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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/08/2026 has been entered.
Status of the Claims
This Office Action is in response to Applicant’s amendment filed 05/08/2026.
Claims 1 and 4-7 are pending and are subject to this Office Action.
Claim 1 is amended.
Claims 2-3 and 8-17 are previously cancelled.
Response to Arguments
Applicant’s arguments, see pages 4-5, filed 05/08/2026, with respect to claim 1 have been fully considered and they are persuasive. Claim 1 has been amended to further limit the moisture content range, to further limit the viscosity of the binder, and to recite a drying temperature and time of the granules. The prior art of record does not explicitly disclose “hot air drying the granules at a drying temperature of 45 C for 90 minutes”, as newly required. However, upon further consideration, the prior art of record is considered to make obvious the newly added limitation. A modified rejection based on amendments made to the claim is made below in view of a different interpretation of previously applied prior art.
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) that the natural plant based granules are obtained by hot air drying the granules at a drying temperature of 45C for 90 minutes, (III) a viscosity of the HPMC or (IV) 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 7.9 to 9.9% 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 7.9 to 9.9% 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 teaches that the natural plant-based granules are obtained by hot air drying ([0038], [0078]), but does not teach the claimed conditions.
However, the Examiner notes that the drying process and conditions constitutes a product-by-process limitation. 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. See MPEP § 2113. The product of Uchida teaches all required characteristics (i.e., moisture content) that may result from the recited drying process. Furthermore, one having ordinary skill in the art would recognize that the end product could be achieved by different drying methods at different temperatures and durations. As such, Uchida is considered to make obvious a compositionally equivalent natural plant based granul
Regarding (III), 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, such as to 50 cps, 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 50 cps is a value consistent with art-recognized HPMC viscosity values.
Regarding (IV), 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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, 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.
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.
/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights