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 .
This office action is in response to applicant’s request for continued examination filed October 30, 2025. Claim 2 has been amended. Claims 11-13 were previously cancelled. Claims 1-10 and 14-25 are pending and stand rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 30, 2025 has been entered.
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 1-5 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over in view of US 20200029616 A1 (hereinafter UTHURRY).
Regarding claim 1, UTHURRY discloses an aerosol-generating article including a plurality of components assembled within a wrapper and a filter segment (abstract). UTHURRY discloses the mouthpiece (Fig. 1, filter segment 105, ¶81) comprising a section having a longitudinal axis and a cross sectional area measured perpendicularly to the longitudinal axis (see annotated Fig. 1). UTHURRY further discloses the section comprising: a fibrous material (¶4) . UTHURRY further discloses wherein the filamentary tow comprises a total denier of between 6,000 and 9,500 grams/9000 m. UTHURRY teaches that the filter segment has a total denier of from about 6,000 to about 240,000 (Claim 19, ¶9).
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Regarding the limitation of comprising a total denier of between 300 and 500 grams/9000m per mm2 of said cross sectional area, the material of construction of the filters of both UTHURRY and the instant application is cellulose acetate tow (UTHURRY ¶13, instant application ¶56). The denier per filament range overlaps (UTHURRY ¶81, instant application ¶56). UTHURRY discloses a total denier from 6,000 to about 240,000 (Claim 19, ¶9). The cross sectional area ranges overlap when solving for the equation of, Acircle = πr2 (UTHURRY ¶19-¶20, instant application Table 1). The diameter of UTHURRY ranges from about 5 mm - 12 mm (UTHURRY ¶33). Therefore the radius, radius = diameter/2, ranges from 2.5 mm – 6 mm. The cross sectional area, Acircle = πr2, range is 19.625 mm2 to 113.04 mm2. Applicant has recited that a total denier of between 6,000 and 9,500 grams/9000 m. So the total denier per cross sectional area mm2 (total denier/cross sectional area) ranges between 53.1 – 484.1 grams/9000m per mm2 of said cross sectional area, when solving for both extremes.
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In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, the recitation the mouthpiece comprising a section having a longitudinal axis and a cross sectional area measured perpendicularly to the longitudinal axis, the section comprising: a fibrous material comprising a total denier of between 200 and 600 grams/9000 m per mm2 of said cross sectional area; wherein the fibrous material comprises filamentary tow, wherein the filamentary tow comprises a total denier of between 6,000 and 9,500 grams/9000 m and wherein the fibrous material comprises at least one of: more than 75 fibers per mm2 of said cross sectional area; and a denier per filament of less than 9.0 grams/9000 is rejected as obvious in view of UTHURRY for the same reasons discussed in the rejection of claim 1. Further, due to the language of the claim that states “at least one of,” only one of the limitations from the list need be disclosed in the prior art to meet the claim limitation. In this case, UTHURRY discloses a denier per filament of less than 8.0 grams/9000m (¶81), which is less than the 9.0 recited in the instant application. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, modified UTHURRY discloses the mouthpiece according to claim 1. UTHURRY further teaches wherein said fibrous material comprises a denier per filament of between 3.0 and 9.0 grams/9000 m (UTHURRY ¶81, instant application ¶55-¶56). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified UTHURRY discloses the mouthpiece according to claim 1. UTHURRY further teaches wherein said section comprises an outer circumference of between 15.0 and 24.0 mm, or between 16.0 mm and 23.0 mm. UTHURRY teaches that the diameter of the article (which is shown in Fig. 1 to be substantially the same along the entire article, including the filter) is from 5 mm to 12 mm (¶6). Circumference = πd. Therefore the range of circumferences taught in UTHURRY is 15.7 to 37.68. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, modified UTHURRY discloses the mouthpiece according to claim 1. UTHURRY further teaches wherein said fibrous material comprises between 75 and 145 fibres per mm2 of said cross sectional area for the same reasons discussed in the rejection of claim 1.
