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 16-26 and 28-29 are pending and are subject to this Office Action. Claim 16 is amended. Claim 29 is newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 11/28/2025 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 5-11, filed 11/28/2025, with respect to the rejection(s) of claim(s) 16 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended claim 16 to require the new limitation of the rod of aerosol-generating substrate having a length of less than 15 millimeters, whereas previously a length of less than 25 millimeters was only required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found art and previously applied art.
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.
Claims 16-26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Tang (CN104921296A, citations will refer to the English translation provided) in view of Pijnenburg (US2018/0177228) and WO2017/198838 (hereinafter referred to as Ballesteros as indicated in the PTO 892 dated 01/08/2024).
Regarding claims 16 and 28-29, Tang discloses:
An aerosol-generating article for producing an inhalable aerosol upon heating (cigarette, figure 2, [0029]), the aerosol-generating article comprising:
A rod of aerosol-generating substrate (tobacco material segment 12); a mouthpiece segment comprising a plug of filtration material (solid filter 1), the mouthpiece segment being disposed downstream of the rod and in longitudinal alignment with the rod (as shown in figure 2, [0031]).
A hollow tubular segment (first hollow filter or first cavity 2) at a location between the rod and the mouthpiece segment (as shown in figure 2), the hollow tubular segment being in longitudinal alignment with the rod and the mouthpiece segment (as shown in figure 2), wherein the hollow tubular segment defines a cavity extending to the mouthpiece segment (fourth cavity 7, figure 2, [0031]).
Wherein an equivalent internal diameter of the hollow tubular segment is at least 5 millimetres (5.5 mm, [0036]).
Wherein the rod of aerosol-generating substrate comprises at least an aerosol former (glycerol, [0041]), the rod of aerosol-generating substrate having an aerosol former content of at least 10 percent (12%, [0041]).
Wherein a total length of the aerosol-generating article is less than 70 millimetres (55 mm, [0040]).
Tang does not appear to explicitly disclose (I) wherein the rod of aerosol-generating substrate has a length of less than 15 millimetres, (II) a ventilation zone at a location along the hollow tubular segment, (III) wherein an equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is at least 5 millimetres and wherein a ratio between a distance between the ventilation zone and an upstream end of the hollow tubular segment and the equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is less than 3.5, and (IV) wherein the aerosol former content is on a dry weight basis.
In regard to (I), Tang further teaches the length of the composite nozzle rod is 40 mm ([0035]) and heat-not-burn cigarette samples based on the appearance and size of traditional cigarettes were prepared ([0039]).
Pijnenburg, directed to a method of making a rod for use as an aerosol-forming substrate, teaches:
Rods as described herein may be used as aerosol-generating substrates in heated aerosol-generating articles ([0056]), as such the rod describes a rod of aerosol-generating substrate.
Rods according to the specification may be produced having different dimensions depending upon their intended use. Rods according to the specification for use as aerosol-forming substrates in heated aerosol-generating articles may have a rod length of between about 5 mm and about 20 mm [0058].
As such, Pijnenburg teaches known lengths of rod of aerosol-generating substrates that are suitable for use in heated aerosol-generating articles. Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the composite nozzle rod of Tang to be used with a rod of aerosol-generating substrate having a length of between about 5 mm and 20 mm as taught by Pijnenburg, because both Tang and Pijnenburg are directed to heated aerosol-generating articles, Pijnenburg teaches this is a suitable length of a rod of aerosol-generating substrate for use in heated aerosol-generating articles, and this merely involves incorporating a known rod of aerosol-generating substrate toa similar aerosol generating article to yield predictable results.
The rod of aerosol generating substrate having a length of between about 5 mm and about 20 mm falls within the claimed range of less than 15 millimetres and is therefore prima facie obvious.
The rod of aerosol generating substrate having a length of between about 5 mm and about 20 mm and the length of the composite nozzle rod being 40 mm would have a total length of the aerosol-generating article being about 45 mm to about 60 mm. The range taught by the prior art falls within the claimed range of less than 70 millimetres as recited in claim 16 and less than 50 millimetres as recited in claim 29 and is therefore prima facie obvious.
In regard to (I), Ballesteros teaches:
An aerosol-generating article (301) with a hollow tubular segment (cooling segment 307) and a ventilation zone at a location along the hollow tubular segment (ventilation region 317, figure 3, page 9, fifth paragraph).
The ventilation holes provide ventilation for the article (page 9, sixth paragraph) and provide effective cooling to the article (page 9, second paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the hollow tubular segment of Tang by incorporating a ventilation zone as taught by Ballesteros, because both Tang and Ballesteros are directed to aerosol-generating articles, Ballesteros teaches the ventilation zone provides ventilation and cooling for the article, and this merely involves incorporating a known element of an aerosol generation article (i.e. ventilation zone) to a similar aerosol generating article to yield predictable results.
