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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/12/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 08/12/2026.
Claims 1-2, 4-7, 9, 11-12, 14-15, 18, 21, 24-27 and 29 are pending.
Claims 1 and 14 are amended.
Claims 3, 8, 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Claims 26-27 and 29 are withdrawn as being directed to a non-elected invention.
Response to Arguments
Applicant’s arguments, see pages 6-9, filed 08/12/2026, 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, are directed to newly added claim limitations that were not previously presented. Specifically, the Applicant has introduced limitations regarding the hollow tubular element having a 15 mm length. However, the arguments are moot in view of a newly found prior art.
A modified rejection based on the amendments to the claims is provided below.
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, 4-5, 14-15, 18, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over and further in view of Uthurry (US-20220007709-A1).
In regards to claims 1-2, Uthurry directed to an aerosol-generating article for producing an inhalable aerosol upon heating (abstract) discloses the article is heated rather than combusted in a device (i.e., article for use in a non-combustible aerosol provision system) ([0002];[0024]), discloses the article comprising:
An aerosol generating material such as homogenized tobacco material ([0022]); and
A mouthpiece segment (See Figure 3 annotated by the Examiner provided below) downstream of and connected to the aerosol generating material ([0025]-[0027]), wherein the mouthpiece:
Comprising an upstream end adjacent to the aerosol generating material and a downstream end distal from the aerosol generating material (Annotated Figure 3),
Wherein the downstream end is at a downstream end of the article (Figure 3),
Wherein the mouthpiece comprises a cavity defined by a hollow tubular element 16 ([0026]-[0027]), wherein the cavity comprises a volume of the internal cavity of about 693 mm³ ([0135]). The examiner further notes that the disclosure teaches the hollow tubular segment comprises an internal diameter from about 4 mm to about 10 mm ([0063])-[0065]) and a length of anywhere from 10 m to 30 mm ([0070]). The range disclosed by the prior art overlaps the claimed range of the hollow tubular element comprising a length of at least 15 mm in length and is therefore considered prima facie obvious. Using the equation for volume of a cylinder (V = π r² h), the resulting range of the volume of the cavity would be from 125.6 to 2,355 mm³, which 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.
Wherein the hollow tubular element is formed from paper ([0135]),
The cavity being adjacent to the aerosol generating material (Figure 3),
Wherein ventilation is provided into the cavity (Figure 3; [0010];[0144]),
Wherein the mouthpiece comprises a plug of cellulose acetate tow (i.e., body of material 18) ([0133]),
An RTD of the entire article being from 30 to 90 mm H2O ([0104]-[0106]). Therefore, the range disclosed by the prior art overlaps the claimed range of the pressure drop of the mouthpiece is less than 32 mmm, and is therefore considered prima facie obvious.
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The Examiner further notes that both the cavity volume (I) and the pressure drop (II) are optimizable limitations.
(I)
Uthurry discloses “keeping the thickness of the peripheral wall of the hollow tubular element below 1.5 millimeter ensures that the overall internal volume of the hollow tubular element—which is made available for the aerosol to begin the nucleation process as soon as the aerosol components leave the rod of aerosol-generating substrate—and the cross-sectional surface area of the hollow tubular segment are effectively maximized, whilst at the same time ensuring that the hollow tubular segment has the necessary structural strength to prevent a collapse of the aerosol-generating article as well as to provide some support to the rod of aerosol-generating substrate, and that the RTD of the hollow tubular segment is minimized. Greater values of cross-sectional surface area of the cavity of the hollow tubular segment are understood to be associated with a reduced speed of the aerosol stream travelling along the aerosol-generating article, which is also expected to favor aerosol nucleation.” ([0031]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the internal volume of the cavity 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 cavity volume is critical and has unexpected results. In the present invention, one would have been motivated to optimize the cavity volume motivated by the desire to increase the speed of aerosol stream traveling along the aerosol generating article to favor aerosol nucleation ([0031]).
The Examiner further notes that it would be a mere change in shape of the cavity to have the volume claimed, since Uthurry already teaches a range of dimensions for the cavity of the hollow tubular section. 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)
Uthurry further teaches the overall RTD of the article can advantageously be fine-tuned by adjusting the length and density of the rod of aerosol-generating substrate or the length and density of the segment of filtration material of the mouthpiece, which enables 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 ([0033]).
Therefore, 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 provide satisfactory levels of resistance to draw for the consumer and provide a predetermined consisted pressure drop ([0033]) .
In regards to claim 4, Uthurry discloses the body of material comprises cellulose acetate tow (i.e., filamentary tow) ([0133]).
