DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of 01/05/2026 is entered. Claim 1 is amended. New claim 25 is added. Claim 19 and 20 are cancelled, their subject matter incorporated into claim 1.
Status of Claims
Claim 1 is amended to include the subject matter of claims 19 and 20, each previously dependent on claim 1. Claims 19 and 20 are canceled by this amendment, claims 3, 6 18, and 21 having been previously canceled. Claim 25 is newly added. Claims 13-14 are withdrawn, previously presented. Claims 2, 4-5, 7-12, 15-17, and 22-24 are previously presented.
Response to Arguments
Applicant's arguments filed 01/05/2026, as well as the subsequently filed affidavit of 1/13/2026 have been fully considered but they are not persuasive.
Examiner thanks Applicant for responding quickly to Examiner’s inquiry regarding the missing declaration and providing it to the Examiner. Such responsiveness is incredibly helpful when facilitating prosecution of applications and it is very much appreciated.
Applicant argues that the rejection made under 35 USC 103, which relies on the combination of Lisasuskas and Gupta, should be withdrawn in light of the arguments and assertions contained in the declaration. Although amended claim 1 was previously considered with the limitations of claim 19 and 20, incorporating these limitations together is still considered obvious, and thus the question of patentability turns on whether the arguments contained in the Response and the declaration are persuasive. As discussed below, regrettably they are not, and the rejections as modified to account for the amendment and new claim, are maintained.
Applicant argues that there is no reasonable expectation of success in making the combination and cited to case law for that proposition, Response pg 5-6 last paragraph. MPEP 2143.01 makes clear, a reasonable expectation of success is required, obviousness requires a reasonable expectation of success, at least some degree of predictability is required, MPEP 2143.02 I., and that Applicant may present evidence showing there was no reasonable expectation of success, MPEP 2142.01 II.
Applicant argues the sheer number of variables that one of ordinary skill in the art must select from to arrive at the claimed invention weighs against a finding of a reasonable expectation of success, and argues a case that dealt with pharmaceutical recrystallization involving a lesser number of variables was found to lack a reasonable expectation of success, to support that there would be no expectation of success in the combination made in the rejection under 35 USC 103. Applicant suggests that Examiner has merely applied hindsight, and rejected the present Application unfairly, not based on what was understood to be reasonably expected to work at the time of filing in light of the cited reference and the ordinary skill in the art.
Generally, manufacturing a nonwoven web by one of ordinary skill in the art will require navigating all of the parameters described by Lisasuskas, and selecting values for each of them. Some of the parameters are interdependent, reducing the true number that must be specified. For instance, of thickness, areal density, and volumetric density, only two can be specified, because in specifying the two, the third is necessarily determined. Regardless, Applicant is correct there are a large number of design considerations involved in making a nonwoven web, leading to a large number of compositional and performance outcomes, each one being to one degree or another different each other. This large number of possibilities, does not suggest that there would not be a reasonable expectation of success in making these selections and arriving at nonwoven webs that result from each selection. The references appear to reasonably disclose workable nonwoven webs comprising the selected parameters in the rejection below.
The Examiner has some experience in pharmaceutical recrystallization, having worked at the Pfizer facility in Groton, CT. Pharmaceutical recrystallizations are notoriously tricky. Applicant does not need to take Examiner’s word for this, a reference has been provided, Javadzadeh et al. Recystallization of Drugs, describing solvent selection as a crucial feature of the process and made on a case by case basis, pg 426 second full paragraph. In that same paragraph the reference continues, “[a]lthough recrystallization is a very common technique used to purify drugs, it has a basic limitation for the compounds that are mostly pure and other techniques of separations are of use for drug mixtures containing several major components which could not be purified by recrystallization methods.” Id. Put simply, recrystallization to purify drugs, is unpredictable. The ability to further purify a compound with recrystallization is uncertain. One of ordinary skill in the art requires significant direction in selecting the various conditions that go into recrystallization. Recrystallization isn’t just about achieving any crystal either, the different crystal form variations all impact whether the outcome was successful, see pg 427 under section 2. Impact of crystal habit on pharmaceutical processing, because the crystals formed are required to have a specific effect and that effect is dependent on the crystallization process. The factors in the present application appear to be well understood and predictable. Choosing from the described factors is within the ordinary skill in the art, and there is no suggestion that a particular combination would not be reasonably expected to be successful.
