DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
Claims 1, 5-9, 11-16, 18-22, and 26-30 are pending. Claim 28 has been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 6/29/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 6/29/2026 have been fully considered but they are not persuasive.
Applicant argues that “No combination of Kizer with Inagaki, Parker and/or the other cited art fairly teaches or suggestions the combination of features of each of claims 1 and 28”. This argument is not persuasive as Kizer in view of Inagaki and Parker discloses each of claims 1 and 28. Kizer discloses an aerosol generating product and a smoke cooling element with aggregated particles comprising active particles bound together with UHMWPE (“binder particles” that are “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148) and an additional adhesive (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165) and Inagaki discloses adhesives may be PEG (“adhesive” including “polyethylene glycol”, ¶ 0063). Kizer further discloses a hollow element (“other filter sections may independently have features like . . . a void chamber”, ¶ 0117), and Parker, in the same field of endeavor, forming a hollow element from a hollow acetate fiber tube (“support element 30” which is a “hollow cellulose acetate tube”, Fig. 1, ¶ 0047), and a smoke cooling element (“aerosol-cooling element 40”, Fig. 1, ¶ 0044), wherein the hollow acetate fiber tube is located downstream of the aerosol atomizing element so as to mix and cool aerosols emerging from the aerosol atomizing element, and the smoke cooling element is located downstream of the hollow acetate fiber tube (Fig. 1, ¶ 0045, 0047-0048). Parker also discloses a benefit of including a hollow acetate fiber tube located between the aerosol atomizing element and the smoke cooling element in that it locates the aerosol atomizing element such that it can be heated while preventing the aerosol atomizing element from being forced towards the smoke cooling element, acting as a spacer (¶ 0047). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aerosol generating product taught by Kizer to include the hollow acetate fiber tube taught by Parker in the location taught by Parker, in order to achieve this benefit.
Applicant further argues that “There is no cooling effect described by Inagaki in relation to its particles.” This argument is not persuasive as one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Kizer, in view of Inagaki, does not explicitly disclose that the porous masses have a cooling effect, the references disclose that the porous masses are a porous structure of aggregated particles including basic particles that include active particles that are activated carbon with an outer film layer that comprises polyethylene glycol and inactive particles that are inorganic particles that are glass beads, ultra-high molecular weight polyethylene (UHMWPE) binder, and binder particles that are polyethylene compounds, with the particles physically bonded at a plurality of contact points, wrapped in a wrapping material, and having the same porosity, size, and shape as the claimed particles (see Kizer ¶ 0025, 0058, 0145, 0147-0148, 0152-0153, 0156, 0158-0159, 0165). Therefore, given that the porous masses taught by Kizer, in view of Inagaki, are the same as the claimed smoke cooling element, the cooling property is expected inherently to be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Applicant further argues that “as noted in the Rule 132 Declaration, Kizer and Inagaki are in different fields”. The declaration under 37 CFR 1.132 filed 6/29/2026 is insufficient to overcome the rejection of claims 1 and 28 based upon the 35 U.S.C. 103 rejection over Kizer in view of Inagaki and Parker as set forth in the last Office action because Inagaki is directed to “a smoking article filter and a method of manufacturing the same” (¶ 0002 of Inagaki under “Field of the Invention Field”) and Kizer is directed to “Apparatuses, systems, and associated methods for forming porous masses for smoke filters” (Title of Kizer). This is therefore evidence that both references are directed to field of smoking article filters and the manufacture thereof. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicant further argues that the “The Declarant of the Rule 132 Declaration notes that a person having ordinary skill in the art would not have sought to combine Kizer with Inagaki due to the significant difference between these two types of cigarettes.” This argument is not persuasive as the declaration did not categorize any alleged differences between Kizer and Inagaki as “significant”. Further, Inagaki is directed to “a smoking article filter and a method of manufacturing the same” (¶ 0002 of Inagaki under “Field of the Invention Field”), and Kizer is directed to “Apparatuses, systems, and associated methods for forming porous masses for smoke filters” (Title of Kizer). As such, there is substantial similarity between the two references to motivate a person having ordinary skill in the art to combine their teachings.