Regarding claim 14, modified UTHURRY discloses the mouthpiece according to claim 11. UTHURRY further teaches wherein the filamentary tow comprises a denier per filament of from 3.0 to 7.9, or from 3.0 to 5.9, or from 3.0 to 4.9 (¶81). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15, modified UTHURRY discloses the mouthpiece according to claim 1 as discussed above. UTHURRY further teaches wherein a pressure drop across the section is between about 1.5 and about 6 mm H2O/mm of longitudinal length of the section. UTHURRY teaches that the filter segment has a preferred resistance to draw (¶10). UTHURRY teaches that the pressure drop is from about 0.4 to about 3 mm H2O/mm (¶10). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 6 -9 are rejected under 35 U.S.C. 103 as being unpatentable over UTHURRY as applied to claim 1 above, and further in view of US 20120255569 A1 (hereinafter BEARD). BEARD was made of record on applicant’s information disclosure statement filed May 30, 2023.
Regarding claim 6, modified UTHURRY discloses the mouthpiece according to claim 1. UTHURRY does not disclose a capsule embedded within the fibrous material.
BEARD teaches a cigarette with a filter element (abstract) and an embodiment with a breakable capsule (Fig. 10, breakable capsule 54, ¶68). BEARD teaches that the breakable capsule carries a payload that is intended to introduce some change in nature or character of the mainstream smoke such as a flavor (¶69). BEARD teaches that the payload is a liquid (¶77).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide a capsule embedded within the fibrous material as taught in BEARD. A person of ordinary skill in the art would obviously include a capsule with a liquid for modifying the aerosol because doing so would change the flavor or the mainstream smoke (BEARD ¶69) and provide benefits of flavoring or scenting the smoke, cooling or moistening the smoke, or freshening the scent of the cigarette butt (BEARD ¶72).
Regarding claim 7, modified UTHURRY discloses an aerosol-generating article including a plurality of components assembled within a wrapper and a filter segment (abstract). UTHURRY discloses. UTHURRY discloses a mouthpiece (Fig. 1, filter segment 105, ¶81) comprising: a section of fibrous material (¶4). UTHURRY further discloses wherein said section comprises an outer circumference of less than 21 mm. UTHURRY teaches that the diameter of the article (which is shown in Fig. 1 to be substantially the same along the filter) is from 5 mm to 12 mm (¶6). Circumference = πd. Therefore the range of circumferences taught in UTHURRY is 15.7 to 37.68. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
UTHURRY does not disclose having a denier per filament of less than 5.0 grams/9000 m nor and a capsule embedded within the fibrous material
BEARD teaches a cigarette with a filter element (abstract) and an embodiment with a breakable capsule (Fig. 10, breakable capsule 54, ¶68). BEARD teaches that the breakable capsule carries a payload that is intended to introduce some change in nature or character of the mainstream smoke such as a flavor (¶69). BEARD teaches that the payload is a liquid (¶77). BEARD further teaches that the filter materials incorporate materials having a size of about 1.8 to about 10 denier per filament, dpf (¶84). BEARD teaches that the dpf is selected to control filtration efficiency (¶84).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide having a denier per filament of less than 5.0 grams/9000 m and a capsule embedded within the fibrous material as taught in BEARD. A person of ordinary skill in the art would obviously include a capsule with a liquid for modifying the aerosol because doing so would change the flavor or the mainstream smoke (BEARD ¶69) and provide benefits of flavoring or scenting the smoke, cooling or moistening the smoke, or freshening the scent of the cigarette butt (BEARD ¶72). Further a person of ordinary skill in the art would obviously select a specific dpf of less than 5 because doing so would customize the filter efficiency (BEARD ¶84). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, modified UTHURRY discloses the mouthpiece according to claim 6. UTHURRY further teaches wherein the section has a longitudinal axis and a cross sectional area measured perpendicularly to the longitudinal axis (See annotated Fig. 1 above).
UTHURRY does not disclose the largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 45% of the cross sectional area and the capsule comprises a shell encapsulating a liquid aerosol modifying agent.