In regards to claim 5, Uthurry discloses the filamentary tow comprises a denier per filament of 8 ([0133]), which is within the claimed range of 7 to 12.
In regards to claim 14, Uthurry discloses the article has an outer diameter of between 5 and 12 mm ([0036]), therefore using the formula C = πd, the resulting outer circumference of the article is between 15.7 and 37.68 mm. Therefore, the range disclosed by the prior art overlaps the claimed range of the outer circumference of between 19 and 23 mm, and is therefore considered prima facie obvious.
In regards to claim 15, Uthurry discloses a ventilation level provided at a location along the hollow tubular segment from about 10 to about 25 mm from a downstream end of the mouthpiece segment ([0089]-[0090]), with a ventilation level of at least about 35 percent to less than about 60 percent ([0092]). Therefore, the range disclosed by the prior art overlaps the claimed range of the ventilation level across the mouthpiece being between 50% and 80%, and is therefore considered prima facie obvious.
In regards to claim 18, Uthurry discloses a wrapper of the hollow tubular element for combining the mouthpiece to the tobacco rod ([0073]-[0074]) comprising an air permeability of less than 20 CORESTA ([0076]), The range disclosed by the prior art overlaps the claimed range of a wrapper that has a permeability of less than 100 Coresta Units.
In regards to claim 24, Uthurry discloses the aerosol generating material comprises an aerosol forming material comprising at least about 10 percent by dry weight basis of the aerosol generating material ([0010]), which makes obvious the claimed range of the aerosol former being at least 5% weight of the aerosol generating material.
In regards to claim 25, Uthurry discloses the RTD of the entire article being from 30 to 90 mm H2O ([0104]-[0106]). Therefore, the range disclosed by the prior art overlaps the claimed range of the pressure drop of the mouthpiece is less than 32 mmm, and is therefore considered prima facie obvious.
Uthurry further teaches the overall RTD of the article can advantageously be fine-tuned by adjusting the length and density of the rod of aerosol-generating substrate or the length and density of the segment of filtration material of the mouthpiece, which enables 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 ([0033]).
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 provide satisfactory levels of resistance to draw for the consumer and provide a predetermined consisted pressure drop ([0033]) .
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over and further in view of Uthurry (US-20220007709-A1), as applied to claim 4 above, and further in view of Seo et al. (US-20210000168-A1).
In regards to claim 6, Uthurry discloses a body of material comprising filamentary tow ([0118]), but is silent in regards to a total denier of the filamentary tow of between 10,000 to 25,000.
Seo directed to a cigarette for an aerosol generating device discloses a filament cellulose acetate tow (i.e., filamentary tow), wherein 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.
Seo further discloses the total denier 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 Uthurry to have a total denier of 22,000 to 25,000, as taught by Seo, because both are directed to aerosol generating articles comprising bodies of filamentary tow in the form of cellulose acetate, Uthurry discloses the same filamentary tow material and is merely silent to a total denier value, 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 total denier of the same material in a similar article to yield predictable results.
Claims 7, 9 ,12, 21 are rejected under 35 U.S.C. 103 as being unpatentable over and further in view of Uthurry (US-20220007709-A1), as applied to claim 4 above, and further in view of Lord et al. (US-20210315264-A1, as cited in the IDS dated 09/26/2024).
In regards to claim 7, Uthurry discloses a body of material in the form of a cylinder having a longitudinal axis (Figure 3), but does not explicitly disclose the body of material further comprising a capsule, the capsule 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.
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]), discloses the article comprising a crushable flavor 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];[0122];[0347]-[0348]).
Lord further discloses the capsule comprising a shell wall surrounding (i.e., encapsulating) a liquid aerosol modifying agent ([0570]) and that the capsule allows the amount of flavor and/or visible vapor during smoking to be modified by the user ([0591]).
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. See Figure 2 provided below for reference.
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Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Uthurry by modifying the body of material to further comprise a crushable capsule, such that the capsule comprises a shell encapsulating a liquid aerosol-modifying agent and the largest cross sectional area of the capsule measured perpendicular to the longitudinal axis is less than 28% of the body of material measured perpendicularly to the longitudinal axis, as taught by Lord, because both are directed to aerosol generating articles, Lord teaches the inclusion of the capsule provides flavor and allows the amount of flavor and/or visible vapor during smoking to be modified by the user ([0591]), and this merely involves applying a known technique of including a capsule in the same body of material of a similar article to yield predictable results.
In regards to claim 9, Uthurry discloses a second hollow tubular element 16 (Figures 1-3), but does not explicitly disclose an additional hollow tubular element formed from filamentary tow at the downstream end of the mouthpiece.
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]; [0160]; [0583]).
Lord further discloses the first hollow tubular element comprises a hollow bore so that the stream of air can pass through to the user ([0732]).
Lord further discloses a plurality of hollow tubular elements adjacent one another is known in the art ([0422])
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Uthurry by applying an additional body of material in the form of a hollow tubular element, as taught by Lord, because both are directed to aerosol generating articles, Lord teaches the hollow terminal filter enables airflow to the user ([0732]), and this merely involves applying a known technique of applying an additional hollow tubular element of a similar article to yield predictable results of additional airflow and filtration.
In regards to claim 12, Modified Uthurry 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 (Lord [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 21, Uthurry discloses the aerosol generating material comprising a homogenous tobacco material which includes sheets, webs, particulate tobacco material, tobacco dust, tobacco fines, stems, etc. (i.e., reconstituted tobacco material) ([0022]). Uthurry is silent to a density of the reconstituted tobacco material and therefore does not explicitly disclose a density of less than about 700 mg per cubic centimeter.
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.
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Uthurry in view of Lord by making the reconstituted tobacco material comprise density of less than 900 milligrams per cubic centimeters, as taught by Lord, because one of ordinary skill in the art would look to a similar reference for a known density in the art of a similar aerosol-generating substrate comprising the same tobacco material, especially when the original prior art is silent to one, and this merely involves applying a known density of a similar aerosol generating material to yield predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over and further in view of Uthurry (US-20220007709-A1), as applied to claim 9 above, and further in view of Nappi et al. (US-20190045838-A1).
In regards to claim 11, Modified Uthurry discloses the same material in line with Applicant’s instant specification, cellulose acetate, as the first hollow tubular element material (Lord [0161]), but is silent regarding a density of the first hollow tubular element, and therefore 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 Uthurry 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Koltyga (WO-2014158051-A1), directed to a smoking article that is heated rather than combusted ([0004]) (i.e., an article for use in a non-combustible aerosol provision system) ([0004]-[0005]; [0023]), discloses the article comprising:
An aerosol generating medium comprising tobacco (i.e. aerosol generating material) ([0004];[0026]); and
A mouthpiece connected to the aerosol generating material ([0005];[0028]),
Wherein the mouthpiece is part of the article downstream of the aerosol generating material (Figure 1;[0006]-[0007]),
The mouthpiece comprising an upstream end adjacent to the aerosol generating material and a downstream end distal from the aerosol generating material (annotated Figure 1),
Wherein the downstream end of the mouthpiece is at a downstream end of the article (annotated Figure 1),
The cavity is adjacent the aerosol generating material (xxx),
A ventilation zone for providing cooled air into the cavity (i.e., ventilation is provided into the cavity) ([0026]),
The mouthpiece comprising a body of material 18 downstream from the cavity (Figure 1;[0038]),
Wherein the mouthpiece comprises a cavity defined by a hollow tubular element 107 having an internal volume greater than 450 mm³, see calculation below:
Koltyga discloses the cavity has a length of 7 or 10 mm ([0011]) and a diameter of 4 to 9 mm ([0016]), and since Koltyga does not disclose a hollow tubular element the internal volume of the cavity. Therefore using the equation for volume of a cylinder (V = π r² h), the resulting range of the volume of the cavity would be from 351.7 to 635.9 mm³, which 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.
Kadiric (WO-2017001613-A1), directed to a smoking article discloses a hollow tubular element comprising a cavity 14, wherein the wall of the hollow tubular element from about 0.15 to about 0.4 mm ([0014]).
Kadiric further discloses the inclusion of a hollow tubular element adjacent the tobacco rod allows the user to easily extinguish the smoking article ([0008]).
Malgat et al. (US-20160331032-A1) Malgat, directed to an aerosol-generating article with a low resistance air flow path, discloses an aerosol generating article for producing an inhalable aerosol upon heating ([0006]).
Malgat further discloses an overall resistance to draw of the entire article is close to zero and preferably less than 10 mm H2O (i.e., an overall resistance to draw of the downstream section is less than 10 mmH2O) ([0008] and [0109]). It would be obvious to one of ordinary skill in the art that if the overall resistance to draw of the article is less than 10 mm H2O, the downstream section also has an overall resistance to draw of less than 10 mm H2O.
Malgat further discloses the wrapper may be a highly perforated wrapped allowing air to be introduced into the heated aerosol-generating article through the wrapper such that the perforated wrapper may reduce the RTD of the article to almost zero ([0011]) and also teaches the hollow tube comprising the cavity may have a hole large enough to reduce the RTD to almost zero ([0012]).
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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