Applicant further argues that “there is no combination of Kizer with Inagaki that would fairly result in” the claimed subject matter because “neither Kizer nor Inagaki individually teaches actives particles coated with a material such as PEG (so as to form an outer coated PEG layer over the active particles), and further where the (PEG) coated active particles are then also bound together with UHMWPE.” This argument is not persuasive as neither Kizer nor Inagaki are relied upon for individually teaching the entirety of these limitations. Instead, Kizer discloses active particles bound together with UHMWPE, and Inagaki discloses coating active particles with PEG. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues, and Declarant similarly states, that the claimed structure results in “a better or more enhanced cooling effect” and that “Providing this structure (active particles coating with a film layer of PEG, and then bound together with UHMWPE to form the porous structure) was not realized by Kizer or Inagaki for achieving a cooling effect.” This argument is not persuasive as “[t]he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP § 2144(IV)).
Applicant further argues that the claimed structure “addresses the problem associated with the cooling element configuration of the Inagaki cigarette, an issue that was neither described nor contemplated by Kizer or Inagaki”. This argument is not persuasive as “[t]he reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant” (MPEP § 2144(IV)).
Applicant further argues that a “direct replacement [of UHMWPE] would simply result in using PEG as the binder for the particles instead of using UHMWPE”. This argument is not persuasive as the rejection did not replace UHMWPE with PEG.
Applicant further asks “why would one have used both UHMWPE and PEG as binders?” This argument is not persuasive as the motivation for using both UHMWPE and PEG was that Kizer discloses using UHMWPE (“binder particles” that are “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148) and an additional adhesive (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165), and Inagaki discloses adhesives may be PEG (“adhesive” including “polyethylene glycol”, ¶ 0063). Inagaki further teaches benefits of coating the active particles with an outer film layer of polyethylene glycol in that the outer film layer helps to keep particles from falling out of the structure (¶ 0064). Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
Regarding the remaining points within the declaration under 37 CFR 1.132 filed 6/29/2026, the Declarant states that the combination of Kizer and Inagaki is the result of “improper hindsight and reliance upon the invention as described and presently claimed in the Application”. In response to Declarant’s allegation that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Kizer discloses using UHMWPE (“binder particles” that are “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148) and an additional adhesive (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165), and Inagaki discloses adhesives may be PEG (“adhesive” including “polyethylene glycol”, ¶ 0063). Inagaki further teaches benefits of coating the active particles with an outer film layer of polyethylene glycol in that the outer film layer helps to keep particles from falling out of the structure (¶ 0064). Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07). Therefore, Kizer and Inagaki provide motivation for the combination.
Declarant further states that “Neither Kizer nor Inagaki, individually or in any combination with each other, teaches or suggests aggregated particles in the manner as claimed.” This conclusory statement is not persuasive as Kizer in view of Inagaki and Parker discloses claims 1 and 28 as discussed in the rejections below. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6-9, 11-16, 18-22, and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kizer et al. (US 2014/0070465 A1) in view of Inagaki et al. (US 2020/0107574 A1) and Parker et al. (US 2018/0310624 A1).
Regarding claim 1, Kizer discloses an aerosol generating product (“smoking device”, ¶ 0027, that includes “filter rods comprising porous masses . . . combined with tobacco columns to form smoking devices”, ¶ 0133), comprising an aerosol atomizing element (“smokeable substance . . . e.g., a tobacco column”, ¶ 0137) and a smoke cooling element (“porous masses”, ¶ 0133), wherein the smoke cooling element comprises a structure that includes gaps (pores of the “porous masses”) for smoke to pass through at least one continuous smoke passageway of the structure (¶ 0033), the structure comprising:
aggregated particles (“porous masses may comprise active particles, binder particles, and additives”, ¶ 0158) comprising basic particles (“active particles” combined with “additives”, ¶ 0158) bound together with ultra-high molecular weight polyethylene (UHMWPE) (“binder particles” that are “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148), wherein the basic particles comprise active particles (“active particles” that are “activated carbon”, ¶ 0145) that are coated (“applying the additives” by “coating”, ¶ 0113) with an outer film layer of a material (“additives” that are “adhesives”, ¶ 0165); and
a wrapping material (“wrapper”, ¶ 0058) that wraps around the aggregated particles (¶ 0058).
Kizer discloses that the outer film layer comprises an adhesive (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165); however, Kizer does not explicitly disclose the composition of the adhesive to determine if it comprises polyethylene glycol.
