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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/20/2026 has been entered.
Claim Status
Applicant’s arguments, filed on 02/06/2026, (“Remarks”) were in response to the Final Rejection mailed on 11/06/2025 (“Final Rejection”).
Claim(s) 1–12 is/are canceled.
Claim(s) 13–23 is/are pending and is/are addressed below.
Response to Arguments
Claim Rejections - 35 USC § 103
Claim(s) 13–17 and 20–22 remain rejected under 35 U.S.C. 103 as being unpatentable over YAMADA WO 2018235956 (of record) (with reference being made to the machine translation made of record on 11/18/2024) (“YAMADA”) and ZHAO CN 109497618 (with reference being made to the machine translation made of record on 05/12/2025) (“ZHAO”).
Applicant’s Remarks on pages 2–3 have been fully considered, but are not persuasive for the reasons set out in the following paragraphs.
At issue is whether YAMADA and ZHAO make obvious “a filter wrap around at least the cooling part and the mouthpiece” and “wherein the hollow tube forming the cooling part comprises a filter material.”
Applicant argues:
Claim 1 now recites a filter wrap around at least the cooling part and the mouthpiece. In the Office Action, the wrapper of Yamada is considered to correspond to the claimed hollow tube comprising filter material because it provides ventilation. However, claim 1 now recites a filter wrap and a hollow tube. Yamada discloses a wrapper but does not disclose both a filer wrap and a hollow tub forming the cooling part comprising a filter material. Therefore, the combination of Yamada in view of Zhao does not result in the subject matter of claim 13.
Applicant respectfully submits that the combination of elements as set forth in independent claim 13 is not disclosed or made obvious by the prior art of record, including Yamada and Zhao, for the reasons explained above. Accordingly, reconsideration and withdrawal of this rejection are respectfully requested.
Remarks at 2. Examiner respectfully disagrees. The broadest reasonable interpretation of “filter material” captures cooling part comprising paper. As explained at length in the rejection below, modified YAMADA arrives at a paper cooling part (taught by ZHAO) wrapped with a filter wrap (disclosed by YAMADA). Therefore, Applicant’s Remarks are, respectfully, not persuasive.
Accordingly, the above referenced rejection(s) under 35 U.S.C. 103 in the Non-Final Rejection is/are maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16–18 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 16, the recitation of “wherein the hollow tube forming the cooling part comprises a filter material” is indefinite because claim 13 was amended to include the same language. Accordingly, one of ordinary skill in the art is unable ascertain what additional patentable weight is added by this limitation.
For the purposes of searching and throughout the remainder of this action, Examiner will assume claim 16 recites “The heated tobacco product according to claim 14, wherein the hollow tube forming the support part comprises cellulose acetate
Claims 17 and 18 are rejected for the same reasons via their dependency on claim 13.
As to claim 18, the recitation of “the filter material” in line two is indefinite because its unclear whether Applicant intends to reference the “a filter material” in claim 13’s last line or the “a filter material” in claim 16’s line 2.
The above proposed amendment to claim 16 would remedy the indefinite issues in claim 18.
As to claim 20, the recitation of “the heater-insertion cavity of the tobacco rod” lacks antecedent basis.
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.
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.
Claim(s) 13–17 and 20–22 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMADA WO 2018235956 (“YAMADA”) (of record) (with reference being made to the machine translation made of record on 11/18/2024) and ZHAO CN 109497618 (“ZHAO”) (of record) (with reference being made to the machine translation made of record on 05/12/2025).
As to claim 13, YAMADA discloses a heated tobacco product, comprising:
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a tobacco rod (1; Page 8 last full paragraph);
a support part (26; Page 8 last full paragraph) disposed in abutting contact with a rear end of the tobacco rod (Fig. 3);
a cooling part (24; Page 8 last full paragraph); and
a mouthpiece part (22; Page 8 last full paragraph) disposed in abutting contact with a rear end of the cooling part (Fig. 1),
wherein the cooling part is a hollow tube (best illustrated Figure 1) having a through-hole extending in a longitudinal direction and allows a volatile substance released from the tobacco rod to flow downstream and to be cooled (the cooling part is a cavity space with a hollow interior, which constitutes a through-hole),
wherein the cooling part has an air vent allowing introduction of outside air (second full paragraph on page 9),
wherein the air vent penetrates the cooling part (second full paragraph on page 9) and is located upstream in the cooling part (these vents are upstream of the mouthpiece).