In regard to (II), Ballesteros further teaches:
Preferably the ventilation holes are located between 17mm and 20mm from the proximal end 313 of the article 301. The location of the ventilation holes 317 is positioned such that user does not block the ventilation holes 317 when the article 301 is in use (page 10, second paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the ventilation zone of modified Tang to be between 17 and 20 mm from the proximal end of the article as taught by Ballesteros, because both Tang and Ballesteros are directed to aerosol-generating articles, and Ballesteros teaches this allows a user to not block the ventilation holes when the article is in use.
As the length of the solid filter 1 is preferably 10-15 mm and the length of the first cavity 2 is preferable 7-10 mm ([0016]), having the ventilation zone between 17 and 20 mm from the proximal end of the article would have the ventilation zone be located on first cavity 2, yielding an equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is at least 5 millimetres (5.5 mm, [0036]). Further as the length of the solid filter 1 is preferably 10-15 mm and the length of the first cavity 2 is preferable 7-10 mm ([0016]), having the ventilation zone between 17 and 20 mm from the proximal end would yield the ventilation zone between 0 and 8 mm from the upstream end of the hollow tubular segment, yielding a ratio between a distance between the ventilation zone and an upstream end of the hollow tubular segment and the equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone to be between 0 and 1.45 mm, which falls within that claimed range of less than 3.5 as recited in claim 16 and less than 2.5 as recited in claim 28 and is therefore prima facie obvious.
In regard to (III), Tang does not disclose whether the aerosol former content is on a dry weight basis. However, glycerol at a 12% addition ratio would either be on a dry weight basis or a wet weight basis, and it would be obvious to one of ordinary skill in the art that it is either one or the other and to try the aerosol former amount on a dry weight basis as choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See MPEP § 2143, E.
Regarding claim 17, Tang further teaches wherein the hollow tubular segment comprises a wrapper circumscribing the rod and the mouthpiece segment (tipping paper 10, figure 2, [0031]).
Regarding claim 18, Tang further teaches wherein the hollow tubular segment comprises a tube formed from a cellulosic material (first hollow filter 2 is wrapped with a first shaping paper 9, [0035]; and paper is a cellulosic material per the Applicant’s specification on page 18, third paragraph).
Regarding claim 19, Tang further teaches a wrapper circumscribing the rod, the tube, and the mouthpiece segment (tipping paper 10, figure 2, [0031]).
Regarding claim 20, Tang further teaches wherein an equivalent internal diameter of the hollow tubular segment is substantially constant along a length of the hollow tubular segment (as the equivalent internal diameter of first cavity 2 is constant as shown in figure 2).
Regarding claim 21, as modified Tang teaches the length of the solid filter 1 (i.e. mouthpiece segment) is preferably 10-15 mm and the length of the first cavity 2 (i.e. hollow tubular segment) is preferably 7-10 mm ([0016]), having the ventilation zone between 17 and 20 mm from the proximal end of the article would have the ventilation zone at a location along the hollow tubular segment between 2 and 5 mm from the upstream end of the mouthpiece segment. The claimed range of at least 2 millimetres from the upstream end of the mouthpiece segment overlaps the range taught by the prior art and is considered to be prima facie obvious.
Regarding claims 22-23, Tang is silent to a ventilation level of the aerosol-generating article.
Ballesteros further teaches:
A ventilation ratio of 15% enables the heated volatilised components to be made visible. The visibility of the heated volatilised components enables the user to identify that the volatilised components have been generated and adds to the sensory experience of the smoking experience (page 15, second paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the aerosol generating article of Tang to have a ventilation ratio of 15% as taught by Ballesteros, because both Tang and Ballesteros are directed to aerosol-generating articles, Ballesteros teaches this enables the heated components to be made visible and adds to the sensory experience, and this merely involves incorporating a known ventilation level to a similar aerosol-generating article to yield predictable results.
A ventilation level of 15% reads on a ventilation level of at least 10 percent as recited in claim 22 and a ventilation level of less than 60 percent as recited in claim 23.
Regarding claim 24, Tang further reaches wherein the hollow tubular segment has a length of 5 to 10 mm ([0016], length of first cavity 2). The range taught by the prior art overlaps the claims range of between 10 millimetres and 30 millimetres and is therefore considered to be prima facie obvious. Further, the Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
Regarding claims 25-26, Tang further teaches that each section has an outer diameter of 7.8 mm ([0035]) and an inner diameter of the hollow tubular section is 5.5 mm ([0036]). Therefore, the thickness of the peripheral wall of the hollow tubular segment, which is the location of the ventilation zone, can be calculated to be 1.15 mm (outer diameter minus inner diameter divided by 2), which falls within the claimed range of less than 1.5 mm as recited in claim 25 and at least 100 micrometers as recited in claim 26.
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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755