Inagaki, in the same field of endeavor, teaches an aerosol generating product (“smoking article”, ¶ 0106) comprising basic particles (“plurality of particles 3”, Fig. 1, ¶ 0034) that comprise active particles (“activated carbon particles with low degree of activation”, ¶ 0073) that are coated with an outer film layer (“adhesive”, ¶ 0063, “applied to . . . the particle surface”, ¶ 0064) of an adhesive comprising polyethylene glycol (“adhesive” including “polyethylene glycol”, ¶ 0063). Inagaki further teaches benefits of coating the active particles with an outer film layer of polyethylene glycol in that the outer film layer helps to keep particles from falling out of the structure (¶ 0064). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have coated the active particles taught by Kizer with a polyethylene glycol outer film layer taught by Inagaki in order to achieve these benefits. Further, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use polyethylene glycol for the outer film layer adhesive, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
While Kizer, in view of Inagaki, does not disclose that the porous masses have a cooling effect, the references disclose that the porous masses are a porous structure of aggregated particles including basic particles that include active particles that are activated carbon with an outer film layer that comprises polyethylene glycol and inactive particles that are inorganic particles that are glass beads, ultra-high molecular weight polyethylene (UHMWPE) binder, and binder particles that are polyethylene compounds, with the particles physically bonded at a plurality of contact points, wrapped in a wrapping material, and having the same porosity, size, and shape as the claimed particles (see Kizer ¶ 0025, 0058, 0145, 0147-0148, 0152-0153, 0156, 0158-0159, 0165, see also rejections of claims 7-8, 13, 15, and 18-22 below). Therefore, given that the porous masses taught by Kizer, in view of Inagaki, are the same as the claimed smoke cooling element, the cooling property is expected inherently to be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Kizer discloses the product further comprising a hollow element (“other filter sections may independently have features like . . . a void chamber”, ¶ 0117). However, Kizer does not explicitly disclose that the hollow element is a hollow acetate fiber tube located downstream of the aerosol atomizing element and that the smoke cooling element is located downstream of the hollow acetate fiber tube.
Parker, in the same field of endeavor, discloses an aerosol generating product (“aerosol-generating article 10”, Fig. 1, ¶ 0044), comprising an aerosol atomizing element (“aerosol-forming substrate 20”, Fig. 1, ¶ 0044), a hollow acetate fiber tube (“support element 30” which is a “hollow cellulose acetate tube”, Fig. 1, ¶ 0047), and a smoke cooling element (“aerosol-cooling element 40”, Fig. 1, ¶ 0044), wherein the hollow acetate fiber tube is located downstream of the aerosol atomizing element so as to mix and cool aerosols emerging from the aerosol atomizing element, and the smoke cooling element is located downstream of the hollow acetate fiber tube (Fig. 1, ¶ 0045, 0047-0048). Parker also discloses a benefit of including a hollow acetate fiber tube located between the aerosol atomizing element and the smoke cooling element in that it locates the aerosol atomizing element such that it can be heated while preventing the aerosol atomizing element from being forced towards the smoke cooling element, acting as a spacer (¶ 0047). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aerosol generating product taught by Kizer to include the hollow acetate fiber tube taught by Parker in the location taught by Parker, in order to achieve this benefit.
Regarding claim 6, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses wherein the smoke cooling element is in the form of a rod (“porous mass rod”, ¶ 0124).
Regarding claim 7, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 6, as stated above. Kizer further discloses wherein the porosity of the smoke cooling element is 40%-90% (“porous masses may have a void volume in the range of about 40% to about 90%”, ¶ 0159).
Regarding claim 8, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses wherein:
the aggregated particles further comprise binder particles (“binder particles”, ¶ 0158, that are “polyethylenes . . . any copolymer thereof, any derivative thereof, any combination thereof and the like”, ¶ 0156, including “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148) bound with the basic particles (¶ 0025), and the aggregated particles are physically bonded at a plurality of contact points via the UHMWPE (¶ 0025), and the wrapping material is wrapped outside to form a rod (¶ 0122) with the structure being porous (porous from inclusion of “porous masses”) between the contact points of the aggregated particles.
Regarding claim 9, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. While Kizer, in view of Inagaki, does not disclose that the aggregated particles of the organic porous masses reduce a temperature of the smoke, the references disclose that the porous masses are a porous structure of aggregated particles including basic particles that include active particles that are activated carbon with an outer film layer comprising polyethylene glycol and inactive particles that are inorganic particles that are glass beads, ultra-high molecular weight polyethylene (UHMWPE) binder, and binder particles that are polyethylene compounds, with the particles physically bonded at a plurality of contact points, wrapped in a wrapping material, and having the same porosity, size, and shape as the claimed particles (see Kizer ¶ 0025, 0058, 0145, 0147-0148, 0152-0153, 0156, 0158-0159, 0165, see also rejections of claims 1 and 7-8 above and rejections of claims 13, 15, and 18-22 below). Therefore, given that the porous masses taught by Kizer, in view of Inagaki, are the same as the claimed smoke cooling element, the cooling property is expected inherently to be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 11, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer does not explicitly disclose the thickness and mass of the outer film layer to determine if the thickness of the outer film layer is 0.001-0.2mm and accounts for 0.001-50% of the combined mass of each active particle and outer film layer for each active particle. However, Kizer teaches that the outer film layer is formed from an adhesive (¶ 0113, 0165). The efficacy of the outer film layer for this result depends on the thickness and mass of the outer film layer. If the outer film layer is too thin and has too little mass, the outer film layer will not provide sufficient adhesion. If the outer film layer is too thick and has too much mass, then the particles will no longer fit within the structure. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the thickness and mass of the outer film layer such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 12, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses wherein the basic particles further comprise inactive particles (“glass beads”, ¶ 0180). Kizer does not explicitly disclose wherein the inactive particles adsorb less than 3.0 mg/cm3 of nicotine from the smoke. However, Kizer teaches that the smokeable substance in the aerosol generating product includes a tobacco column (“smokeable substance . . . e.g., a tobacco column”, ¶ 0137). One of ordinary skill in the art would have understood that smoking tobacco delivers nicotine to the user. The efficacy of the aerosol generating product for this result depends on the nicotine adsorption of the inactive particles. If the inactive particles adsorb too much nicotine from the smoke, then the aerosol generating product will no longer be an effective method for nicotine delivery to the user. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the nicotine adsorption of the inactive particles such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 13, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 8, as stated above. Kizer discloses wherein the basic particles further comprise inactive particles that include inorganic particles that include glass bead (“additives” that are “glass beads”, ¶ 0165).
Regarding claim 14, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer does not explicitly disclose wherein the active particles are each formed of a material that adsorbs 3.0 mg/cm3 or more of nicotine from the smoke. However, Kizer discloses wherein the active particles are each formed of a material that has high activity for adsorption (“activated carbon may be . . . high activity”, ¶ 0197) and that the active particles are each formed of a material that removes or reduces nicotine in the smoke (¶ 0144). The efficacy of the active particles for these results depends on the nicotine adsorption of the active particles. If the active particles adsorb too little nicotine, then the active particles will not remove sufficient nicotine from the smoke. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the nicotine adsorption of the inactive particles such that it falls within the claimed range. "[W]here 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, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 15, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses that the active particles include activated carbon (“active particles” that are “activated carbon”, ¶ 0145); and the basic particles further comprise inactive particles that include glass bead (“additives” that are “glass beads”, ¶ 0165).
Regarding claim 16, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer also discloses wherein the outer film layer further comprises methylcellulose (“applying the additives” by “coating”, ¶ 0113; “additives” that are “tackifiers”, ¶ 0165; “tackifiers” that are “methylcellulose”, ¶ 0176).
Regarding claim 18, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses wherein the basic particle shapes include sphere (“spherical”, ¶ 0025).
Regarding claim 19, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer further discloses wherein the basic particle has an average diameter from a lower limit of 50 µm in at least one dimension (“Active particles may range from a lower size limit in at least one dimension of about . . . 50 microns”, ¶ 0147).
Regarding claim 20, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 8, as stated above. Kizer further discloses wherein the binder particles are polyethylene compounds (“polyethylenes . . . any copolymer thereof, any derivative thereof, any combination thereof and the like”, ¶ 0156).
Regarding claim 21, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 8, as stated above. Kizer further discloses wherein the shapes of the binder particles include spherical (“spherical”, ¶ 0152).
Regarding claim 22, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 8, as stated above. Kizer further discloses wherein the binder particles have an average diameter from a lower limit of 5 µm in at least one dimension (“binder particles may range from a lower size limit in at least one dimension of about . . . 5 microns”, ¶ 0153).
Regarding claim 27, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claim 1, as stated above. Kizer also discloses a Heat not Burn cigarette (“cigarette” in which the “smokeable substance” is “heated”, ¶ 0136-0137) including the aerosol generating product of claim 1.