BEARD teaches a cigarette with a filter element (abstract) and an embodiment with a breakable capsule (Fig. 10, breakable capsule 54, ¶68). BEARD teaches that the breakable capsule carries a payload that is intended to introduce some change in nature or character of the mainstream smoke such as a flavor (¶69). BEARD teaches that the payload is a liquid (¶77). BEARD teaches that the outer shell of the capsule is constructed of food grade gelatin (¶76). As shown in annotated Fig. 10 below, largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 45% of the cross sectional area.
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It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide the largest cross sectional area of the capsule measured perpendicularly to the longitudinal axis is less than 45% of the cross sectional area and the capsule comprises a shell encapsulating a liquid aerosol modifying agent as taught in BEARD. A person of ordinary skill in the art would obviously include a capsule with a liquid for modifying the aerosol because doing so would change the flavor or the mainstream smoke (BEARD ¶69) and provide benefits of flavoring or scenting the smoke, cooling or moistening the smoke, or freshening the scent of the cigarette butt (BEARD ¶72). The courts have held changes in proportion or shape to be prima facie obvious in the absence of new or unexpected results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). One of ordinary skill in the art would appreciate that the capsule being 45% or less of the cross sectional area would not cause the device to perform differently and since that range is taught by examination of the figures of BEARD it is an obvious proportion.
Regarding claim 9, modified UTHURRY discloses the mouthpiece according to claim 6. UTHURRY does not teach the capsule is broken by an external force to selectively release the liquid aerosol modifying agent.
BEARD teaches that application of tactile pressure, for example by a squeezing action provided by the fingers of the smoker causes the capsule to break (¶72). BEARD teaches that an indicia can be printed on the tipping material to help the smoker to locate the capsule for easier rupturing (¶70).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide the capsule is broken by an external force to selectively release the liquid aerosol modifying agent as taught in BEARD. A person of ordinary skill in the art would obviously provide a selectively breakable capsule because doing so would allow the user to control the timing of the rupture of the capsule (BEARD ¶71) and realize the benefits of flavor, scent improvement, cooling, or moistening.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over UTHURRY and BEARD as applied to claims 6-9 above, and further in view of US 20160037824 A1 (hereinafter JORDIL). JORDIL was made of record on applicant’s information disclosure statement filed December 7, 2021.
Regarding claim 10, modified UTHURRY discloses the mouthpiece according to claim 6 as discussed above. UTHURRY nor BEARD disclose wherein an open pressure drop across the article changes by less than about 20 mm H2O, less than about 10 mm H2O, or less than about 8 mm H2O when the capsule is broken.
JORDIL teaches a filter with a flavour delivery member with liquid that is broken with external force (abstract). JORDIL teaches that the breaking of the delivery member causes a drop in resistance to draw measured in pressure mm of H2O (¶17). JORDIL teaches that the decrease may be at least about 10 to 30 mm H2O (¶17).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified UTHURRY to provide wherein an open pressure drop across the article changes by less than about 20 mm H2O, less than about 10 mm H2O, or less than about 8 mm H2O when the capsule is broken as taught in JORDIL. A person of ordinary skill in the art would obviously manipulate and measure the RTD the user experiences because the change in RTD creates a new and unusual sensory experience. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, the claim recitation of the instant application is “changes by less than about 20 mm H2O, less than about 10 mm H2O, or less than about 8 mm H2O” (emphasis added). Therefore only one of the limitations need be taught by the prior art, and JORDIL clearly teaches an overlapping range.
Claims 16-17 and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over UTHURRY as applied to claim 1 above, and further in view of US 20210177065 A1 (hereinafter LEE).
Regarding claim 16, modified UTHURRY discloses the mouthpiece according to claim 1. UTHURRY does not disclose an article for use in a non-combustible aerosol provision system.
LEE teaches an aerosol generating device for heating an aerosol-generating substrate and a controller for controlling power to achieve a temperature (abstract). LEE teaches using a cigarette 2 inserted into an aerosol generator 10 (Figs. 1-2, ¶41). LEE teaches that the cigarette has a front end plug with denier overlapping the instant application (¶109). LEE teaches that using an aerosol-generating device that heats the cigarette overcomes disadvantages of the common cigarette (¶2-¶3). LEE teaches that the use of the aerosol-generating device for consuming the cigarette results in a reduction in amount of atomization and a consistent smoking feeling (¶8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide an article for use in a non-combustible aerosol provision system as taught in LEE. A person of ordinary skill in the art would obviously provide an article for use in a non-combustible aerosol provision device. Doing so would overcomes disadvantages of the common cigarette (¶2-¶3) and result in a reduction in amount of atomization and a consistent smoking feeling (¶8).
