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 .
Status of the Claims
Claims 1-2, 5-11, 14-15, and 17-21 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 3/16/26.
Claim 1 is amended.
Claims 17-21 are withdrawn
Claims 4 is cancelled.
No claims are new.
Response to Arguments
Applicant's arguments (filed 3/16/26, pages 7-9) have been fully considered but are not persuasive. Applicant argues: (1) the open-ended range of Reed does not constitute a disclosure of the narrow claimed range of denier per filament, (2) Reed does not inherently satisfy the claimed pressure drop requirement, and (3) Reed provides no teaching or motivation that the particular values selected to demonstrate overlapping denier per filament should be combined in the manner suggested in the Office Action. The Examiner respectfully disagrees.
Regarding argument (1), in the case where a claimed range lies inside the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I). While Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, the Applicant must demonstrate that “the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." See MPEP § 2144.05(III)(A) (citing In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Evidence must be presented to rebut a prima facie case of obviousness and such evidence must be commensurate in scope with the claims to which it pertains and may not be considerably narrower in scope than the claimed subject matter. In re Dill, 604 F.2d 1356, 1361, 202 USPQ805, 808 (CCPA 1979). Also see In re Boesch, 617 F.2d at 276, 205 USPQ at 219; In re Lindner, 457 F.2d 506, 508,173 USPQ 356, 358 (CCPA 1972) and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Here, Applicant has not clearly demonstrated the criticality of the claimed range. Thus, absent further evidence demonstrating the criticality of the claimed range, the claimed range would have been obvious to one having ordinary skill in the art.
Regarding argument (2), the court has held that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191 (Fed. Cir. 2019); see also MPEP §2112(IV). Here, it would have been obvious to one having ordinary skill in the art that the claimed elements would result in a pressure drop and such pressure drop would be observable and measurable. A specific pressure drop, such as the claimed pressure drop, would be the natural result of the combined prior art elements, absent further evidence to the contrary. Thus, while the specific pressure drop value is the missing claim limitation, the claimed pressure drop is the natural result of the combination of the prior art elements, absent evidence of further components or methods of combining the claimed components which are necessary to obtain the claimed pressure drop.
Examiner’s note: if the Applicant believes that the claimed pressure drop is not due to the claimed structural elements alone, but rather the claimed article would comprise a different pressure drop than the article disclosed in the prior art due to non-claimed elements, the Applicant is encouraged to further incorporate the structural elements which it believes results in the claimed pressure drop.
Regarding argument (3), in the case where a claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I). Here, Reed does not need to teach that the particular values selected in order to demonstrate the overlapping ranges of denier per filament. Rather, the Examiner provided select dimensions, selected from within the ranges taught by Reed, to clearly demonstrate that the broader range of denier per filament disclosed by Reed overlaps the claimed range. Therefore, the particular denier per filament value identified anticipates the claimed range; and the value identified also demonstrates a broader range of denier per filament disclosed by the teachings of Reed, which establishes a prima facie case of obviousness. Absent further evidence demonstrating the criticality of the claimed range, the claimed range would have been obvious to one having ordinary skill in the art.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
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 1-2, 4-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Reed (US 20160219930 A1)
Regarding Claim 1, Reed discloses a smoking article ([0001]) which may be used in an aerosol provision system, the article comprising:
a mouthpiece (a tobacco smoke filter. [0001]) and
an aerosol generating material ("a filter of the invention (or a filter which includes a filter element of the invention) is joined to a wrapped tobacco rod with one end of the filter towards the tobacco" [0026]),
the mouthpiece comprising: a section having a longitudinal axis and a cross sectional area measured perpendicular to the longitudinal axis ([0004]), the section comprising fibrous material comprising a denier per filament of between 13.1 and 14.9 g/9000m (The filter is a cellulose acetate filter having a filament denier of 5.3 or greater. [0014]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the range disclosed by the reference. See MPEP § 2144.05(I)) and
a total denier per mm2 of the cross sectional area of between 475 and 900 g/9000m (Wherein the filter has a total denier of 10,000 and a circumference of 15.0-16.0mm; the fibrous material comprises a total denier per mm2 of the cross sectional area of between 475 and 900. [0016], [0034]),
wherein the fibrous material comprises less than 60 fibers per mm2 of the cross sectional area (Wherein the filter has a denier per filament of 14.0, a total denier of 10,000, and a circumference of 16.8mm; the fibrous material comprises less than 60 fibers per mm2 of the cross sectional area. [0014], [0016], [0034]),
wherein the aerosol generating material comprises an aerosol forming material, and wherein the aerosol forming material comprises at least 5% by weight of the aerosol generating material (The aerosol generating material may comprise of a tobacco rod and thereby the aerosol forming material is tobacco. Moreover, wherein tobacco is utilized as the aerosol forming material and tobacco is an aerosol generating material, the aerosol generating material is at least 5% by weight an aerosol forming material. [0026]).
Reed does not explicitly disclose a mouthpiece wherein a pressure drop across the section is between about 0.5 and about 6 mm H2O/mm of a longitudinal length of the section. However, given that the pressure drop across the article attributable to the filter and/or the pressure drop across the filter is dependent on the composition of the filter, specifically the composition and density of the cellulose fiber tow, it follows that Reed, having an overlapping composition and density, would reasonably have a pressure drop across the section which is between about 0.5 and about 6 mm H2O/mm of a longitudinal length of the section similarly as claimed, absent evidence to the contrary. See MPEP 2112(III).