However, YAMADA’s cooling part is formed from a cigarette wrapper. This fails to arrive at a cooling part disposed in abutting contact with a rear end of the support part.
ZHAO teaches a cooling part (Figs. 2–3, 2) disposed in abutting contact with a rear end of a tobacco rod (1), wherein the cooling part is a hollow tube having a through-hole extending in a longitudinal direction (Figs. 2–3) and allows a volatile substance released from the tobacco rod to flow downstream and to be cooled (page 3’s discussion of first beneficial effect), wherein the cooling part has an air vent (Fig. 3, 9) allowing introduction of outside air, and wherein the air vent penetrates the cooling part and is located upstream in the cooling part (page 3’s discussion of second beneficial effect).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of ZHAO’s paper cooling part into the disclosure of YAMADA for the benefit of a cigarette paper tube unit with cooling part that is perforated to allow more cooling air to prevent negative taste associated with the filter tip (as taught by ZHAO’s first benefit on page 3) that has a desired hardiness (as taught by ZHAO’s fourth beneficial effect on page 3).
That is, the inclusion of ZHAO’s abutting paper structure will reinforce the hollow cooling chamber of YAMADA. This arrives at the following structure:
With respect to the claimed “wherein the hollow tube forming the cooling part comprises a filter material,” ZHAO’s obviously incorporated hollow tube forming the cooling part is taught as being made from paper (see above). One of ordinary skill in the art understands that the broadest reasonable interpretation of “a filter material” encompasses paper, e.g., paper can filter. Accordingly, the obvious combination above arrives at wherein the hollow tube forming the cooling part comprises a filter material.
With respect to the claimed “a filter wrap around at least the cooling part and the mouthpiece,” YAMADA teaches wrapping each of the subunits of the heated tobacco product with a filter wrap (last full paragraph on page 11).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of YAMADA into the modified disclosure above and roll the subunits, including the hollow tube forming the cooling part from ZHAO, for the benefit of obtaining a heated tobacco product (as taught by YAMADA’s last full paragraph on page 11).
With respect to the claimed “wherein the air vent penetrates the cooling part and is located upstream in the cooling part,” one of ordinary skill in the art understands that the broadest reasonable interpretation of “located upstream in the cooling part” defines “upstream” to be relevant to the cooling part itself. That is, when a cooling part is upstream of other components and has an air vent, then the air vent is located upstream in the cooling part relative to the downstream component. Accordingly, modified YAMADA, by making obvious the claimed cooling part that is upstream of the mouthpiece, modified YAMADA arrives at wherein the air vent penetrates the cooling part and is located upstream in the cooling part.
With respect to the claimed “wherein the air vent is provided at a position closer to a front end of the cooling part than to the rear end of the cooling section,” the claims to not define what is a “front end” or a “rear end.” The obvious combination above arrives at the air vent being provided in the cooling part at a position which is offset from the middle of the cooling section (as taught by ZHAO’s Fig. 3). Accordingly, the obvious combination above arrives at the broadest reasonable interpretation of wherein the air vent is provided at a position closer to a front end (the end of the cooling part nearest the offset air vent) than to the rear end of the cooling part (the other end of the cooling part farthest away from the air vent).
For the sake of compact prosecution, that is if Applicant were to amend claim 13, YAMADA and ZHAO fail to explicitly disclose wherein the air vent is located in the cooling part closer to the tobacco rod than the mouth piece.
ZHAO teaches that laser the drilled ventilation hole (top of page 5) to should be placed in the cooling part to ensure the smoke is completely mixed with the outside air (third benefit in middle of page 3 between benefits three and four).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to further incorporate this teaching into modified YAMADA and arrive at the air vent is located in the cooling part closer to the tobacco rod than the mouth piece because this would improve the overall smoking experience by ensuring that the smoke is more completely mixed with the outside stream of air (as taught by ZHAO’s third benefit in middle of page 3 between benefits three and four). Additionally or alternatively, it would have been obvious to one of ordinary skill in the art as of the effective filing date to arrive at wherein the air vent is located in the cooling part closer to the tobacco rod than the mouth piece as an obvious rearrangement of the vent hole because shifting the position of the vent hole would not have modified the operation of the device or is an obvious matter of design choice. MPEP 2144.04 (VI)(C).