The declaration supplied is entitled to consideration as to the facts asserted, though the impact of the facts on the patentability analysis is left to the Examiner, see generally MPEP 2145 Consideration of Applicant’s Rebuttal Arguments and Evidence, and in particular, I. Argument does not replace evidence where evidence is necessary, X. A Impermissible hindsight, and X. E. Applicability of KSR to All Technologies, limiting its applicability to the “predictable arts”.
Reviewing the declaration, the following factual assertions are found:
Lisasuskas discloses a variety of selectable parameters, without any suggestion that a filter formed based on their selection lacks predictability.
Applicant asserts Lisasuskas Gupta disclose:
Lisasuskas: More than a dozen natural fibers and fiber families, including flax, hemp, kenaf, jute, ramie, sisal, abaca, cotton, wood pulp, and multiple regenerated cellulose fibers such as lyocell and viscose.
Lisasuskas: At least nine different forming and bonding processes, including wetlaid formation, drylaid formation, carding, airlaying, hydroentanglement, needle punching, thermal bonding, chemical bonding, and mechanical bonding.
A Lisasuskas: wide array of variable material parameters including at least fifteen parameters are expressly treated as adjustable, including area density, volume density, binder amount, fiber amount, fiber thickness, fiber length, fiber composition, orientation, porosity, air permeability, thickness, tensile strength, basis weight, moisture content, and filtration performance.
Gupta is limited to synthetic or glass fiber filtration.
Gupta the thickness from Gupta cannot be used as a parameter for Lisasukas because the structural behavior of the (different) materials behaves differently.
Reviewing the disclosure of Lisasukas, it does not appear that one of ordinary skill in the art would be dissuaded from making the selections described in the rejections below. The selections made all appear to be within the ordinary skill in the art, either as simple substitutions or the application of known techniques to a known product. There is no substantial evidence of unpredictability, the parameters appear to be well understood, and the nonwoven sheet based on their selection appears to be entirely suitable for making a filter, as compared to the selections for recrystallizations which appear to be critical to the process and the required outcomes. There is further no presentation of factual evidence suggesting that the results obtained by Applicant are unexpected.
Reviewing the disclosure of Gupta, the assertions of Applicant do not appear to be well grounded in the disclosure. Please review paragraph ([0116]) reproduced for your convenience below:
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Gupta, as understood by Examiner, is not limited to synthetic fibers or compositions that include glass. The contrary assertions in the declaration are not considered persuasive. Abaca fibers, including natural fibers (organic fibers - hemp is explicitly suggested) are disclosed, and the references expressly indicates other fiber types are also suitable and not particularly limited. The general disclosure of thickness ranges by Gupta appear applicable to Lisasuskas, and are thicknesses that one of ordinary skill in the art would use as a target value given the silence of Lisasuskas regarding this parameter. One of skill in the art would expect that any web must have some thickness, and reasonably select a thickness from the range of Gupta as a target for the nonwoven web of Lisasuskas.
