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 15, 20, 24, 26-28, and 33-34 are pending. Claims 15 and 33 have been amended. Claim 34 is new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 3/18/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
Applicant argues that the article of the combination of England and Conner required “numerous selections and combinations which Applicant does not consider would have been obvious to one of ordinary skill in the art without hindsight knowledge of the claimed elements” (Page 12 of Remarks). This argument is not persuasive as England discloses ranges for the parameters discussed, and values within these ranges satisfy the claim limitations. As such, a prima facie case of obviousness exists (MPEP § 2144.05(I)). Further, the modification of England with Conner was supported with motivation for combining the references, as discussed in the rejections below.
Applicant further argues that the “supposed benefit of ‘reducing the overall cost of manufacturing’” is not taught in either England or Conner (Page 12 of Remarks). This argument is not persuasive as an item being “cheaper . . . . is universal—and even common-sensical—[and therefore] there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves” (MPEP § 2144(II)).
Applicant’s arguments with regard to claim 29 (Page 12 of Remarks) are moot, as applicant canceled claim 29.
Applicant again argues that “there is no teaching in England or Conner that would have motivated one of ordinary skill in the art to make the numerous modifications to the article taught in England” (Page 13 of Remarks). This argument is not persuasive as the modification of England with Conner was supported with motivation for combining the references, as discussed in the rejections below, and the motivation does not have to come from the references themselves, as discussed above (see MPEP § 2144(II)).
Applicant then argues that “in view of the present significant amendment to Claim 15, England in view of Conner does not make all the elements of Claim 15 known” (Page 13 of Remarks). However, Applicant does not specify which elements are not taught by England or Conner. This argument is not persuasive as all elements of amended claim 15 are taught by the obvious combination of England and Conner, as discussed in the rejection of claim 15 below.
The arguments for the claims depending from independent claim 15 are not persuasive for substantially the same reasons stated above for claim 15.
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 15, 20, 24, 27, and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over England et al. (US 2019/0116875 A1) in view Conner et al. (US 2015/0083150 A1).
Regarding claim 15, England discloses an aerosol-generating article (“article 301”, Fig. 3, ¶ 0043) for producing an inhalable aerosol upon heating (¶ 0050), the aerosol-generating article comprising:
a rod (“body of smokable material” 303, Fig. 3, that corresponds to “body of smokable material 103”, ¶ 0020, 0043) of aerosol-generating substrate (¶ 0050);
a mouthpiece segment (combination of “filter segment” 309 and “mouth end segment” 311, Fig. 3, that correspond to “filter segment 109” and “mouth end segment 111”, ¶ 0020, 0043) comprising a plug of filtration material (“filter segment” 309, Fig. 3, that corresponds to “filter segment 109 [which] may be formed of any filter material”, ¶ 0032, 0043), the mouthpiece segment being disposed downstream of the rod and in longitudinal alignment with the rod (Fig. 3);
a hollow tubular segment (“cooling segment 307”, Fig. 3, ¶ 0044, that corresponds to “cooling segment 107”, ¶ 0026, 0043) at a location between the rod and the mouthpiece segment (Fig. 3), the hollow tubular segment being in longitudinal alignment with the rod and the mouthpiece segment (Fig. 3), wherein the hollow tubular segment has a length of between about 10 millimetres and about 30 millimetres (“between 20 mm and 30 mm”, ¶ 0028) and defines a cavity (“chamber”, ¶ 0026) extending to an upstream end of the mouthpiece segment (Fig. 3); and
a ventilation zone (“ventilation region 317”, Fig. 3, ¶ 0044) at a location along the hollow tubular segment (“ventilation holes may be located in the cooling segment 307”, Fig. 3, ¶ 0044), the ventilation zone comprising one or more rows of perforations (“one or more rows of holes”, Fig. 3, ¶ 0044) formed through a peripheral wall (“formed through the outer layer”, ¶ 0044) of the hollow tubular segment at less than about 18 millimetres from an upstream end of the hollow tubular segment (see Fig. 3 below, annotated by the examiner, displaying minimum lengths disclosed by England for each segment of the article, ¶ 0022, 0028 (using the second example), 0037, 0039; as shown in the annotated Fig. 3, the ventilation holes are located in cooling segment 307, as described in ¶ 0044, and cooling segment 307 has a length of 15 mm, as described in ¶ 0028; as cooling segment 307 corresponds to the hollow tubular segment, the ventilation holes are at a location which is at less than about 18 mm from an upstream end of the hollow tubular segment because the hollow tubular segment is less than 18 mm in length),
wherein a thickness of the peripheral wall of the hollow tubular segment is less than about 1.5 millimetres (“0.29 mm”, ¶ 0026),
wherein the hollow tubular segment comprises a tube (“annular tube”, ¶ 0025) formed from a polymeric material or a cellulosic material (“paper”, ¶ 0029-0030), and
wherein the aerosol-generating article further comprises a wrapper (“annular tipping paper”, ¶ 0025) circumscribing the rod, the tube, and the mouthpiece segment (¶ 0020, 0025),
wherein the rod of aerosol-generating substrate comprises at least an aerosol former (“aerosol forming agent, such as glycerol”, ¶ 0021), and
wherein the aerosol-generating article has a ventilation level of at least about 10 percent (”at least 15%”, ¶ 0071).