Accordingly, YAMADA and ZHAO make obvious the air vent is located in the cooling part closer to the tobacco rod than the mouth piece for the reasons stated immediately above.
The second rationale above also arrives at the air vent is located in the cooling part closer to the tobacco rod than the mouthpiece. This obvious arrangement also arrives at “the air vent penetrates the cooling part and is located upstream in the cooling part and wherein the air vent is provided at a position closer to a front end (assuming the front end was amended to be the tobacco rod) than to the rear end (assuming the rear end was amended to be the mouthpiece) of the cooling section.”
As to claim 14, YAMADA and ZHAO make obvious the heated tobacco product according to claim 13.
YAMADA further discloses wherein the support part (26) is a hollow tube with a center hole formed to penetrate the support part (Figure 3).
As to claim 15, YAMADA and ZHAO make obvious the heated tobacco product according to claim 14.
YAMADA further discloses wherein the through-hole has a diameter greater than a diameter of the center hole (see Figures 1 and 3).
As to claim 16, YAMADA and ZHAO make obvious the heated tobacco product according to claim 14.
YAMADA further discloses wherein the hollow tube forming the support part comprises cellulose acetate (see third full paragraph on page 9). With respect to the claimed “wherein the hollow tube forming the cooling part comprises a filter material,” this limitation is indefinite for the reasons stated in the relevant section above. For the sake of completeness, ZHAO’s obviously incorporated hollow tube forming the cooling part is taught as being made from paper (see above). One of ordinary skill in the art understands that the broadest reasonable interpretation of “a filter material” encompasses paper, e.g., paper can filter. Accordingly, the obvious combination above arrives at wherein the hollow tube forming the cooling part comprises a filter material.
As to claim 17, YAMADA and ZHAO make obvious the heated tobacco product according to claim 16.
YAMADA further discloses wherein the mouthpiece part (22) has a filter material formed into a shape of a circular cylinder (Figure 3 and first full paragraph on page 9).
As to claim 20, YAMADA and ZHAO make obvious the heated tobacco product according to claim 13.
YAMADA further discloses wherein the tobacco rod includes a tobacco filler (Figure 2A, 10), and wherein the tobacco filler has a cavity (14) extending in an axial direction of the tobacco rod (Figure 2A; see middle of page 8).
As to claim 21, YAMADA and ZHAO make obvious the heated tobacco product according to claim 20.
YAMADA further discloses wherein the tobacco filler laterally surrounds the cavity (Figure 2A).
As to claim 22, YAMADA and ZHAO make obvious the heated tobacco product according to claim 20.
YAMADA further discloses wherein the cavity axially penetrates the tobacco rod (Figure 2A).
Claim(s) 18–19 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMADA WO 2018235956 (“YAMADA”) (of record) and ZHAO CN 109497618 (“ZHAO”) (of record), as applied in the rejections of claims 14 and 16 above, and in further view of MAEDER WO 2009022232 (“MAEDER”) (of record).
As to claim 18, YAMADA and ZHAO make obvious the heated tobacco product according to claim 16.
YAMADA and ZHAO make obvious the hollow tube forming the cooling part comprises a paper filter material. (see rejection above)
However, YAMADA and ZHAO fail to arrive at wherein the filter material is a cellulose acetate fiber.
MAEDER teaches a hollow tube forming the cooling part comprises cellulose acetate fibers and that the cellulose acetate fibers are functional equivalents of paper filter materials which may be swapped out for one another (bottom of page 11 and extending onto the top of page 12 “the expansion chamber may comprise a hollow cardboard tube, a hollow tube of cellulose acetate tow or both”).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of MAEDER into modified YAMADA for the benefit of allowing the overall length of the smoking article to be adjusted to a desired value while simultaneously further cooling the aerosol (as taught by MAEDER at bottom of page 11 and extending onto the top of page 12).
