette (¶ 0004). Fiebelkorn also teaches benefits of perforations in that by introducing cooler ambient air into the cigarette which then reduces the temperature of the smoke entering the mouth and throat, perforations result in a more pleasant and agreeable smoking effect (¶ 0004). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the cooling segment taught by Minzoni to include perforations, as taught by Fiebelkorn, in order to achieve these benefits.
Regarding claim 15, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 1, as stated above. Minzoni also teaches that the mouthpiece further comprises cellulose acetate (“A filter segment may be a cellulose acetate filter plug made of cellulose acetate tow”, ¶ 0014). As such, in the device of the combination, the corrugated inner wrapper surrounds a circumference of the cellulose acetate (compare to Fig. 4 of Fiebelkorn in which the corrugated inner wrapper 24 surrounds a circumference of the filter 18 of Fiebelkorn).
Regarding claim 16, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 15, as stated above. In the device of the combination, as the corrugated inner wrapper is adjacent to the cooling segment and surrounding the cellulose acetate filter and the passage is within the corrugated inner wrapper, the passage is configured to receive a portion of the aerosol from the cooling segment such that the portion of the aerosol passes through the entirety of the passage and bypasses the cellulose acetate (compare to Fig. 4 of Fiebelkorn which shows the passage 25 external to the filter 18 such that an aerosol passing through the passage bypasses the filter).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Minzoni (US 2018/0177235 A1) in view of Fiebelkorn (US 2011/0186063 A1) and Lemmouchi et al. (US 2017/0020186 A1) as applied to claim 1 above, and further in view of Sakai et al. (US 4,583,560).
Regarding claim 3, Minzoni, in view of Fiebelkorn and Lemmouchi, teaches the cigarette of claim 1, as stated above. However, Minzoni, in view of Fiebelkorn and Lemmouchi, does not explicitly disclose the dimensions of the corrugated inner wrapper.
Sakai, in the same field of endeavor, teaches corrugated inner wrappers (“corrugated tape”, Fig. 4, Col. 2, lines 15-25) for cigarettes (Fig. 5, Col. 2, lines 64-66) wherein a width between corrugations of the corrugated inner wrapper is 1 mm to 3 mm (Sakai, “the distance between the centers of two adjacent grooves: 1 mm”, Example 1, Col. 5, lines 14-15), and a depth of the corrugations of the corrugated inner wrapper is 0.3 mm to 1 mm (Sakai, “depth: 0.5 mm”, Example 1, Col. 5, line 14). Sakai also teaches benefits of corrugated inner wrappers in that they contribute to small inhalation drag and the feeling of ample smoke inhalation for the smoker (Col. 4, lines 59-61). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the corrugated inner wrapper taught by Minzoni, in view of Fiebelkorn and Lemmouchi, to give it the dimensions taught by Sakai, in order to achieve these benefits.
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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