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Figure 3, Annotated by Examiner, Showing Minimum Lengths of England
However, England does not explicitly disclose that the rod of aerosol-generating substrate has an aerosol former content of at least about 10 percent on a dry weight basis.
Conner, in the same field of endeavor, teaches incorporating aerosol-forming materials (“glycerol”, ¶ 0033) into a rod of aerosol-generating substrate (“substrate material 55”, Fig. 1, ¶ 0033) at more than about 10 percent on a dry weight basis (“about 20 to about 30 percent by weight”, ¶ 0033). One of ordinary skill in the art would have understood that there was a benefit of including sufficient aerosol former content in the aerosol-generating substrate in that it provides for the generation of a visible mainstream aerosol that in many regards resembles the appearance of tobacco smoke. 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 included the aerosol former disclosed by England at the level disclosed by Conner to achieve this benefit.
England also does not disclose the mouthpiece segment not comprising a mouth end recess downstream of the plug of filtration material.
Conner further teaches a mouthpiece segment (“suitable mouthpiece such as, for example, a filter element 65, positioned at the mouth end 18”, Fig. 1, ¶ 0038) not comprising a mouth end recess downstream of a plug of filtration material (“filter element 65 may include filter material 70 that is overwrapped along the longitudinally extending surface thereof with circumscribing plug wrap material 72”, Fig. 1, ¶ 0038), whereas the mouthpiece segment disclosed by England includes a mouth end recess in addition to the plug of filtration material (as discussed above). One of ordinary skill in the art would have understood that there was a benefit to not including a mouth end recess, as taught by Conner, in that it reduces the overall cost of manufacturing the article by reducing the amount of materials required. 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 mouthpiece segment disclosed by England to not have a mouth end recess downstream of the plug of filtration material, as taught by Conner, in order to achieve this benefit.
England also does not explicitly disclose that an overall length of the aerosol-generating article is at least about 40 millimetres and less than 60 millimetres (see Fig. 3 above, annotated by the examiner, displaying minimum lengths disclosed by England for each segment of the article, ¶ 0022, 0028, 0037, 0039; as shown in the annotated Fig. 3, the overall length of the aerosol-generating article is 66 mm).
Conner further teaches that the rod of aerosol-generating substrate (“substrate material 55”, Fig. 1, ¶ 0032) may have a length from about 10 millimetres to about 22 millimetres (“about 10 mm to about 22 mm in length”, ¶ 0032), whereas England discloses that the rod of aerosol-generating substrate has a length of 34 millimetres (see Fig. 3 of England above, annotated by the examiner, displaying minimum lengths disclosed by England for each segment of the article, ¶ 0022, 0028, 0037, 0039; as shown in the annotated Fig. 3, body of smokeable material 303, which corresponds to the rod of aerosol-generating substrate, has a length of 34 mm, as described in ¶ 0022, 0043 of England). One of ordinary skill in the art would have understood that there was a benefit to shortening the length of the rod of aerosol-generating substrate in that it reduces the overall cost of manufacturing the article by reducing the amount of materials required. 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 rod disclosed by England to have the shorter length taught by Conner, in order to achieve this benefit. The resulting aerosol-generating article taught by England in view of Conner in which the length of the rod of aerosol-generating substrate has been reduced from 34 millimetres to about 10 millimetres to about 22 millimetres and the mouth end recess has been removed, the overall length of the aerosol-generating article is reduced from 66 millimetres (see Fig. 3 of England above, annotated by the examiner to show minimum lengths disclosed by England) to about 36 millimetres to about 48 millimetres (see Fig. 3 of England below, annotated by the examiner to show the article of the combination of England and Conner). The range of about 36 millimetres to about 48 millimetres falls within the claimed range of at least about 40 millimetres and less than 60 millimetres (MPEP § 2131.03). With regards to the rod having a length of less than 15 millimetres, since the range about 10 millimetres to about 22 millimetres overlaps the claimed range of less than about 15 millimetres, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
In the article of the combination, the ventilation zone is at less than 45 millimetres from an upstream end of the aerosol-generating article (see Fig. 3 of England below, annotated by the examiner to show the article of the combination of England and Conner; as shown in the annotated Fig. 3 below, the ventilation holes are located in cooling segment 307, as described in ¶ 0044 of England, and the overall length of the article is between about 36 mm and about 48 mm, as discussed above; therefore, the ventilation holes are at less than 45 mm from an upstream end of the aerosol-generating article because the overall article is at most 48 mm in length, and the ventilation holes are located in the hollow tubular segment, as discussed above).