As to claim 19, YAMADA and ZHAO make obvious the heated tobacco product according to claim 14.
YAMADA further discloses wherein the hollow tube forming the support part (26) comprises comprise cellulose acetate fibers (see third full paragraph on page 9), and wherein the mouthpiece part (22) is made of cellulose acetate fibers formed into a shape of a circular cylinder (Figure 3 and first full paragraph on page 9).
YAMADA fails to disclose the hollow tube forming the cooling part comprises cellulose acetate fibers.
ZHAO fails to remedy the above deficiency.
MAEDER teaches a hollow tube forming the cooling part comprises cellulose acetate fibers (bottom of page 11 and extending onto the top of page 12 “the expansion chamber may comprise a hollow cardboard tube, a hollow tube of cellulose acetate tow or both”).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of MAEDER into modified YAMADA for the benefit of allowing the overall length of the smoking article to be adjusted to a desired value while simultaneously further cooling the aerosol (as taught by MAEDER at bottom of page 11 and extending onto the top of page 12).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over YAMADA WO 2018235956 and ZHAO CN 109497618, as applied in the rejection of claim 20 above, and in further view of SAYGILI US 20180228216 (of record).
As to claim 23, the rejections of claims 13 and 20 are repeated below for the reader’s convenience.
YAMADA discloses a heated tobacco product, comprising:
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a tobacco rod (1; Page 8 last full paragraph);
a support part (26; Page 8 last full paragraph) disposed in abutting contact with a rear end of the tobacco rod (Fig. 3);
a cooling part (24; Page 8 last full paragraph); and
a mouthpiece part (22; Page 8 last full paragraph) disposed in abutting contact with a rear end of the cooling part (Fig. 1),
wherein the cooling part is a hollow tube (best illustrated Figure 1) having a through-hole extending in a longitudinal direction and allows a volatile substance released from the tobacco rod to flow downstream and to be cooled (the cooling part is a cavity space with a hollow interior, which constitutes a through-hole),
wherein the cooling part has an air vent allowing introduction of outside air (second full paragraph on page 9),
wherein the air vent penetrates the cooling part (second full paragraph on page 9) and is located upstream in the cooling part (these vents are upstream of the mouthpiece).
However, YAMADA’s cooling part is formed from a cigarette wrapper. This fails to arrive at a cooling part disposed in abutting contact with a rear end of the support part.
ZHAO teaches a cooling part (Figs. 2–3, 2) disposed in abutting contact with a rear end of a tobacco rod (1), wherein the cooling part is a hollow tube having a through-hole extending in a longitudinal direction (Figs. 2–3) and allows a volatile substance released from the tobacco rod to flow downstream and to be cooled (page 3’s discussion of first beneficial effect), wherein the cooling part has an air vent (Fig. 3, 9) allowing introduction of outside air, and wherein the air vent penetrates the cooling part and is located upstream in the cooling part (page 3’s discussion of second beneficial effect).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of ZHAO’s paper cooling part into the disclosure of YAMADA for the benefit of a cigarette paper tube unit with cooling part that is perforated to allow more cooling air to prevent negative taste associated with the filter tip (as taught by ZHAO’s first benefit on page 3) that has a desired hardiness (as taught by ZHAO’s fourth beneficial effect on page 3).
That is, the inclusion of ZHAO’s abutting paper structure will reinforce the hollow cooling chamber of YAMADA. This arrives at the following structure:
With respect to the claimed “wherein the hollow tube forming the cooling part comprises a filter material,” ZHAO’s obviously incorporated hollow tube forming the cooling part is taught as being made from paper (see above). One of ordinary skill in the art understands that the broadest reasonable interpretation of “a filter material” encompasses paper, e.g., paper can filter. Accordingly, the obvious combination above arrives at wherein the hollow tube forming the cooling part comprises a filter material.
With respect to the claimed “a filter wrap around at least the cooling part and the mouthpiece,” YAMADA teaches wrapping each of the subunits of the heated tobacco product with a filter wrap (last full paragraph on page 11).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of YAMADA into the modified disclosure above and roll the subunits, including the hollow tube forming the cooling part from ZHAO, for the benefit of obtaining a heated tobacco product (as taught by YAMADA’s last full paragraph on page 11).