Regarding claim 28, Kizer discloses an aerosol generating product (“smoking device”, ¶ 0027, that includes “filter rods comprising porous masses . . . combined with tobacco columns to form smoking devices”, ¶ 0133), comprising an aerosol atomizing element (“smokeable substance . . . e.g., a tobacco column”, ¶ 0137) and a smoke cooling element (“porous masses”, ¶ 0133), wherein the smoke cooling element comprises a structure that includes gaps (pores of the “porous masses”) for smoke to pass through at least one continuous smoke passageway of the structure (¶ 0033), the structure comprising:
aggregated particles (“porous masses may comprise active particles, binder particles, and additives”, ¶ 0158) comprising basic particles (“active particles” combined with “additives”, ¶ 0158) bound together with ultra-high molecular weight polyethylene (UHMWPE) (“binder particles” that are “ultra high molecular weight polyethylene, UHMWPE”, ¶ 0148), wherein the basic particles comprise active particles (“active particles” that are “activated carbon”, ¶ 0145), each active particle is coated (“applying the additives” by “coating”, ¶ 0113) with an outer film layer (“additives” that are “adhesives”, ¶ 0165) such that each film coated active particle is bound to one or more other film coated active particles with UHMWPE (¶ 0025, 0148); and
a wrapping material (“wrapper”, ¶ 0058) that wraps around the aggregated particles (¶ 0058).
Kizer discloses that the outer film layer comprises an adhesive (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165); however, Kizer does not explicitly disclose the composition of the adhesive to determine if it comprises polyethylene glycol.
Inagaki, in the same field of endeavor, teaches an aerosol generating product (“smoking article”, ¶ 0106) comprising basic particles (“plurality of particles 3”, Fig. 1, ¶ 0034) that comprise active particles (“activated carbon particles with low degree of activation”, ¶ 0073) that are coated with an outer film layer (“adhesive”, ¶ 0063, “applied to . . . the particle surface”, ¶ 0064) of an adhesive comprising polyethylene glycol (“adhesive” including “polyethylene glycol”, ¶ 0063). Inagaki further teaches benefits of coating the active particles with an outer film layer of polyethylene glycol in that the outer film layer helps to keep particles from falling out of the structure (¶ 0064). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have coated the active particles taught by Kizer with a polyethylene glycol outer film layer taught by Inagaki in order to achieve these benefits. Further, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use polyethylene glycol for the outer film layer adhesive, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
While Kizer, in view of Inagaki, does not disclose that the porous masses have a cooling effect, the references disclose that the porous masses are a porous structure of aggregated particles including basic particles that include active particles that are activated carbon with an outer film layer comprising polyethylene glycol and ultra-high molecular weight polyethylene (UHMWPE) binder, with the particles physically bonded at a plurality of contact points, and wrapped in a wrapping material, as the claimed particles are (see Kizer ¶ 0025, 0058, 0145, 0148, 0158, 0165). Therefore, given that the porous masses taught by Kizer, in view of Inagaki, are the same as the claimed smoke cooling element, the cooling property is expected inherently to be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Kizer discloses the product further comprising a hollow element (“other filter sections may independently have features like . . . a void chamber”, ¶ 0117). However, Kizer does not explicitly disclose that the hollow element is a hollow acetate fiber tube located downstream of the aerosol atomizing element and that the smoke cooling element is located downstream of the hollow acetate fiber tube.
Parker, in the same field of endeavor, discloses an aerosol generating product (“aerosol-generating article 10”, Fig. 1, ¶ 0044), comprising an aerosol atomizing element (“aerosol-forming substrate 20”, Fig. 1, ¶ 0044), a hollow acetate fiber tube (“support element 30” which is a “hollow cellulose acetate tube”, Fig. 1, ¶ 0047), and a smoke cooling element (“aerosol-cooling element 40”, Fig. 1, ¶ 0044), wherein the hollow acetate fiber tube is located downstream of the aerosol atomizing element so as to mix and cool aerosols emerging from the aerosol atomizing element, and the smoke cooling element is located downstream of the hollow acetate fiber tube (Fig. 1, ¶ 0045, 0047-0048). Parker also discloses a benefit of including a hollow acetate fiber tube located between the aerosol atomizing element and the smoke cooling element in that it locates the aerosol atomizing element such that it can be heated while preventing the aerosol atomizing element from being forced towards the smoke cooling element, acting as a spacer (¶ 0047). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aerosol generating product taught by Kizer to include the hollow acetate fiber tube taught by Parker in the location taught by Parker, in order to achieve this benefit.