Examiner did not simply search for a nonwoven with a thickness that would read on Applicant claims. Care was taken to ensure the materials were reasonably similar, with similar fibers, and the thickness could be achieved with a compatible process. Although Applicant disagrees that the density range disclosed by Lisasuskas is achievable with a wet laid process, the only evidence to support that applying a wetlaid process would not result in that density based on the disclosed thicknesses and areal densities from the references is from the declaration, which did not appear to thoroughly review that reference, at least with respect to the fiber types contemplated and generally asserted the reference was not applicable to Lisasuska because of those differences. Lisasuskas is open to and reasonably suggests a drylaid process is viable for making nonwovens for filters. As stated above the nonwoven sheet must have some thickness. In selecting a thickness parameter, it is reasonable for Lisasuskas to set that parameter based on other nonwoven webs, such as the range supplied by Gupta, especially given the similarity of the fibers in both. These is no evidence that suggests a drylaid process would not be capable of producing the thicknesses suggested by Gupta for a nonwoven used in a filter making process.
Lisasuskas does not disclose significant unpredictability in the disclosed filter making process. Neither does Gupta. Gupta tends to show, a wetlaid process can achieve a thickness, which when combined with the areal densities disclosed by Lisasuskas would result in a volumetric density in the range disclosed by Lisasuskas. There is no evidence that the particular process required by the claims, drylaid, would also not be reasonably expected to produce similar results.
The other assertions in the declaration, such as Lisasuskas does not function as a suggestive technical teaching, are opinions upon which the Examiner is not permitted to rely because they go to the ultimate conclusions of obviousness, rather than facts upon which that conclusion is grounded.
The Applicant Response and supporting declaration have been fully considered, but ultimately are not persuasive.
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 cosidered 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-5, 7-11, 15-16, 22, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas et al. (GB 2525363), and in view of Gupta et al. (US 2012/0193054 A1).
Regarding claims 1, 2, and 15-16, Lisasuskas discloses the invention relates generally to a biodegradable cigarette filter and more specifically, to a non-synthetic, natural cigarette tow, ([001])
Lisasuskas claims a filter comprising a nonwoven substrate comprising natural fibers, ([pg 55 claim 1] claim 1 recites: “[a] biodegradable cigarette filter tow, comprising at least two natural fibrous materials selected from the group consisting of: hemp, flax, abaca, sisal, wood pulp; and regenerated cellulose fiber”, the open language of the claim reasonably suggesting that any binder type would be acceptable).
Lisasuskas claims the filter may further comprise a natural binder, ([pg 55 claim 3] claim 3 reciting a preferred embodiment where the binder must be a natural binder: “The filter tow of claim 1, further comprising a natural binder”).
Lisasuskas discloses an embodiment where “an intimate blend of two or more natural fibers to form a nonwoven sheet for manufacturing a cigarette filter element. The fiber blend also contains fiber from a regenerated natural polymer, preferably cellulose”, ([015] also disclosing in this embodiment that after the filter tow is formed into a nonwoven sheet, a binder derived from a natural source is applied to the nonwoven sheet).
Lisasuskas discloses using an intimate blend of two or more natural fibers to form a nonwoven sheet for manufacturing a cigarette filter element, ([015]). Lisasuskas discloses using natural fibers comprising plant fibers, including bast fibers, ([041]), and that flax fiber is a common type of commercially available bast fiber, ([0041]). Lisasuskas discloses that bast fiber (flax) is a staple fiber, ([0045]). Lisasuskas discloses that flax fiber, hemp fiber, or a combination of hemp and flax fiber may be blended together to form the cigarette filter, ([047]). Lisasuskas discloses that fiber composition may be altered to achieve desired cigarette filter performance with regard to smoking parameters such as pressure drop and retention properties, ([015]).
Lisasuskas discloses that a drylaid web formation process is suitable to form a web from staple fiber, including plant fiber, ([077]). Lisasuskas discloses that in the drylaid process, fibrous webs are prepared from staple fibers usually 12 mm - 200 mm long, ([079]).
Lisasuskas discloses solid binder content on the fibrous web varies in a range of 2%-30% of the dry weight and that in another embodiment no binder is used, ([013]). Lisasuskas further discloses an embodiment where 0-30% by weight of a natural binder or a binder manufactured from natural renewable sources, ([016]).