With respect to the claimed “wherein the air vent penetrates the cooling part and is located upstream in the cooling part,” one of ordinary skill in the art understands that the broadest reasonable interpretation of “located upstream in the cooling part” defines “upstream” to be relevant to the cooling part itself. That is, when a cooling part is upstream of other components and has an air vent, then the air vent is located upstream in the cooling part relative to the downstream component. Accordingly, modified YAMADA, by making obvious the claimed cooling part that is upstream of the mouthpiece, modified YAMADA arrives at wherein the air vent penetrates the cooling part and is located upstream in the cooling part.
With respect to the claimed “wherein the air vent is provided at a position closer to a front end of the cooling part than to the rear end of the cooling section,” the claims to not define what is a “front end” or a “rear end.” The obvious combination above arrives at the air vent being provided in the cooling part at a position which is offset from the middle of the cooling section (as taught by ZHAO’s Fig. 3). Accordingly, the obvious combination above arrives at the broadest reasonable interpretation of wherein the air vent is provided at a position closer to a front end (the end of the cooling part nearest the offset air vent) than to the rear end of the cooling part (the other end of the cooling part farthest away from the air vent).
For the sake of compact prosecution, that is if Applicant were to amend claim 13, YAMADA and ZHAO fail to explicitly disclose wherein the air vent is located in the cooling part closer to the tobacco rod than the mouth piece.
ZHAO teaches that laser the drilled ventilation hole (top of page 5) to should be placed in the cooling part to ensure the smoke is completely mixed with the outside air (third benefit in middle of page 3 between benefits three and four).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to further incorporate this teaching into modified YAMADA and arrive at the air vent is located in the cooling part closer to the tobacco rod than the mouth piece because this would improve the overall smoking experience by ensuring that the smoke is more completely mixed with the outside stream of air (as taught by ZHAO’s third benefit in middle of page 3 between benefits three and four). Additionally or alternatively, it would have been obvious to one of ordinary skill in the art as of the effective filing date to arrive at wherein the air vent is located in the cooling part closer to the tobacco rod than the mouth piece as an obvious rearrangement of the vent hole because shifting the position of the vent hole would not have modified the operation of the device or is an obvious matter of design choice. MPEP 2144.04 (VI)(C).
Accordingly, YAMADA and ZHAO make obvious the air vent is located in the cooling part closer to the tobacco rod than the mouth piece for the reasons stated immediately above.
The second rationale above also arrives at the air vent is located in the cooling part closer to the tobacco rod than the mouthpiece. This obvious arrangement also arrives at “the air vent penetrates the cooling part and is located upstream in the cooling part and wherein the air vent is provided at a position closer to a front end (assuming the front end was amended to be the tobacco rod) than to the rear end (assuming the rear end was amended to be the mouthpiece) of the cooling section.”
YAMADA further discloses wherein the tobacco rod includes a tobacco filler (Figure 2A, 10), and wherein the tobacco filler has a cavity (14) extending in an axial direction of the tobacco rod (Figure 2A; see middle of page 8).
Accordingly, modified YAMADA arrives a product including the heated tobacco product according to claim 20.
YAMADA further discloses a heating device (30) comprising a heater, wherein the heater is located within the cavity of the tobacco filler (Page 12).
YAMADA fails to explicitly disclose the heating device having an accommodating cavity for insertion of the heated tobacco product.
ZHAO fails to remedy this deficiency.
SAYGILI teaches a heating device (38; ¶186–188) having an accommodating cavity (40) for insertion of the heated tobacco product (4).
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It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate SAYGILI’s heater with the disclosure of modified YAMADA for the benefit of securing the tobacco substrate to the heater to generate aerosol (as taught by SAYGILI at ¶¶187–188).
The obvious arrangement above is considered to arrive at the indefinite limitation of “wherein the heater is located within the heater-insertion cavity of the tobacco rod.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANLEY L CUMMINS IV whose telephone number is (571)272-1060. The examiner can normally be reached Monday-Friday 9:30 a.m. - 6:00 p.m. (CST).
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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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/MANLEY L CUMMINS IV/Primary Examiner, Art Unit 1747