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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 12/16/2025.
Claims 1-2, 4-9, 11-12, 14-15, 18, 21, 24-27 and 29 are pending.
Claims 1, 9, and 12 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Claims 26-27 and 29 are withdrawn as being directed to a non-elected invention.
The 112(b) rejection to claim 1 has been withdrawn due to amendments made to the claim.
Response to Arguments
Applicant’s arguments, see pages 7-11, filed 12/16/2025, 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 not persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented. Specifically, the Applicant has introduced limitations regarding the downstream end of the mouthpiece is at a downstream end of the article and the cavity is defined by a hollow tubular element. The Examiner does not find the arguments persuasive and does not think they overcome the previously cited prior art, however the Applicant’s arguments are moot in view of newly found prior art.
On pages 10-11 the Applicant argues that the double patenting provisional rejection over applications 17/593,181, 17/438,183, and 17/438,304 are overcome due to amendments made to the claims. Specifically arguing that the present claims are patentably distinct from the claims of the cited applications because none of the claim sets on the cited applications define a mouthpiece as now defined in claim 1 of the present application, nor a cavity within the mouthpiece which is defined by a hollow tubular element, and nor where ventilation is provided into the cavity.
The Examiner finds the arguments persuasive.
The non-statutory double patenting rejections have been removed because co-pending Applications 17/438,304 and 17/438,183, do not claim a cavity defined by a hollow tubular element and co-pending Application 17/593,181 does not teach a cavity defined by a hollow tubular element and comprising a ventilation zone and a hollow tubular element.
Claim Objections
Claims 9 and 11-12 are objected to because of the following informalities:
Claim 9 should read “wherein the hollow tubular element is a first hollow tubular element formed from filamentary tow at the downstream end of the mouthpiece.” The instant specification and the drawings show the first hollow tubular element 4 to be the hollow tubular element at the downstream end and the second hollow tubular element 8 to be at the upstream end.
Claims 11-12’s “second hollow tubular element” should instead read “first hollow tubular element” to be in line with the figures and the specification.
Appropriate correction is required.
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 11-12, 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 11 recites the broad recitation a density between 0.25g/cc and 0.75g/cc, and the claim also recites or between 0.25g/cc and 0.65g/cc or between 0.35g/cc and 0.65g/cc 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.
For purposes of examination, the claim is being interpreted as a density between 0.25g/cc and 0.75g/cc.
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 12 recites the broad recitation wherein the second hollow tubular element comprises an internal diameter of greater than 3.0 mm, and the claim also recites or an internal diameter of greater than 3.5 mm 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.
For purposes of examination the claim is being interpreted as the second hollow tubular element comprises an internal diameter of greater than 3.0 mm.
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 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.
For purposes of examination the claim’s permeability is being interpreted as the wrapper has a permeability of less than 100 Coresta Units.
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 21 recites the broad recitation having a density of less than about 700 milligrams per cubic centimeter, and the claim also recites or 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.
For purposes of examination, the claim is being interpreted as the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter.
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 a hollow tubular elements 4 and 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 and [0700])
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Lord fails to explicitly disclose a cavity volume greater than 450 mm³ or 600 mm³, respectively (I) and a pressure drop across the mouthpiece being less than 40 mm H2O (II).
(I)
Lord discloses a mouthpiece comprising a cavity having a body of material therein and therefore necessarily an internal volume, but is silent in regards to a cavity volume greater than 450 mm³ or 600 mm³, respectively. However, since the cavity is large and similar in shape and design to the Figures provided in the instant invention, it would be obvious to one of ordinary skill in the art that Lord would also teach a similar volume as claimed.
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).
(II)
Lord 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 hollow tubular element is a second hollow tubular element 6 comprising at least a portion of the 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 a 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
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