Lisasuskas discloses that nonwoven sheet parameters such as volume density can be altered to obtain different performance of a cigarette filter with respect to smoking parameters, such as pressure drop and retention properties, ([0015], [036] setting the parameters is based on the product requirements). Lisasuskas discloses that a relatively low volume density provides an open and bulky structure of the fibrous material and suggests that the volume density be set to at least < 100 kg/m3, (which is < 100 mg/cm3), ([193]).
Lisasuskas discloses embodiments where the areal density of the product can vary from 25 to 65 g/m2. Lisasuskas by disclosing a nonwoven substrate, discloses a nonwoven substrate with a thickness. Lisasuskas discloses that nonwoven sheet parameters such as areal density and volume density can be altered to obtain different performance of a filter, ([015]). One of ordinary skill in the art would understand the relationship between areal density (mg/cm2) and volume density (mg/cm3) is such that volume density is equal to areal density divided by the nonwoven substrate thickness (cm), and that the thickness of the nonwoven substrate would be a parameter that would necessarily be varied as the areal density and volume density are varied to reach a filter with desired performance.
Lisasuskas does not disclose a range of thicknesses for the nonwoven substrate.
Lisasukas does not disclose the that the natural fibers are present in the narrower range of 80 -99% by weight of solids of the nonwoven substrate, that the length of the natural fibers being within the narrower range of 10 - 150mm, that the natural fibers comprise flax fibers in the narrower range 70 - 98% by weight of said natural fibers, or that the volume density of the nonwoven sheet is within the narrower range of 8 - 50 mg/cm3.
Gupta teaches a nonwoven web comprising fiber, ([0007]), which has applications in gaseous filtration applications, ([0023]). Gupta teaches that the web pertains to a sheet like or planar structure having a thickness of about 0.05 mm to an indeterminant or arbitrarily greater thickness, which can be from 1 mm to 5 mm, ([0026]), which corresponds to a thickness range of 1000 µm to 5000 µm.
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Lisasuskas according to the teachings of Gupta. The nonwoven substrate of Lisasuskas must have some thickness, and Gupta reasonably suggests a range that would work. Lisasuskas, by suggesting that both areal and volume density may be varied to arrive at desired filter performance, also suggests that the nonwoven substrate thickness may be modified to arrive at desired filter performance. Gupta suggests a range of thickness range of 1000 µm to 5000 µm for a nonwoven substrate. A prior art reference that discloses a range encompassing a narrower claimed range is sufficient to establish a prima facie case of obviousness, MPEP 2144.05 Overlapping ranges. Here, one of ordinary skill in the art would have found it obvious to vary the thickness of the nonwoven substrate within the disclosed range of 1000 µm to 5000 µm, because Lisasuskas suggests varying the various nonwoven substrate parameters to obtain different filter performance, and because Gupta suggests a range that overlaps the narrower range, one of ordinary skill in the art would have a reasonable expectation of success for thicknesses within the narrower range.
Because modified Lisasuskas discloses a nonwoven substrate of with an areal density of from 25 to 65 g/m2, with an obvious range of thicknesses from 1200-5000 micrometers taught by Gupta, modified Lisasuskas may have a volumetric density of 5-54 mg/cm3, when varied across the areal ranges taught by Lisasuskas with the claimed range of thicknesses rendered obvious by Gupta.
Lisasuskas discloses that volume density and areal density are an important parameters to be adjusted to achieve important smoking parameters such as pressure drop and filter retention properties. One of ordinary skill in the art would find it obvious to vary the volume density, to predictably lower the pressure drop and increase air permeability by lowering the volume density within the disclosed range of <100 mg/cm3, which overlaps the claimed range rendering it obvious. Because volume density is a parameter to be adjusted to vary the filter performance, one of ordinary skill in the art would have found it obvious to adjust the volume density within the disclosed range to meet the narrower claimed range (claims 1, and 15-16), to achieve the desired filter performance.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided a filter element according to Lisasuskas comprising a nonwoven substrate, with natural fibers comprising 80-98% by weight of the solids of nonwoven substrate, the natural fibers having a length being greater than 10 mm and less than or equal to 150 mm, flax fibers comprising 70-98% by weight of the natural fibers, and the nonwoven sheet having a volume density of 8-50 mg/cm3.