Regarding claims 29 and 30, Kizer, in view of Inagaki and Parker, discloses the aerosol generating product of claims 1 and 28, respectively, as stated above. Kizer further discloses that the outer film layer comprises adhesives, i.e. can be one or more adhesives (“applying the additives” by “coating”, ¶ 0113; “additives” that are “adhesives”, ¶ 0165); however, Kizer does not explicitly disclose the composition of the adhesives to determine if the outer film layer comprises polyethylene glycol and hydroxypropyl methylcellulose adhesives. In addition to disclosing polyethylene glycol as a suitable adhesive for inclusion in an outer film layer as discussed in the rejections of claims 1 and 28 above, Inagaki further discloses hydroxypropyl methylcellulose adhesive as a suitable adhesive for inclusion in an outer film layer (“adhesive” including “hydroxypropyl methylcellulose”, ¶ 0063). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used one or more materials, including a combination of polyethylene glycol and hydroxypropyl methylcellulose, as suitable to provide adhesives in the outer film layer.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kizer et al. (US 2014/0070465 A1) in view of Inagaki et al. (US 2020/0107574 A1) and Parker et al. (US 2018/0310624 A1) as applied to claim 1 above, and further in view of Robertson et al. (US 2014/0034072 A1).
Regarding claim 5, Kizer, in view of Inagaki, discloses the aerosol generating product of claim 1, as stated above. Kizer does not explicitly disclose wherein the gaps define a three-dimensional network and a nonlinear network.
Robertson, in the same field of endeavor, teaches an aerosol generating product (“smoking device 30” with “filter 32”, where “at least one of sections 36, 37, 38 is a porous mass”, and “tobacco column 12”, Fig. 3, ¶ 0079), comprising an aerosol atomizing element (“tobacco column 12”, Fig. 3, ¶ 0079) and a smoke cooling element (“porous mass” included in “at least one of sections 36, 37, 38”, Fig. 3, ¶ 0079), wherein the smoke cooling element comprises a structure that includes gaps (pores of the “porous masses”, see Fig. 5) for smoke to pass through at least one continuous smoke passageway of the structure (“smoke can travel through the porous mass”, ¶ 0023), the structure comprising:
aggregated particles (“porous masses may comprise active particles, binder particles, and additives”, ¶ 0053) comprising basic particles (“active particles” combined with “additives”, ¶ 0053) bound together with ultra-high molecular weight polyethylene (UHMWPE) (“binder particles” that are “ultrahigh molecular weight polyethylene (UHMWPE)”, ¶ 0037), wherein the basic particles comprise active particles (“active particles” that are “activated carbon”, ¶ 0029) with an outer film layer of a material (“additives” that are “adhesives”, ¶ 0054); and
a wrapping material (“paper wrapping”, ¶ 0092) that wraps around the aggregated particles (¶ 0092).
Robertson also teaches wherein the gaps define a three-dimensional network and a nonlinear network (see Fig. 5, ¶ 0027). Robertson teaches a benefit of this construction in that it exhibits a minimal encapsulated pressure drop while maximizing the active particles’ surface area, enabling incorporation in smoking devices because of the minimal impact on the draw characteristics of the filter (¶ 0027). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed the smoke cooling element taught by Kizer such that the gaps define a three-dimensional network and a nonlinear network, as taught by Robertson, in order to achieve this benefit.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Kizer et al. (US 2014/0070465 A1) in view of Inagaki et al. (US 2020/0107574 A1) and Parker et al. (US 2018/0310624 A1) as applied to claim 8 above, and further in view of Hayden et al. (US 5,103,844).
Regarding claim 26, Kizer, in view of Inagaki, discloses the aerosol generating product of claim 8, as stated above. Kizer does not explicitly disclose wherein the wrapping material is plug wrapping paper with a gram weight of 20-40 g/m2 and a thickness of 0.08-0.12 mm. However, it is known in the art that paper wrappers can have a basis weight of about 26 g/m2 and a thickness of about 0.1 mm (Hayden, Col. 8, Lines 20-22). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a paper wrapper with basis weight of about 26 g/m2 and a thickness of about 0.1 mm for the wrapping material, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights