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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 04/21/2026.
Claims 1-2, 4-9, 11-12, 14-15, 18, 21, 24-27 and 29 are pending.
Claims 1, 9, 11-12, 18, and 21 are amended.
Claims 3, 10, 13, 16-17 19-20, 22-23, and 28 are cancelled.
Claims 26-27 and 29 are withdrawn as being directed to a non-elected invention.
The claim objections to claims 9 and 11-12 are withdrawn due to amendments made to the claims.
The 112(b) rejection of claims 11-12, 18, and 21 are withdrawn due to amendments made to the claims.
Response to Arguments
Applicant’s arguments, see pages 7-11, filed 04/21/2026, with respect to the rejections of claims 1-2, 4-9, 11-15, 18, 21, 24-27 and 29 under 35 U.S.C. 103, have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented. Specifically, the Applicant has introduced limitations regarding the hollow tubular element made from paper. However, the arguments are moot in view of a new interpretation of the previously applied art.
A modified rejection based on the amendments to the claims is provided below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites the same limitation provided in independent claim 1, specifically the “cavity is adjacent to said aerosol generating material” and therefore is not further limiting of the claim it depends from. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2, 4, 7-9, 12, 15, 21, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024) and further in view of Uthurry2’ (US-20220015414-A1).
In regards to claims 1-2, Lord directed to a smoking substitute consumable, discloses a smoking substitute article, such as a HNB consumable (i.e., non-combustible aerosol provision system) ([0023]), the article comprising:
An aerosol forming substrate comprising at least one component for aerosolizing (i.e., aerosol-generating material) ([0023]-[0028]); and
A mouthpiece connected to the aerosol generating material (Refer to figure 2 annotated by the Examiner provided below),
Wherein the mouthpiece is a part of the article downstream of the aerosol generating material (Figure 2),
The mouthpiece comprising an upstream end adjacent to the end adjacent the aerosol generating material and a downstream end distal from the aerosol generating material (Refer to figure 2 annotated by the Examiner provided below),
Wherein the downstream end of the mouthpiece is at a downstream end of the article (Refer to figure 2 annotated by the Examiner provided below),
Wherein the mouthpiece comprises a cavity defined by hollow tubular element 6 (Figure 9, [0598], and [0601]),
Wherein ventilation is provided into the cavity via ventilation apertures 15ag and 15bg (Figure 42 and [0731]),
Wherein the mouthpiece comprises a body of material 5 located downstream from said cavity (Figure 2, Figure 42, and [0700])
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Lord further discloses an embodiment wherein the hollow tubular element 6 “may be provided between the aerosol-forming substrate and a/the filter element and/or between two filter elements” ([0287]), therefore Lord teaches an embodiment wherein the hollow tubular element 6 would be adjacent the aerosol-generating material.
Lord further discloses the hollow tubular element may comprise a cardboard/biodegradable paper tube (i.e., made from paper) ([0287] and [0354]) and the hollow tubular element may have an external diameter of between 5 and 10 mm e.g. between 6 and 9 mm or 6 and 8 mm e.g. around 7 mm. It may have an axial length of between 10 and 15 mm e.g. between 12 and 14 mm or 13 and 14 mm e.g. around 14 mm ([0356]). The resulting range of an internal volume of the cavity would be from 196.875 to 4,710 mm³. The range disclosed by the prior art overlaps the claimed range of the cavity having a volume greater than 450 mm³ and greater than 600 mm³, respectively, and is therefore considered prima facie obvious.
The Examiner further notes that additionally, it would be a mere change in shape of the cavity to have the volume claimed, since Lord already teaches a cavity with a large internal volume, and is merely silent to what that volume is. See MPEP 2144.04 (IV), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), and In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Lord further discloses a more desirable resistance to draw is created by the hollow tubular elements and ventilation holes which provides improved homogeneous mixing of the smoke/aerosol constituents. The number and size of the ventilation holes can be selected to provide a desired RTD for the article/consumable ([0503]).
