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
This Office Action is in response to Applicant’s amendment filed 01/23/2026.
Claims 1 and 4-7 are pending and are subject to this Office Action.
Claims 1 and 5 are amended.
Claims 2-3 and 8-17 are previously cancelled.
Response to Amendments
The Examiner withdraws the 112 rejection of claims 1 and 4-7 as being indefinite due to amendments to the claims filed 01/23/2026.
The Examiner withdraws the 112 rejection of claim 5 as being of improper dependent form due to amendments to the claims filed 01/23/2026.
Response to Arguments
Applicant’s arguments, see pages 5-10, filed 01/03/2026, with respect to claim 1 have been fully considered but they are not persuasive.
On pages 5-7 the Applicant argues that the combination of prior art references Uchida and Baek does not appropriately teach the natural plant materials as required by claim 1. The Applicant notes that Uchida teaches that plant materials undergo processing to obtain an average fiber length of 0.1mm to 0.5mm. Conversely, Baek teaches herb granules comprising herb material powder, but does not suggest producing cellulose fibers of any particular length from the herb material. Specifically, the applicant argues that the modification of Uchida with Baek would have rendered Uchida unsatisfactory for its intended purpose, as Baek does not disclose the fibers required by Uchida.
The Examiner disagrees.
The modification merely applies the teaching that other plant materials may be used in the formulation of granules. Thus, the modification is merely used to teach that another plant material source may be used. One having ordinary skill in the art would recognize that any herb material taught by Baek is a plant material that would inherently comprise cellulose fibers. Those herb materials comprising cellulose fibers may replace the plant material of Uchida and reasonably be processed as disclosed in Uchida. For example, any of the disclosed herb materials may be turned into an ordinary pulp. Specifically, juniper and eucalyptus are woods that would produce a pulp that may be defiberized as in Uchida.
Thus, the Examiner maintains that Uchida would remain satisfactory for its intended purpose upon modification with Baek.
On pages 7-9 the Applicant argues that the amended limitation to HPMC with "a viscosity of 20 cps or 50 cps" exhibits superior results not predicted by the prior art references. Specifically, the applicant references Tables 1-2 to demonstrate that Example 5 had better hardness and greater total fragrance ingredient than Examples 1 and 3 and to demonstrate that Examples 6 and 17 have greater increases in total fragrance compared to Examples 1, 5, 7-16, 18-22.
The Examiner maintains that this argument is unpersuasive.
The Examiner notes that unexpected results must be shown relative to the prior art range and should compare a sufficient number of tests both inside and outside the claimed range. In this case, the Applicant does not provide sufficient evidence of superior results for the moisture content or viscosity.
For example, regarding the moisture content, arguing superior results for Example 6 (moisture 7.9%) and Example 17 (moisture 9.9%) does not show criticality of the claimed range (moisture 5-12%) relative to the prior art (moisture 8-25%) or provide a sufficient number of tests both inside and outside the claimed range (i.e., above or between the claimed values).
Regarding the viscosity, arguing superior results for Example 5 (viscosity 50 cps) does not show criticality of the claimed range (viscosity 20 cps or 50 cps) by providing a sufficient number of tests both inside and outside the claimed range. There is no evidence for selecting a viscosity of 20 cps (the Examiner particularly notes that Tables 1-2 do not even provide an Example with viscosity of 20 cps), nor is there evidence to eliminate any value between 20 cps and 50 cps, or eliminating a value greater than 50 cps.
Furthermore, regarding the viscosity, one having ordinary skill in the art would recognize that benefits resulting from these values, such as optimized granule size and uniform adhesion of the binder to cellulose fibers, would be obvious. Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.
For all examples, there exist multiple variables that affect the final product. There is not sufficient evidence to argue for one particular variable over another based on the information presented. For example, Examples 6 and 17 have a different drying duration from all other examples, which may affect the outcome in addition to any particular selected moisture or viscosity. In effect, there are too many variables that may contribute to the final product to select a precise Example and state with certainty that its variable or precise combination of variables alone contributed to unexpected results.
Thus, the argument to superior results is considered unpersuasive and the rejection of claim 1 is maintained.
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 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, 3-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (US 20090246525 A1) in view of Baek et al. (WO 2008150130 A1) and Clark (US 20110277781 A1).
Regarding claim 1, Uchida teaches a cigarette filter ([0064]) comprising:
natural plant based granules composed of a natural plant material (cellulose granules or additive agents 33; [0064]), and a binder ([0036], [0044]. The Examiner notes that while the granules of Uchida contain volatile substances, these volatile substances would be considered to be liquid/moisture (such as the orange flavoring liquid) and thus appropriately teach the claimed filter);
and a filter portion to accommodate therein the natural plant based granules (filter 32; Fig. 6; [0064]),
wherein the binder is hydroxy propyl methyl cellulose (HPMC) ([0044]),
and a weight ratio of the natural plant material and the binder is in a range of 95 to 99%: 5 to 1% ([0048] discloses a weight ratio of natural plant material to binder of 100:0.5 to 100:10. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Uchida further teaches that the cellulose granules are formed with cellulose fibers derived from plant material pulp ([0037]).
