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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12-23-2025 has been entered.
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 12/23/2025.
Claim 1 is currently amended, no claims are canceled.
Claims 1-30 are currently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 18 recites the broad recitation (the wrapper has a permeability of) less than 100 Coresta units, and the claim also recites less than 80 Coresta units, less than 60 Coresta units, or less than 20 Coresta units are each respectively narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 21 recites the broad recitation having a density of less than about 700 milligrams per cubic centimeter, and the claim also recites having a density of less than about 600 milligrams per cubic centimeter which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of 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 (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.
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 1-3, 7-12, 16, 17, 26, 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2), English machine translation relied upon.
Regarding Claim 1, Kaljura teaches an article for use in a non-combustible aerosol provision system (page 3 last paragraph), the article comprising:
an aerosol generating material (page 3 last paragraph); and
a mouthpiece connected to the aerosol generating material (page 6 last paragraph),
Kaljura teaches the mouthpiece includes a hollow tubular element (see page 8 paragraph 1 and paragraph 4, see also FIG 3, air channel 28 inside of filter section 24) Kaljura fails to explicitly disclose (a) the mouthpiece includes a second hollow tubular element, (b) the pressure difference across the mouthpiece is at least 10 mmH2O and less than 32 mmH2O.
Regarding (a) Kaljura also teaches (page 8 and beginning of page 9) the effect of the hollow tubular element on the draw strength of the smoking article (see examples of pressure drop resulting from the hollow tubular element last few paragraphs of page 8). Although Kaljura does not explicitly recite a duplication of the hollow filter parts, it would have been obvious for a person of ordinary skill in the art to duplicate the hollow tubular filter section to include a second hollow tubular element in the mouthpiece of Kaljura in order to establish a desired pressure drop/draw strength with a reasonable expectation of success, which is consistent with the teachings of Kaljura. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Additionally, the hollow tubular element provides cooling because cooling is inherently provided and taught/evidenced by the pressure drop as the gas flows into the air gap provided by the hollow tubular element that would allow for adiabatic cooling as the pressure drops, see page 6 last paragraph, pressure drop. Additionally, the matter in the air and walls in the hollow tubular element would be expected to be close to ambient temperature and thus heated air traveling through or near adjacent matter at ambient temperature would also cause cooling.
Accordingly, Kaljura teaches a filter section with a hollow interior. (page 13 paragraph 2, hollow section, which implies air gap, a person of ordinary skill in the art would appreciate the hollow tubular element (first or second) includes a hollow section which would include an air gap)
The mouthpiece comprises ventilation, (e.g., Kalijura teaches the mouthpiece includes a ventilation arrangement 17 part upstream of the hollow tubular portion(s) of the mouthpiece, see page 4, 5th paragraph)
Regarding (b) although Kaljura fails to explicitly disclose the pressure drop across the mouthpiece Kaljura teaches each section of the mouthpiece can be 5-25mm in length (see page 14, last paragraph). Kaljura teaches suitable ranges for pressure drop across a filter section of the mouthpiece can be 1 mmH2O/mm to 5 mmH2O/mm (page 6 last paragraph), thus Kaljura teaches a two section 10 mm long mouthpiece has a pressure drop between 10mm/H2O and 50 mmH2O across the mouthpiece which overlaps with the claimed range of at least 10 mmH2O and less than 32 mmH2O across the mouthpiece. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 2, Kaljura teaches all of the claim limitations as set forth above. Additionally, Kaljura discloses the mouthpiece comprises
an upstream end adjacent to the aerosol generating material (e.g., 12, see Kaljura FIG 3) and
a downstream end distal from the aerosol generating material (e.g., duplicated 24, see FIG 3) and
the first hollow tubular element comprises a hollow tubular element formed from filamentary tow at the downstream end of the mouthpiece (see page 7 paragraph 3, the filter sections may comprise fibrous material (tow), duplicated Kaljura 24 as set forth above (see FIG 3) is equivalent to the claimed first hollow tubular element).