A prior art reference that discloses a range encompassing a narrower claimed range is sufficient to establish a prima facie case of obviousness, MPEP 2144.05 Overlapping ranges.
Regarding the range of natural fibers present in the nonwoven substrate as a percentage of solids, one of ordinary skill in the art would have found it obvious to modify the nonwoven sheet composition of the binder and fiber composition as explicitly suggested by Lisasuskas, to achieve different desired cigarette filter performance, ([015]). Lisasuskas discloses a binder percentage in the amount of 2-30%. This leaves a range of 70-98% of solids that could be natural fibers. Lisasuskas suggests a fiber composition where all of the fibers are natural fibers comprising flax and hemp. Thus, one of ordinary skill in the art would reasonably vary the amount of binder in a range of 2-20%, and arrive at composition of 80-98% natural fibers, (which meets the narrower range of binder, claim 19), with the expected result of varying the filter retention and pressure drop characteristics. One of ordinary skill in the art would have had a reasonable expectation of success in making this modification, because by disclosing an acceptable binder range of 2-30%, Lisasuskas discloses that the range of 2-20% also works.
Regarding the length of the natural fibers, Lisasuskas discloses that both drylaid and wetlaid web formation processes use staple fibers to form fibrous webs, ([077]), and as such one of ordinary skill in the art would have believed selecting a drylaid formation process would produce an acceptable nonwoven substrate, (claim 20). Lisasuskas further discloses that in the drylaid process, fibrous webs are prepared from staple fiber (a natural fiber) usually 12-200 mm long, ([079]). Thus, Lisasuskas discloses that the nonwoven substrate may be formed from a drylaid process, using a staple fiber in the broader length range of 12 - 200 mm. One of ordinary skill in the art would have found it obvious to select a range of fiber lengths between 12 - 150 mm, because this range falls within the disclosed range. One of ordinary skill in the art would have had a reasonable expectation of success in making this modification, because by disclosing that an acceptable range of fiber lengths of 12 – 200 mm, Lisasuskas discloses that the range of 12 – 150 mm also works.
Regarding the amount of flax fiber as a percentage of the natural fiber, Lisasukas suggests nonwoven substrates that comprise flax fiber, hemp fiber, or a combination of hemp and flax fiber, both of which are staple fibers, and suggests using the drylaid process for making the nonwoven web from a staple fiber. Lisasuskas also suggests varying fiber composition to obtain different filter performances. Thus, Lisasuskas reasonably suggests varying the nonwoven sheet fiber composition of staple fiber comprising of flax and hemp, over a range of fiber compositions where the composition is essentially all flax fiber in combination with low percentage of hemp fiber through the reverse. These compositional ranges of natural fibers are found to include a range of flax fiber percentages in the composition that overlap a range of 70-98% flax fiber. One of ordinary skill in the art would have been motivated to vary the staple fibers composition in the nonwoven web to achieve the expected result of different filter performances including filter retention and pressure drop.
Regarding claims 4-5, modified Lisauskas discloses filter according to claim 1. Lisasuskas discloses that the fiber composition may also include man-made fiber derived from a natural resource such as wood pulp, for example regenerated cellulose fiber such as lyocell and viscose fiber, ([010]).
Regarding claims 7-9, modified Lisauskas discloses filter according to claim 1. Binders including a synthetic polymer (SBR), CMC (a cellulose derivative), and polysaccharides are disclosed in ([068]-[075]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to practice the disclosure of Lisauskas, with any of these binders because Lisauskas teaches all of these binders and one of ordinary skill in the art would have found it obvious to select any of these binders for use in the nonwoven substrate on the basis of simple substitution of one known element for another to obtain predicable results.
Regarding claims 10-11, modified Lisauskas discloses filter according to claim 1. Lisasukas further discloses an intended use of the filter for a cigarette, ([009]), which is a smoking article.
Regarding claim 22, modified Lisauskas discloses filter according to claim 1. Lisasuskas discloses that air permeability is a nonwoven sheet parameter that can be altered to obtain different performance of the cigarette filter with respect to smoking parameters, such as pressure drop and retention properties, ([015]). Lisasuskas discloses that an open bulky structure allows air to pass relatively easily through the plane of the material and that the best results are achieved with an air permeability of >200 cm3·cm-2·sec-1. Lisasuskas discussed and measures air permeability throughout the disclosure, and discloses a different embodiment with an air permeability of 690 cm3·cm-2·sec-1, ([pg 39 Table 8]).
Lisasuskas does not explicitly disclose varying the a range of air permeability of the nonwoven substrate within a range of from 640 – 890 cm3·cm-2·sec-1.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the overlapping >200 cm3·cm-2·sec-1 range of air permeability to meet the narrower range of 640 – 890 cm3·cm-2·sec-1. A prior art reference that discloses a range encompassing a narrower claimed range is sufficient to establish a prima facie case of obviousness, MPEP 2144.05 Overlapping ranges. Lisasuskas discloses that air permeability is a nonwoven sheet parameter which may be modified to obtain different filter performance with regard to pressure drop and filter retention. Lisasuskas discloses an example embodiment where an air permeability of 690 cm3·cm-2·sec-1 was achievable. One of ordinary skill in the art would have found it obvious, with a reasonable expectation of success, to have modified the nonwoven substrate of claim 1 to have a range of air permeability to be within 640 – 890 cm3·cm-2·sec-1, within the overlapping disclosed range of above because Lisasuskas teaches modifying air permeability within this range, and discloses a different embodiment where an air permeability within this range was achieved.
Regarding claim 24, modified Lisasuskas discloses the filter according to claim 1. Lisasuskas discloses an embodiment where the filter is made from a mixture of two or more natural fibers, or pulps, or manmade fibers selected from a group that includes flax fiber and wood fiber pulp, ([010]). Lisasuskas discloses that the man-made fiber may be Lyocell, ([010]). Throughout the disclosure, the fiber compositions of the nonwoven substrate are varied, including the ranges for wood pulp and regenerated cellulose fiber, (see for example [012] disclosing a different embodiment where the regenerated cellulose was varied in a range of 5-40%). Lisasuskas discloses varying fiber composition to obtain different performance of the cigarette filter with respect to smoking parameters, such as pressure drop and retention properties, depending on the particular product requirements, ([015]). Lisasuskas does not disclose an embodiment where Lyocell was used in the claimed range, with the other limitations required in claim 1.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided a nonwoven substrate with a composition of flax as the natural fiber and a man-made fiber comprising Lyocell, where the nonwoven substrate includes Lyocell in an amount between 5-15%. Lisasuskas discloses using Lyocell as a man-made fiber in a nonwoven composition comprising flax and varying the fiber composition amounts to obtain different filter performance characteristics. One of ordinary skill in the art would have believed varying the Lyocell amount a range of 5-15%, to obtain different filter characteristics, would have been successful because Lisasuskas discloses another embodiment where the amount of Lyocell was varied in a range that overlaps this range.
Regarding claim 25, modified Lisasuskas discloses the filter according to claim 1.
Gupta teaches a nonwoven web comprising fiber, ([0007]), which has applications in gaseous filtration applications, ([0023]). Gupta teaches that the web pertains to a sheet like or planar structure having a thickness of about 0.05 mm to an indeterminant or arbitrarily greater thickness, which can be from 1 mm to 5 mm, ([0026]), which corresponds to a thickness range of 1000 µm to 5000 µm.