Uchida does not explicitly teach (I) a moisture content of the natural plant based granule, (II) a viscosity of the HPMC or (III) that the plant material includes at least one selected from the group consisting of rosemary, pine needle, coffee, pineapple, chamomile, orange, eucalyptus, geranium, jasmine, rosemary, lemongrass, clover, bergamot, valerian, hyssop, tea tree, myrrh, and juniper.
Regarding (I), Clark, directed to a smoking article (smoking article 10; [0025]) comprising a cigarette filter (smoking article filter 14) comprising natural plant based granules (cellulosic flavor granules; [0026]) composed of a natural plant material and a binder (cellulosic binder; [0048]), teaches that a moisture content of the natural plant based granule is in a range of 5 to 12% of a total weight of the natural plant based granules ([0069] teaches a moisture content of about 8% to 25% by weight. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that the granule moisture content of Uchida would be in the range of 5 to 12% as taught by Clark because both Uchida and Clark are directed to cigarette filters comprising plant based granules, Uchida is silent to the granule moisture content and one with ordinary skill would be motivated to look to prior art for a known and suitable granule moisture content, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding (II), Uchida discloses that viscosity of the HPMC binder viscosity may be optimized so that the binder adheres uniformly to cellulose fibers and creates granules of the correct size ([0046]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to optimize the viscosity of the HPMC binder, because Uchida teaches that binder viscosity is a result effective variable, one with ordinary skill in the art would be motivated to optimize this variable in order to apply the binder uniformly to fibers and optimize granule sizes, and because it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 (II). Furthermore, one having ordinary skill in the art would recognize that a HPMC viscosity of greater than 15 cps and less than or equal to 50 cps is a range consistent with art-recognized HPMC viscosity values.
Regarding (III), Baek, directed to a cigarette filter (filter unit 10; page 9, line 1) comprising natural plant based granules (granules 15; page 9, lines 5-14) composed of natural plant material (page 9, lines 5-14) and a binder (page 6, line 22-page 7, line 10), teaches that plant based granules may be formed from plant materials including rosemary, pine needle, coffee, pineapple, chamomile, orange, eucalyptus, geranium, jasmine, rosemary, lemongrass, clover, bergamot, valerian, hyssop, tea tree, myrrh, and juniper (page 5, lines 18-24; page 8, lines 5-12; page 12, lines 19-24).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Uchida by using at least one selected from the group consisting of rosemary, pine needle, coffee, pineapple, chamomile, orange, eucalyptus, geranium, jasmine, rosemary, lemongrass, clover, bergamot, valerian, hyssop, tea tree, myrrh, and juniper as the natural plant material as taught by Baek because both Uchida and Baek are directed to cigarette filters comprising natural plant based granules, Baek teaches that certain natural plant material may be used to make cellulose granules, and this involves substituting one cellulose material for another to yield predictable results.
Regarding claim 4, Uchida teaches that a size of the natural plant based granule is in a range of 0.25 to 2.0 mm. ([0036] teaches granule diameter of 1.5 mm or less. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Regarding claim 5, Clark teaches that a moisture content of the natural plant based granule is in a range of 7 to 10% of a total weight of the natural plant based granules ([0069] teaches a moisture content of about 8% to 25% by weight. The claimed range overlaps the range taught by the prior art and is therefore considered prima facie obvious).
Regarding claim 6, Uchida teaches that the cigarette filter is a single filter (Fig. 6). Thus, Uchida teaches that the filter may be a single filter or a multiple filter.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Uchida, Baek and Clark as applied to claim 1 above, and further in view of Besso (US 20180116277 A1).
Regarding claim 7, Uchida does not teach that the cigarette filter further includes a herb oil capsule containing an oil ingredient extracted from the natural plant material.
Besso, directed to an aerosol-generating article comprising a cigarette filter (mouthpiece 14 with segment of filter material 20), teaches that the cigarette filter further includes a herb oil capsule (freshener delivery element 26 within support material 22) containing a liquid flavourant, such as peppermint oil, parsley oil or other herb oils extracted from natural plant material ([0057], [0043]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Uchida by adding the capsule component as taught by Besso because both Uchida and Besso are directed to cigarette filters, Besso teaches that it is known in the art to add a herb oil capsule to provide a breath-freshening component, and this involves applying a known teaching to a similar product to yield predictable results.
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.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755