Regarding Claim 2, Reed further discloses an article wherein the fibrous material comprises a total denier of at least 10000 g/9000m (The filter has a total denier of 18,000 or less, such as a filter with a total denier of 10,000. [0004], [0016]).
Regarding Claim 5, Reed further discloses an article wherein the section comprises an outer circumference of between 15.0 and 24.0 mm (The filter has a circumference between 14 and 17 mm, such as a filter with a circumference of 16.8 mm. [0004], [0034]).
Regarding Claim 6, Reed further discloses an article further comprising a capsule embedded within the fibrous material (An additive release vessel, such as a capsule, is fully enclosed in the filter core. [0004], [0008]).
Regarding Claim 7, Reed further discloses an article
wherein the capsule comprises a shell encapsulating a liquid aerosol modifying agent (The capsule may be filled with a liquid. [0018]), and
wherein a largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 45% of the cross sectional area of the section (The filter may have a circumference of 16.8 mm and the width of the capsule at the widest point may range from 2.0 to 4.0 mm. [0021], [0034]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the range disclosed by the reference. See MPEP § 2144.05(I)).
Regarding Claim 8, Reed further discloses an article wherein the capsule selectively releases the liquid aerosol modifying agent when broken by an external force (The capsule is broken by the smoker to release agents such as flavorants. [0002], [0035]).
Regarding Claim 9, Reed does not explicitly disclose a mouthpiece wherein an open pressure drop across the article changes by less than about 20 mmH2O. However, given that the open pressure drop across the article attributable to the filter and/or the pressure drop across the filter is dependent on the structure and composition of the filter, specifically the composition and density of the cellulose fiber tow, it follows that Reed, having an overlapping composition, structure, and density as claimed in Claim 1, would reasonably have an open pressure drop across the article which changes by less than about 20 mmH2O similarly as claimed, absent evidence to the contrary. See MPEP 2112(III).
Regarding Claim 10, Reed further discloses an article wherein the fibrous material comprises filamentary tow (The filter comprises filamentary tow. [0009]).
Claims 11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Reed as applied to Claims 1 and 10 above, and further in view of Sebastian (US 20140026909 A1)
Regarding Claim 11, Reed discloses a filter comprising a fibrous material of filamentary tow as discussed in Claim 10, but does not explicitly disclose wherein the filamentary tow comprises a plasticizer level of between 5% and 12% by weight of the tow.
Sebastian teaches a filter for a smoking article wherein the filamentary tow comprises a plasticizer level of between 5% and 12% by weight of the tow (The total amount of plasticizer may be generally about 4 to about 20 percent by weight, preferably about 6 to about 12 percent by weight of the filter material. [0050]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference, See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the fibrous filamentary tow of Reed with a plasticizer ranging from 5-10% by weight of the filter material as taught by Sebastian because Reed and Sebastian are both directed to filter materials for smoking articles, Sebastian teaches the application of plasticizer to filter tow material as a known application in the art to strengthen the filter element ([0047]; [0050]), and this merely involves applying a known component to a similar smoking article filter to yield predictable results of a stronger filter element.
Regarding Claim 14, Reed discloses a filter wherein the aerosol generating material is wrapped in a wrapper ("The filter or filter element may further include a wrapper (e.g. paper, plugwrap) engaged around the longitudinally extending (e.g. substantially cylindrical) core." [0007], [0013]. "a filter of the invention (or a filter which includes a filter element of the invention) is joined to a wrapped tobacco rod with one end of the filter towards the tobacco." [0026]). Reed does not explicitly disclose wherein the wrapper has a permeability of less than 100 Coresta Units.
Sebastian further teaches that the aerosol generating material of smoking articles may be wrapped in a wrapper having a permeability of less than 100 Coresta Units ("The wrapping material can vary, and typically is a cigarette wrapping material having a low air permeability value. For example, such wrapping materials can have air permeabilities of less than about 5 CORESTA units." [0064]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the wrapping paper of Reed with a wrapper having a permeability of less than 100 Coresta Units as taught by Sebastian because Reed and Sebastian are both directed to smoking articles comprising wrapping papers, Sebastian teaches the use of a low permeability wrapper having a permeability of less than 100 Coresta Units in smoking articles, and this merely involves applying a known component to a similar smoking article filter to yield predictable results.
Regarding Claim 15, Reed discloses a smoking article wherein the aerosol generating material comprises of a tobacco rod. Reed does not explicitly disclose wherein the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter.
Sebastian further teaches wherein the tobacco based aerosol generating material of a smoking article may comprise of reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter (Smokeable rods of tobacco may comprise various types of tobacco or blends thereof. [0062]. "Typical packing densities for smokable rods may range from about 150 to about 300 mg/cm3." [0065]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the tobacco rod of Reed with a reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter as taught by Sebastian because Reed and Sebastian are both directed to smoking articles comprising tobacco based aerosol generating material, Sebastian teaches the use a reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter as the tobacco comprising the tobacco rod, and this merely involves applying a known component to a similar smoking article filter to yield predictable results.
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 Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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