England further discloses wherein the ventilation zone is at a location along the hollow tubular segment at least 2 millimetres from the upstream end of the mouthpiece segment (“Advantageously, providing the rows of ventilation holes between 17 mm and 20 mm from the proximal end 313 of the article 301 enables the ventilation holes 317 to be located outside of the apparatus 1, when the article 301 is fully inserted in the apparatus 1”, ¶ 0048; see Fig. 3 below, annotated by the examiner to show the article of the combination of England and Conner; as shown in the annotated Fig. 3, the ventilation holes are placed on the cooling segment 307, which corresponds to the hollow tubular segment, such that they are at between 17 mm and 20 mm from the proximal end 313, at a location which is also at least 2 mm from the upstream end of the mouthpiece segment) and less than 25 millimetres from a downstream end of the mouthpiece segment (see Fig. 3 below, annotated by the examiner to show the article of the combination of England and Conner; as shown in the annotated Fig. 3, the ventilation holes are located in cooling segment 307, as described in ¶ 0044; as cooling segment 307 corresponds to the hollow tubular segment, the ventilation holes are at a location along the hollow tubular segment less than 25 mm from a downstream end of the mouthpiece because the entire hollow tubular segment is located less than 25 mm from a downstream end of the mouthpiece in the article of the combination).
Further, in the article of the combination, the ventilation zone divides the cavity defined by the hollow tubular segment into an upstream sub-cavity, which extends longitudinally from the upstream end of the hollow tubular segment to the location of the ventilation zone (sub-cavity of the hollow tubular segment located upstream of the ventilation zone, see Fig. 3 below, annotated by the examiner), and a downstream sub-cavity, which extends longitudinally from the location of the ventilation zone to a downstream end of the hollow tubular segment (sub-cavity of the hollow tubular segment located downstream of the ventilation zone, see Fig. 3 below, annotated by the examiner), and wherein a ratio between a length of the upstream sub-cavity and a length of the downstream sub-cavity is at least about 0.35 and less than 3 (see Fig. 3 below, annotated by the examiner to show the article of the combination of England and Conner; as shown in the annotated Fig. 3, the ventilation holes are placed on the cooling segment 307, which corresponds to the hollow tubular segment, such that they are at between 17 mm and 20 mm from the proximal end 313, at a location which divides the hollow tubular segment into a downstream sub-cavity that is 11 mm to 14 mm and an upstream sub-cavity that is 9 mm to 6 mm, corresponding to a ratio between a length of the upstream sub-cavity and a length of the downstream sub-cavity of between 11 mm / 9 mm and 14 mm / 6 mm, which is 1.2 to 2.3; the range of 1.2 to 2.3 falls within the claimed range of at least about 0.35 and less than 3, see MPEP § 2131.03);
wherein the ventilation zone divides the aerosol-generating article into an upstream section, upstream of the location of the ventilation zone (subsection of the article located upstream of the ventilation zone, see Fig. 3 below, annotated by the examiner), and a downstream section, downstream of the location of the ventilation zone (subsection of the article located downstream of the ventilation zone, see Fig. 3 below, annotated by the examiner), and wherein a ratio between a length of the upstream section of the aerosol-generating article and a length of the downstream section of the aerosol-generating article is at least about 0.5 and less than 2 (see Fig. 3 below, annotated by the examiner to show the article of the combination of England and Conner; as shown in the annotated Fig. 3, the ventilation holes are placed on the article between 17 mm and 20 mm from the proximal end 313, at a location which divides the article into a downstream section that is between 17 mm and 20 mm and an upstream section that is the remainder, between 16 mm and 31 mm, corresponding to a ratio between a length of the upstream section and a length of the downstream section of between 16 mm / 20 mm and 31 mm / 17 mm, which is 0.8 to 1.8; the range of 0.8 to 1.8 falls within the claimed range of at least about 0.5 and less than 2, see MPEP § 2131.03).
As discussed above, the ventilation zone is located in the hollow tubular segment a distance of 6 mm to 9 mm (i.e., the length of the upstream sub-cavity, see Fig. 3 below, annotated by the examiner) away from an upstream end of the hollow tubular segment. England also teaches that the equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is 6 millimetres (England discloses that “Each row of ventilation holes may have between 12 to 36 ventilation holes 317. The ventilation holes 317 may, for example, be between 100 to 500 µm in diameter.”, ¶ 0045; therefore, a row of 36 ventilation holes with a diameter of 500 µm would correspond to a circumference of at least 18 mm and diameter of at least 5.73 mm, which displayed with one significant figure as in claim 33 is 6 mm). Therefore, the 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 6 mm / 5.73 mm to 9 mm / 5.73 mm, which is 1.0 to 1.6. The range at 1.0 to 1.6 falls within the claimed range of less than 2.5 (see MPEP § 2131.03).
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Figure 3, Annotated by Examiner, Showing Combination of England and Conner
Regarding claim 20, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. England further discloses wherein the aerosol-generating article has a ventilation level of less than about 60 percent (“ventilation ratio of 15%”, ¶ 0071).
Regarding claim 24, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. England further discloses wherein a thickness of the hollow tubular segment is at least about 100 micrometres (“0.29 mm”, ¶ 0026).
Regarding claim 27, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. England further discloses wherein the ventilation zone comprises a single row of holes formed through the peripheral wall of the hollow tubular segment (¶ 0044-0045).
Regarding claim 33, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. England further teaches wherein the equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is at least 6 millimetres (as discussed above, England discloses that “Each row of ventilation holes may have between 12 to 36 ventilation holes 317. The ventilation holes 317 may, for example, be between 100 to 500 µm in diameter.”, ¶ 0045; therefore, a row of 36 ventilation holes with a diameter of 500 µm would correspond to a circumference of at least 18 mm and diameter of at least 5.73 mm, which displayed with one significant figure as in claim 33 is 6 mm. As such, the claimed range and the prior art are “so mathematically close that the difference between the claimed ranges [is] virtually negligible absent any showing of unexpected results or criticality” and, therefore, a prima facie case of obviousness exists. MPEP § 2144.05(I)).
Regarding claim 34, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. As discussed above in the rejection of claim 15, the ventilation zone is located in the hollow tubular segment a distance of 6 mm to 9 mm (i.e., the length of the upstream sub-cavity, see Fig. 3 below, annotated by the examiner) away from an upstream end of the hollow tubular segment, and England also teaches that the equivalent internal diameter of the hollow tubular segment at the location of the ventilation zone is 6 millimetres (England discloses that “Each row of ventilation holes may have between 12 to 36 ventilation holes 317. The ventilation holes 317 may, for example, be between 100 to 500 µm in diameter.”, ¶ 0045; therefore, a row of 36 ventilation holes with a diameter of 500 µm would correspond to a circumference of at least 18 mm and diameter of at least 5.73 mm, which displayed with one significant figure as in claim 33 is 6 mm). Therefore, the 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 6 mm / 5.73 mm to 9 mm / 5.73 mm, which is 1.0 to 1.6. The range at 1.0 to 1.6 overlaps the claimed range of less than 1.2 (see MPEP § 2144.05(I)).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over England et al. (US 2019/0116875 A1) in view of Conner et al. (US 2015/0083150 A1) as applied to claim 15 above, and further in view of Robinson (US 2008/0092912 A1).
Regarding claim 26, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. England does not explicitly disclose wherein a resistance to draw of the aerosol-generating article is between about 30 millimetres H2O and about 90 millimetres H2O. Instead, England discusses the importance of controlling the resistance to draw of the article without specifying a desirable range (¶ 0033).
Robinson, in the same field of endeavor, discloses a range for desirable resistance to draw of an aerosol-generating article of between about 50 millimetres H2O and about 200 millimetres H2O (¶ 0116). 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 article disclosed by England to have a resistance to draw within the desirable range disclosed by Robinson. Since the range between about 50 millimetres H2O and about 200 millimetres H2O overlaps the claimed range of between about 30 millimetres H2O and about 90 millimetres H2O, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over England et al. (US 2019/0116875 A1) in view of Conner et al. (US 2015/0083150 A1) as applied to claim 15 above, and further in view of Grant (US 2017/0238600 A1).
Regarding claim 28, England in view of Conner teaches the aerosol-generating article according to claim 15, as stated above. However, England does not explicitly disclose a pack comprising at least ten aerosol-generating articles, wherein a difference between a resistance to draw of the aerosol-generating article having the highest resistance to draw among the at least ten aerosol-generating articles and a resistance to draw of the aerosol-generating article having the lowest resistance to draw among the at least ten aerosol-generating articles is less than 10 mm H2O.
Grant, in the same field of endeavor, discloses a pack comprising twenty aerosol-generating articles (¶ 0018). In addition, Grant discloses controlling the quality of a product by limiting the resistance to draw to a target range (¶ 0068). 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 aerosol-generating article taught by England in view of Conner to package the article into packs of twenty articles with as narrowly of a defined target range of resistance to draw as is feasible, in order to produce a high-quality product that can be mass-consumed.
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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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.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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