Regarding Claim 3, Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura discloses the hollow tubular element comprises a minimum wall thickness of greater than 0.9mm. Specifically, Kalijura discloses a hollow tubular element with an outer circumference of 23.95mm and an inner air channel with a 4.8mm diameter. That calculates to a wall thickness of 1.4mm (see page 8 paragraph 3 and FIG 3).
Regarding Claim 7, Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura discloses the hollow tubular element comprises an internal diameter of greater than 3.0mm, Specifically, Kaljura discloses an internal diameter of between 3 and 6 mm which overlaps with the claimed range (see page 8 paragraph 3 and FIG 3). In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 8, Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the hollow tubular element comprises a first hollow tubular element and wherein the mouthpiece comprises a second hollow tubular element upstream of the first hollow tubular element (as set forth above in claim 1, hollow tubular containing mouthpiece part 24 is duplicated giving the mouthpiece a first and second hollow tubular element, in this duplication the second hollow tubular element is upstream of the first hollow tubular element).
Regarding Claim 9, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches an outer circumference of between 19mm and 23mm. Specifically, Kaljura teaches 19-22mm (see page 4 paragraph 2), which falls within the claimed range.
Regarding Claim 10, Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the mouthpiece comprises a ventilation level of between 50% and 80% of aerosol drawn through the article. Specifically, Kaljura discloses a ventilation level of between 40% and 80% of aerosol drawn through the article (see page 8 last paragraph), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 11, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the mouthpiece comprises a body of material (page 5 fourth paragraph).
Regarding Claim 12, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the body of material comprises filamentary tow (page 5 fourth paragraph).
Regarding Claim 16, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the article further comprises a wrapper (page 13 paragraph 4 and 5).
Regarding Claim 17, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the wrapper circumscribes the aerosol generating material (page 13 paragraph 4).
Regarding Claim 25. Modified Kaljura discloses all of the claim limitations as set forth above.
As set forth above Kaljura teaches first filter section (which was duplicated as set forth above in the rejection of claim 1) and is taught to have a length of 5 to 25mm (page 2 last paragraph).
Kaljura additionally teaches the hollow tubular element can be between 1 mm and 7 mm in diameter (page 3 paragraph 2). Therefore, the mouthpiece comprises a hollow tubular element with an internal volume in the mouthpiece of between 8 mm3 and 1924 mm3, which overlaps with the claimed range of the mouthpiece comprising a cavity having an internal volume greater than 450 mm3. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 26, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the pressure difference across the mouthpiece is equal to or greater than 15 mmH20. Specifically, Kaljura the pressure drop can be less than 5 mmH2O/mm (see page 6 last paragraph) therefore for an example 10mm long mouthpiece (page 2 last paragraph) the mouthpiece can have a pressure drop of from 0-50 mmH2O, which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 27, Modified Kaljura discloses all of the claim limitations as set forth above. Kaljura also teaches a non-combustible aerosol provision device for heating the aerosol generating material of the article (see page 3 last paragraph).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 1 above, English machine translation relied upon and further in view of Lisan (WO2014198815A1).
Regarding Claim 4, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura teaches hollow tubular elements but is silent to suitable density of the hollow tubular element and thus fails to explicitly disclose the hollow tubular element comprises a density between 0.25g/cc and 0.75g/cc,
Lisan teaches hollow tubular filter elements (page 5 line 34) and teaches the hollow tubular element comprises a suitable density of 0.25 to 0.41 g/cc (page 4 line 15) which falls within the claimed range.
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the hollow tubular element of Kaljura to have a density of 0.25 to 0.41 g/cc as taught by Lisan, because both Kaljura and Lisan are directed to smoking articles with hollow tube members, Kaljura is silent in regards to suitable densities for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable densities for a similar smoking article, Lisan teaches known densities for a similar tubular element and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Regarding Claim 5, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Lisan teaches the filamentary tow of the mouthpiece comprises a total denier of 34,000, which falls within the claimed range of less than 45,000 (see page 2 lines 11-12).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the mouthpiece of Kaljura to have a total denier of 34,000 as taught by Lisan, because both Kaljura and Lisan are directed to smoking articles with mouthpieces with hollow tube members, Kaljura is silent in regards to suitable denier for use in a mouthpiece with hollow tube members and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable denier for a similar smoking article, Lisan teaches known densities for a similar tubular element and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Claims 6, 13, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 2 and 12 above, English machine translation relied upon and further in view of Iwamoto (WO2017021994A1), English machine translation relied upon.
Regarding Claims 6, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura fails to teach the filamentary tow of the mouthpiece comprises a denier per filament of greater than 3.
However, Iwamoto teaches the filamentary tow of the mouthpiece comprises a denier per filament of greater than 3 (see page 2, 4th paragraph from the bottom). Specifically, Iwamoto teaches a denier per filament of 5-15 which falls within the range claimed of the filamentary tow of the mouthpiece comprises a denier per filament of greater than 3. Iwamoto also teaches methods of how to correct crimp unevenness of the tow so that ventilation of the filter is not reduced (see page 7 4th paragraph under industrial applicability).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to combine the article of Kaljura with the tow denier of Iwamoto.
A person of ordinary skill in the art would have been motivated to combine the article of Kaljura with the tow denier of Iwamoto to increase the ventilation of the filter and avoid unevenness of the tow.
Regarding Claims 13, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura fails to teach the filamentary tow of the mouthpiece comprises a denier per filament of between 7 and 12.
However, Iwamoto teaches the filamentary tow of the mouthpiece comprises a denier per filament of between 7 and 12 (see page 2, 4th paragraph from the bottom).
Specifically, Iwamoto teaches a denier per filament of 5-15 which meets the claim limitations of the filamentary tow of the mouthpiece comprises a denier per filament of between 7 and 12. Iwamoto also teaches methods of how to correct crimp unevenness of the tow so that ventilation of the filter is not reduced (see page 7 4th paragraph under industrial applicability). In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to combine the article of Kaljura with the tow denier of Iwamoto.
A person of ordinary skill in the art would have been motivated to combine the article of Kaljura with the tow denier of Iwamoto to increase the ventilation of the filter and avoid unevenness of the tow.
Regarding Claim 14, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Iwamoto teaches the filamentary tow of the body of material comprises a total denier of between 10,000 and 14,000 (see page 2, 4th paragraph from the bottom). Iwamoto discloses a total denier of between 10,000 to 25,000. It would have been obvious to a person of ordinary skill in the art to select the range a total denier of between 10,000 to 14,000 from the disclosure of Iwamoto. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claims 15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claims 11 and 17 above, English machine translation relied upon and further in view of Jordil (US 11178907B2).
Regarding Claim 15, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the body of material is in the form of a cylinder having a longitudinal axis (FIG 2) and Kaljura teaches the smoking article has a width of between 16 and 25 mm in width (see page 4 paragraph 2, emphasis added).
However Kaljura fails to explicitly disclose the article further comprising a capsule embedded within the body of material such that the capsule is surrounded on all sides by the material forming the body, the capsule having a shell encapsulating a liquid aerosol modifying agent, and wherein the largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 28% of the cross sectional area of the body of material measured perpendicularly to the longitudinal axis.
However, Jordil teaches the article further comprising
a capsule (120) embedded within the body of material (125) (see FIG 1)
the capsule is surrounded on all sides by the material forming the body e.g., the capsules are surrounded on all sides by the material forming the body, see FIG 1,
the capsule having a shell encapsulating a liquid aerosol modifying agent (see column 1, lines 51-54), and
the largest cross-sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 28% of the cross-sectional area of the body of material measured perpendicularly to the longitudinal axis. Specifically, Jordil teaches the capsule is 2mm to 7mm in diameter (column 6, lines 39-40). Therefore, measuring perpendicular to the longitudinal axis, Kaljura modified by Jordil teaches the capsule occupies between 0.64% and 19.14% of the cross-sectional area of the body of material, which is less than 28% of the cross section area of the body of material which falls within the claimed range.
Jordil teaches that flavorants should be used to enhance the flavor of heated tobacco materials within a smoking article or to provide additional flavors (column 1 lines 43-49), and teaches that liquid flavorants are volatile and their potency is lost during storage (column 1 lines 50-57) but teaches this problem can be overcome by encapsulating the liquid flavorant in a capsule that can be broken prior to or during smoking to preserve and reduce the loss of volatile flavorants (column 1 lines 57-67).
Therefore, it would be obvious to modify Kaljura with Jordil to enhance the flavor of the heated tobacco materials of Kaljura so that the liquid flavorants can be preserved in a capsule to reduce the loss of volatile flavorants.
Regarding Claim 19, Modified Kaljura discloses all of the claim limitations as set forth above. Kaljura fails to explicitly disclose the wrapper comprises a metallic layer.
However, Itabashi a similar smoking device and teaches the wrapper comprises a metallic layer (metal foil, see last sentence of [0022]).
Itabashi further teaches that the smoking device should include capsules/granules which include absorbent particles and flavor enhancing particles that enhance the flavor of the smoke [0018], and further teaches that air permeability through the filter sections of the device which include the capules/granules can be regulated with the wrapper materials which can include metal foil.
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the article of Kaljura with the teachings of Itabashi which includes the capsules of Itabashi to enhance the flavor of the smoke [0018] and the additional teachings of Itabashi which includes a metallic foil [0022] which Itabashi teaches helps to regulate the air permeability through the capsules.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claims 17 above, English machine translation relied upon; and further in view of Baker (GB2139869A).
Regarding Claim 18, Modified Kaljura discloses all of the claim limitations as set forth above. Kaljura fails to teach the wrapper has a permeability of less than 100 Coresta Units, less than 80 Coresta Units, less than 60 Coresta Units or less than 20 Coresta Units. Kaljura is silent as to the Coresta units or the specific permeability of the wrapper.
However, Baker teaches the wrapper has a permeability of less than 100 Coresta Units, less than 80 Coresta Units, less than 60 Coresta Units or less than 20 Coresta Units. Specifically, Baker teaches the wrapper has an air permeability of from 3-45 Coresta Units (page 1 line 42).
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the wrapper of Kaljura, to have an air permeability of 3-45 Coresta units as taught by Baker, because both Kaljura and Baker are directed to smoking articles with wrappers, Kaljura is silent in regards to suitable air permeability for use in wrappers and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable air permeabilities for wrappers in a similar smoking article, Baker teaches known air permeabilities for wrappers, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 16 above, English machine translation relied upon and further in view of Mishra (KR20130029062A), English machine translation relied upon.
Regarding Claim 20, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura teaches aerosol modifying additives but fails to explicitly disclose the wrapper comprises an aerosol modifying additive.
Mishra teaches the wrapper comprises an aerosol modifying additive. Specifically, Mishra teaches the flavorant may be incorporated into a wrapper of a cigarette or other smoking article (page 5 last paragraph). Mishra also teaches that flavorants may be applied to different locations of the smoking article so that the user can experience different flavors at different times of the smoking experience.
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to combine the article of Kaljura with the flavored wrapper of Mishra.
A person of ordinary skill in the art seeking to flavor a wrapper would have been motivated to combine the article of Kaljura with the flavored wrapper of Mishra so that the user could experience different flavors during the smoking experience.
Claims 21 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 1 above, English machine translation relied upon and further in view of Snow (US20140103099A1)
Regarding Claim 21, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the aerosol generating material comprises reconstituted tobacco material (page 3 last paragraph). However, Kaljura fails to explicitly disclose the reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter or reconstituted tobacco material having a density of less than about 600 milligrams per cubic centimeter.
Snow teaches the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter [0069] or reconstituted tobacco material having a density of less than about 600 milligrams per cubic centimeter [0069]. Specifically, Snow teaches reconstituted tobacco material having a density of from about 170 milligrams per cubic centimeter to about 260 milligrams per cubic centimeter. Snow also teaches the density of the tobacco column controls how oxygen is limited or provided to the burning coal [0071]. Snow also teaches tobacco density contributes to controlled ignition areas in the disclosed aerosol generating article and that the tobacco density of Snow teaches decreased carbon monoxide delivery to the user [0071] and [0027].
Therefore, it would have been obvious for a person of ordinary skill in the art to modify the article of Kaljura with the tobacco density teachings of Snow to better control the oxygen access to the burning coal in the burning tobacco and decrease the carbon monoxide delivery to the user.
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 1 above, English machine translation relied upon and further in view of Ibrahim (KR20180069092A), English machine translation relied upon.
Regarding Claim 22, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Kaljura teaches the aerosol generating material comprises a tobacco component, but Kaljura fails to explicitly recite the tobacco component comprises leaf tobacco in an amount of between about 10% and about 90% by weight of the tobacco component and wherein the leaf tobacco has a nicotine content of greater than 1.5% by weight of the leaf tobacco.
However, Ibrahim teaches the tobacco component comprises leaf tobacco in an amount of between about 10% and about 90% by weight of the tobacco component. Specifically, Ibrahim discloses 10-30% (see page 5 paragraph 3 and 6)
and
the leaf tobacco has a nicotine content of greater than 1.5% by weight of the leaf tobacco (see page 8 paragraph 3 under tobacco extract). Specifically, the nicotine content of Ibrahim of 3.37% lies inside the claimed range of greater than 1.5% by weight. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Ibrahim also teaches “aerosol generators are agents that promote the generation of aerosols…by promoting the condensation of initial volatilization and/or gas into an inhalable solid and/or liquid aerosol.” Ibrahim teaches that these “aerosol generators can improve the delivery of flavor from the aerosol generating material (page 2 second to last paragraph).”
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to combine the article of Kaljura with the tobacco leaf mixture of Ibrahim.
A person of ordinary skill in the art would have been motivated to combine the article of Kaljura with the tobacco leaf mixture of Ibrahim to improve the delivery of flavor from the aerosol generating material.
Regarding Claim 23, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Ibrahim teaches the leaf tobacco comprises
at least a portion of aerosol forming material in an amount of up to about 10% by weight of the leaf tobacco. Specifically, Ibrahim discloses “said tobacco component comprises an amount of 0 to 30% by weight of said tobacco component selected from leaf tobacco, extruded tobacco, bandcast tobacco, and mixtures thereof”, it would be obvious to a person of ordinary skill in the art to select a mixture of leaf tobacco which results in an amount of the 0-30% being up to about 10% leaf tobacco, which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). (see page 13, 24th line), and
Ibrahim teaches the tobacco component comprises said aerosol forming material in an amount between 0% and about 30% by weight of the tobacco component, which overlaps with the claimed range of 10% to about 30% by weight of the tobacco component (see page 13, 24th line).
Regarding Claim 24, Modified Kaljura discloses all of the claim limitations as set forth above. Additionally, Ibrahim teaches the aerosol generating material comprises an aerosol forming material (glycerol), and the aerosol forming material comprises at least 5% by weight of the aerosol generating material. (see page 8, 4th paragraph from the bottom). Specifically, Ibrahim teaches a glycerol content of 96.4mg/g which is about 9.6% by weight which falls within the claimed range (see page 8, 6th paragraph).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kaljura (RO201700023U2) as applied to claim 27 above, English machine translation relied upon and further in view of Shimizu (US20120234821A1)
Regarding Claim 28, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura teaches the article for use in a non-combustible aerosol provision system as set forth above but fails to explicitly disclose the non- combustible aerosol provision system which heats the article and therefore that the system includes a coil. Kaljura is further silent to how the article is heated to produce smoke.
Shimizu teaches a non- combustible aerosol provision system comprises a coil (see FIG 4, see also FIG 5, coil 2, see also [0031]).
Shimizu also teaches the system is able to vaporize nicotine from cigarettes without burning the cigarettes and the tobacco contained therein [0002].
Therefore, it would be obvious to use the article of Kaljura with the aerosol system of Shimizu to vaporize nicotine from the cigarettes of Kaljura without burning the tobacco contained therein.
Regarding Claim 29, Modified Kaljura discloses all of the claim limitations as set forth above. However, Kaljura is silent to a heating coil and further is silent to suitable temperatures for such a coil to heat aerosol generating materials.
However, Shimizu teaches a heating coil as set forth above. Additionally, Shimizu teaches the non-combustible aerosol provision device includes a heating coil (see FIG 4) and the heating coil is configured to heat the aerosol generating material of the article. Although Shimizu is silent to the temperature at which the coil heats the aerosol generating material, Shimizu teaches the coil is heated to 300 degrees C (See table 1), and teaches that the heat from the coil is used to heat the aerosol generating material including by heating hot air for primary heating of the tobacco leaves [0052].
Although Shimizu is silent to the maximum temperature to which the aerosol generating material is heated, it would be obvious to a person of ordinary skill in the art to modify a coil that is configured to be heated to 300 degrees C and to primarily heat air, to configure the coil to heat the aerosol generating material to a temperature of at least 200 °C. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Shimizu also teaches the system is able to vaporize nicotine from cigarettes without burning the cigarettes and the tobacco contained therein [0002].
Therefore, it would be obvious to use the article of Kaljura with the aerosol system of Shimizu to vaporize nicotine from the cigarettes of Kaljura without burning the tobacco contained therein.
Regarding Claim 30, Modified Kaljura discloses all of the claim limitations as set forth above.
Kaljura is silent to a heating coil and further is silent to suitable temperatures for such a coil or suitable temperatures for such a coil to heat aerosol generating material.
However, Shimizu teaches a heating coil as set forth above. Additionally, Shimizu teaches the non-combustible aerosol provision device includes a heating coil (see FIG 4) and the heating coil is configured to heat the aerosol generating material of the article. Although Shimizu is silent to the temperature at which the coil heats the aerosol generating material, Shimizu teaches the coil is heated to 300 degrees C (See table 1), and teaches that the heat from the coil is used to heat the aerosol generating material including by heating hot air for primary heating of the tobacco leaves [0052].
Although Shimizu is silent to the maximum temperature to which the aerosol generating material is heated, it would be obvious to a person of ordinary skill in the art to modify a coil that is configured to be heated to 300 degrees C and to primarily heat air, to configure the coil to heat the aerosol generating material to a temperature of at least 160 °C. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Shimizu also teaches the system is able to vaporize nicotine from cigarettes without burning the cigarettes and the tobacco contained therein [0002].
Therefore, it would be obvious to use the article of Kaljura with the aerosol system of Shimizu to vaporize nicotine from the cigarettes of Kaljura without burning the tobacco contained therein.
Response to Arguments
Applicant’s amendments and arguments filed 11-25-2025 regarding the double patenting rejection has been fully considered and found persuasive because the instant claims include claim limitations not required in copending application 17/437,852.
Applicant's arguments filed 11-25-2025 regarding the 35 USC 103 rejections have been fully considered but they are not persuasive.
At the end of page 9 of Applicants Arguments/Remarks Applicant Argues:
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Examiner respectfully disagrees. This is not found persuasive.
Hollow tubular elements include a hollow tube and hollow tubes include a gap that is filled with air, which a person of ordinary skill would appreciate is an air gap. Applicant further recites that they dispute that cooling would result from a pressure drop into the hollow tubular portion of Kaljura but no rationale or explanation is included as to why Applicant disputes the pressure drop (see Kaljura page 8 last three paragraphs which discuss pressure drop), therefore this argument is not found persuasive. Further, adiabatic expansion which occurs in pressure drops is well known to cause adiabatic cooling. Additionally, cooling would inherent occur due to conduction cooling between gas and the material in the device as hot gasses come into contact with cooler matter in the device.
Applicant also disputes the obvious duplication of parts assertion in a generalized statement but does not explain or provide rationale why duplication of parts would not be obvious and only asserts such, accordingly this is not found persuasive. Furthermore, Kaljura teaches a plurality of filter sections which can include ventilation zones which can be utilized to achieve a desired level of ventilation and draw resistance, which would result in predictable and selectable cooling (See page 4 paragraph 7 and page 5 paragraph 3)
Applicant asserts on page 11:
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This is not found persuasive because as set forth above, Kaljura teaches a mouthpiece which includes ventilation and a pressure difference across the mouthpiece as required by claim 1 as set forth above in the claim rejection.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “ventilation is introduced into a low-resistance mouthpiece”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) The claims as presented only require that some portion of the mouthpiece be ventilated.
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755