Lord fails to teach a pressure drop across the mouthpiece is less than about 40 mmH2O. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the pressure drop across the mouthpiece since 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). The burden is upon the Applicant to demonstrate that the claimed pressure drop is critical and has unexpected results. In the present invention, one would have been motivated to optimize the pressure drop across the mouthpiece motivated by the desire to improve homogenous mixing of the smoke and aerosol constituents which can be performed by selecting the number and size of ventilation holes provided in the article to create a desired pressure drop ([0503]).
Alternatively, Uthurry2’ directed to an aerosol-generating article with a ventilated hollow segment (i.e., cavity), discloses the aerosol-generating article comprising a rod of an aerosol-generating substrate, a mouthpiece and a plug of filtration material, wherein the mouthpiece is arranged downstream and the mouthpiece further defines a cavity extending all the way through the mouthpiece segment ([0010]).
Uthurry2’ further discloses a ventilation zone 26 at a location along the hollow tubular segment 16 (i.e., cavity) (Figure 1, [0010] and [0141]-[0143]) which creates a satisfactory cooling of the stream of aerosol generated upon heating the article ([0030]).
Uthurry2’ further discloses the hollow tubular segment, which is a part of the mouthpiece, has a resistance to draw (i.e., pressure drop) of approximately 0 to 20 mm H2O ([0108]). The range disclosed by the prior art overlaps the claimed range of a pressure drop across the mouthpiece being less than 40 mm H20 and is therefore considered prima facie obvious.
Uthurry2’ further discloses the overall RTD depends essentially on the RTD of the rod and on the RTD of the mouthpiece ([0108]).
Uthurry2’ further discloses the RTD of the article can be fine-tuned to enable the manufacture of aerosol-generating substrates having a predetermined RTD consistently and with great precision, such that satisfactory levels of RTD can be provided for the consumer even in the presence of ventilation ([0035]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Lord by making the pressure drop across the mouthpiece less than about 40 mm H2O, as taught by Uthurry2’, because one of ordinary skill in the art would look to a similar reference for a pressure drop known in the art of a similar aerosol-generating device, especially when the original prior art is silent to one, Uthurry2’ teaches a predetermined RTD provides the consumer with satisfactory levels of RTD ([0035]), and this merely involves fine tuning a mouthpiece portion to a known pressure drop of a similar mouthpiece to yield predictable results.
In regards to claim 4, Lord discloses the body of material comprising cellulose acetate tow ([0118]), which is in line with the instant specification’s definition of filamentary tow.
In regards to claim 7, Lord discloses the body of material in the form of a cylinder ([0059]) having a longitudinal axis and 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 (Figure 2, [0062], and [0122]).
Lord further discloses the capsule comprising a shell wall surrounding (i.e., encapsulating) a liquid aerosol modifying agent ([0570]).
Lord does not explicitly disclose the largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 28% of the cross section are of the body of material measured perpendicularly to the longitudinal axis.
However, in Lord’s figures, the capsule clearly takes up less than 28% of the body of the material (Figure 2), thus it would be obvious for one with ordinary skill in the art that the cross sectional area of the capsule is less than 28% of the cross sectional area of the body and is therefore considered prima facie obvious.
In regards to claim 8, Lord discloses the cavity is adjacent to the aerosol generating material (Figure 2).
In regards to claim 9, Lord discloses a terminal filter element 5 that may have a hollow bore (i.e., first hollow tubular element) at the downstream end of the mouthpiece and the carboard tube 6 is a hollow tubular element (i.e., a second hollow tubular element) defining a cavity ([0120]-[0121] and [0583]).
In regards to claim 12, Lord discloses each hollow bore filter (i.e., hollow tubular elements) may have a bore diameter of between 1 and 5 mm, e.g. between 2 and 4 mm or between 2 and 3 mm ([0421]). The range disclosed by the prior art overlaps the claimed range of the first hollow tubular element comprising an internal diameter of greater than 3 or 3.5 mm and is therefore considered prima facie obvious.
In regards to claim 15, Lord discloses a ventilation zone but does not explicitly disclose a ventilation level between 50 and 80%. However, Uthurry2’ discloses a ventilation level from about 30 percent to about 60 percent ([0083]), and therefore Modified Lord teaches the aerosol-generating article has a ventilation level from about 30 percent to about 60 percent (Uthurry2’
[0083]).