A prior art reference that discloses a range encompassing a narrower claimed range is sufficient to establish a prima facie case of obviousness, MPEP 2144.05 Overlapping ranges. It would be obvious to one of ordinary skill in the art, to select from Gupta a range of thicknesses corresponding from 1000 µm to 4500 µm, because Gupta reasonably suggests these thicknesses are workable, and as applied to Lisasuskas, the selected thicknesses result in a filter having a volumetric density within the range disclosed by Lisasuskas.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas et al. (GB 2525363), as applied to claim 1 above, and in view of Rostami et al. (US 2019/0090539 A1).
Regarding claim 12, modified Lisauskas discloses filter according to claim 1. Lisauskas further discloses that the filter may be used in a smoking article, such as a cigarette, ([0009]). Lisauskas does not specifically disclose that the filter may be used in a vaping article.
Rostami teaches a vaping a vaping device, (Fig 1) comprising a noncombustible tobacco insert that includes a filter, ([0004]. Rostami further teaches that the noncombustible tobacco insert may be a filtered cigarette ([0074]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the smoking article of Lisauskas with the vaping device of Rostami.
Lisauskas discloses a cigarette with suitable performance characteristics that has a more friendly environmental profile than traditional cigarettes, ([015]). One of ordinary skill in the art would be motivated to combine the smoking article of Lisauskas with the vaping device of Rostami to provide a replaceable smoking article that decomposes more quickly after disposal than a traditional cigarette.
Claims 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas et al. (GB 2525363), as applied to claim 1 above, and in view of Bonici et al. (US 2020/0329759 A1).
Regarding claim 17, modifed Lisauskas discloses filter according to claim 1. Lisauskas does not disclose the filter density of the filter.
Bonici teaches an aerosol generating article with a filter downstream of the aerosol generating substrate, ([Abstract]). Bonici teaches a preferred filter density between 110 mg/ cm3 and 200 mg/ cm3, ([0036]). Bonici further teaches that filters with high densities tend to be harder than those having lower densities, but an increased density of filter material may also tend to increase RTD to undesirable levels and filter out too much aerosol, ([0036]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to practice the invention of Lisauskas with a filter density of 110 mg/cm3 to 200 mg/cm3 as taught by Bonici because Bonici this produces a filter of appropriate hardness while balancing the desired RTD and aerosol filtering characteristics the filter. ([0036])
Claims 23 is rejected under 35 U.S.C. 103 as being unpatentable over Lisauskas et al. (GB 2525363), as applied to claim 1 above, in view of Allen (US 48,782 A1).
Regarding claim 23, modified Lisasuskas discloses the filter according to claim 1. Lisasuskas discloses that in an embodiment, the nonwoven substrate may be made from cotton flock, ([011]) or cotton fibers, ([016]), and that fibers such as cotton, leaf and bast fibers, and wood pulp are commonly used in the manufacturing of nonwoven fabrics, which includes carding, airlaying, wetlaying, and bonding by mechanical, chemical, and thermal methods, ([041]). Lisasuskas does not disclose cottonizing the flax fibers.
Allen teaches a method of reducing flax to the consistency of cotton, to enable flax to be better processed on existing equipment that processes cotton, ([pg 1 paragraphs 1-2]). Allen teaches a method of treating flax, hemp, jute, china grass, or other long-line fiber by a process, by which the same is fibrilized, or reduced to the consistency of cotton and wool (cottonizing), ([1st full paragraph]). Allen discloses that this process enables the fibers (flax) to be processed on cotton or wool machinery, ([2nd full paragraph]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Lisasuskas to cottonize the flax before it is used in the modified nonwoven susbtrate of Lisasuskas, to ensure uniformity in the flax and processing characteristics similar to cotton, such that the same equipment for manufacturing nonwoven substrate from cotton fiber blends could also be used for the flax fiber nonwoven blends of modified Lisasuskas.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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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.
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/D.E.V./Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755