The range disclosed by the prior art overlaps the claimed range of the mouthpiece comprises a ventilation level of 50 to 80% of aerosol drawn through the article and is therefore considered prima facie obvious.
Uthurry2’ further discloses the inventors have found that the temperature drop caused by the admission of cooler, external air into the hollow tubular segment via the ventilation zone may have an advantageous effect on the nucleation and growth of aerosol particles ([0084]) and that it is advantageously possible to adjust the ventilation level of the aerosol-generating article by adjusting the ventilation perforations in size or number of perforations ([0092]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to further modify Modified Lord by making the ventilation level 50 to 80%, as taught by Uthurry2’, because one of ordinary skill in the art would look to a similar reference for a ventilation level known in the art of a similar aerosol-generating device, especially when the original prior art is silent to one, Uthurry2’ teaches the ventilation level can be varied ([0092]) and the ventilation level has an advantageous effect on the nucleation and growth of aerosol particles ([0084]), and this merely involves applying a known ventilation level of a similar aerosol generating article to yield predictable results.
In regards to claim 21, Lord discloses the aerosol generating material comprises reconstituted tobacco material and has a density of less than 900 milligrams per cubic centimeter ([0402] and [0468]). The range disclosed by the prior art overlaps the claimed range of the aerosol generating material having a density less than 700 or 600 milligrams per cubic centimeters and is therefore considered prima facie obvious.
In regards to claim 24, Lord discloses the aerosol-forming substrate comprises 20 wt. % of a humectant such as propylene glycol (PG) or vegetable glycerine (VG) (i.e., aerosol former) ([0695]). The range disclosed by the prior art overlaps the claimed range of the aerosol former comprising at least 5% by weight of the aerosol generating and is therefore considered prima facie obvious.
In regards to claim 25, Modified Lord discloses the pressure drop across the mouthpiece is approximately 0 to 20 mmH2O ([0108]). The range disclosed by the prior art overlaps the claimed range of the pressure drop across the mouthpiece is less than 32 mmH2O and is therefore considered prima facie obvious.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024) in view of Uthurry2’ (US-20220015414-A1), as applied to claim 1 above, and further in view of Seo et al. (US-20210000168-A1).
In regards to claim 5, Lord discloses a body of material comprising filamentary tow ([0118]), but is silent in regards to a denier per filament of between 7 and 12.
Seo directed to a cigarette for an aerosol generating device discloses a filament cellulose acetate tow (i.e., filamentary tow), with a mono denier in the range of 9 to 13 ([0016] and [0079]). The range disclosed by the prior art overlaps the claimed range of a denier per filament of between 7 and 12, and is therefore considered prima facie obvious.
Seo further discloses the denier of each filament is a value that can be changed within a specific range, thereby increasing an atomization amount of the cigarette for an aerosol generating device ([0088]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Lord by having a denier per filament of between 7 and 12, as taught by Seo, because all are directed to aerosol generating devices, Lord teaches the same filamentary tow material, cellulose acetate, Seo teaches the denier range increases the atomizing amount of the cigarette for an aerosol generating device ([0088]), and this involves applying a known technique of using a known denier per filament of the same material in a similar article to yield predictable results.
In regards to claim 6, Modified Lord teaches the filamentary tow comprising a total denier between 22,000 to 25,000 ([0006]; [0012]; [0014]). The range disclosed by the prior art overlaps the claimed range of a total denier of between 10,000 and 25,000, and is therefore considered prima facie obvious.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024) in view of Uthurry2’ (US-20220015414-A1), as applied to claim 1 above, and further in view of Nappi et al. (US-20190045838-A1).
In regards to claim 11, Lord discloses the same material in line with Applicant’s instant specification, cellulose acetate, as the first hollow tubular element material ([0161]), but Lord does not explicitly disclose a density of the first hollow tubular element between 0.25 and 0.75g/cc.
Nappi directed a smoking article with a filter and hollow tubular segment, discloses the article comprising the hollow tubular element comprising fibrous filtration material ([0019]).
Nappi further discloses preferably, the hollow tube segment is formed from cellulose acetate tow ([0033]).
Nappi further discloses the hollow tubular segment comprises fibers of between approximately 3.5 and 9 denier per filament and a total denier between 25,000 and 50,000 ([0034]-[0035]).
Nappi further discloses the hollow tubular element comprises a density of at least about 0.7 grams per cubic centimeter. The range disclosed by the prior art overlaps the claimed range of a density between 0.25 and 0.75 grams per cubic centimeter, and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Modified Lord by making the density of the first hollow tubular element 0.25 to 0.75 grams per cubic centimeter, as taught by Nappi, because one of ordinary skill in the art would look to a similar reference for a known density in the art of a similar hollow tubular element comprising the same material, cellulose acetate, especially when the original prior art is silent to one, and this merely involves applying a known density of a similar hollow tubular element to yield predictable results.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024) in view of Uthurry2’ (US-20220015414-A1), as applied to claim 1 above, and further in view of Mucalo et al. (US-20150296878-A1).
In regards to claim 14, Modified Lord is silent to an outer circumference of the article.
Mucalo, directed to a filter for a smoking article, discloses different circumference sizes for a smoking article are standard for smoking products, where the circumference of the article is variable depending on the size of the cigarette size used ([0031]).
Mucalo further discloses a smoking article has a circumference from 14 to 25 mm ([0033]). The range disclosed by the prior art overlaps the claimed range of the article having an outer circumference between 19 and 23 mm 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 to modify Modified Lord by making the outer circumference of the article between 19 and 23 mm, as taught by Mucalo, because one of ordinary skill in the art would look to a similar reference for an outer circumference of a similar article, especially when the original reference is silent to one, both are directed to smoking articles comprising filters and capsules, Mucalo teaches the circumference of the article is known in the art and variable ([0031]), and this merely involves applying a known outer circumference of a similar article to yield predictable results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024) in view of Uthurry2’ (US-20220015414-A1), as applied to claim 1 above, and further in view of Uthurry (US-11019843-B2).
In regards to claim 18, Lord discloses a tipping paper (i.e., wrapper) circumscribes the aerosol generating material ([0008]), but is silent to the permeability of the wrapper and does not explicitly disclose the wrapper having a permeability of less than 100 Coresta Units.
Uthurry directed to an aerosol-generating article, discloses a non-combustible aerosol provision system ([0067]), the article comprising:
An aerosol generating substrate comprising a tobacco material that is heated (i.e., aerosol generating material) ([0065]-[0067]).
The mouthpiece secured to the aerosol-generating substrate ([0065]), the mouthpiece 14 comprising the aerosol generating material 10 upstream from the mouthpiece (i.e., upstream end) (refer to annotated figure 1).
Uthurry further discloses the body of material 20, comprising filamentary tow ([0046] and [0072]) downstream from the mouthpiece (figure 1)
Wherein the downstream end of the mouthpiece is at a downstream end of the article (figure 1), where the body of material contains an open cavity at the mouth end (i.e., hollow) ([0045]) (figure 1).
Uthurry discloses a body of material 20 and a cavity 28 within the mouthpiece where the body of material is downstream from the cavity (figure 1 and [0070]-[0073]). See Figure 1 provided below.
The mouthpiece 14 is the part of the article immediately downstream the aerosol generating material 12 (Figure 1 and [0071]).
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Uthurry further discloses a tipping wrapper circumscribing at least a portion of each of each of the mouthpiece and the aerosol-generating material to secure the mouthpiece to the aerosol-generating material ([0066]).
Uthurry further discloses a wrapper with a porosity of less than about 20 Coresta Units ([0056]). The claimed permeability of less than 100, less than 80, less than 60, or less than 20 CORESTA units is overlapped by the range disclosed by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious
to modify Modified Lord by making the wrapper of Lord comprise a permeability of less than 100, as taught by Uthurry, because one of ordinary skill in the art would look to a similar reference for a permeability of similar wrapping materials, especially when the original reference is silent to one, and this merely involves applying a known permeability of a similar wrapper to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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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.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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