Regarding claim 17, modified UTHURRY discloses the article according to claim 16 as discussed above. UTHURRY further discloses an aerosol generating material (Fig. 1 aerosol-generating substrate 2, ¶81).
Regarding claim 20, modified UTHURRY discloses the article according to claim 17. UTHURRY further teaches 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. UTHURRY teaches that the aerosol-forming substrate preferably comprises an aerosol former (¶16). UTHURRY teaches that the aerosol former comprises at least 5% and up to 30% on a dry weight basis (¶19). UTHURRY teaches that the former facilitates the formation of an aerosol that is substantially resistant to thermal degradation (¶28).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of UTHURRY to provide 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 as taught in UTHURRY. A person of ordinary skill in the art would obviously include an aerosol former because doing so would prevent thermal degradation of the aerosol generating material at the operating temperatures (UTHURRY ¶28).
Regarding claim 21, modified UTHURRY discloses the article according to claim 17 as discussed above. UTHURRY does not teach a non-combustible aerosol provision device for heating the aerosol generating material of the article.
LEE teaches an aerosol generating device for heating an aerosol-generating substrate and a controller for controlling power to achieve a temperature (abstract). LEE teaches using a cigarette 2 inserted into an aerosol generator 10 (Figs. 1-2, ¶41). LEE teaches that the cigarette has a front end plug with denier overlapping the instant application (¶109). LEE teaches that using an aerosol-generating device that heats the cigarette overcomes disadvantages of the common cigarette (¶2-¶3). LEE teaches that the use of the aerosol-generating device for consuming the cigarette results in a reduction in amount of atomization and a consistent smoking feeling (¶8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide non-combustible aerosol provision device for heating the aerosol generating material of the article as taught in LEE. A person of ordinary skill in the art would obviously provide an article for use in a non-combustible aerosol provision device. Doing so would overcomes disadvantages of the common cigarette (¶2-¶3) and result in a reduction in amount of atomization and a consistent smoking feeling (¶8).
Regarding claim 22, modified UTHURRY discloses the system according to claim 21 as discussed above. UTHURRY does not teach the non-combustible aerosol provision device comprises a coil.
LEE teaches an aerosol generating device for heating an aerosol-generating substrate and a controller for controlling power to achieve a temperature (abstract). LEE teaches using a cigarette 2 inserted into an aerosol generator 10 (Figs. 1-2, ¶41). LEE teaches that the system has a heater to provide heat to a desired temperature set by a user (¶51). LEE teaches that the heater may include an electrically conductive coil (¶52)
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide the non-combustible aerosol provision device comprises a coil as taught in LEE. A person of ordinary skill in the art would obviously provide a coil heater. Doing so would make use of a known type of heater to bring heat the cigarette to a desired temperature (LEE ¶51-¶52).
Regarding claim 23, modified UTHURRY discloses the system according to claim 21 as discussed above. UTHURRY does not teach wherein the non-combustible aerosol provision device is configured to heat the aerosol generating substrate of the article to a maximum temperature of at least 200°C.
LEE teaches an aerosol generating device for heating an aerosol-generating substrate and a controller for controlling power to achieve a temperature (abstract). LEE teaches using a cigarette 2 inserted into an aerosol generator 10 (Figs. 1-2, ¶41). LEE teaches that the system has a heater to provide heat to a desired temperature set by a user (¶51). LEE teaches that the controller uses a controller to achieve initial temperatures (¶137). LEE teaches a table with ranges of 0-250°C.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide wherein the non-combustible aerosol provision device is configured to heat the aerosol generating substrate of the article to a maximum temperature of at least 200°C as taught in LEE. A person of ordinary skill in the art would obviously heat to a target temperature. Doing so would make use of a known type of heater to bring heat the cigarette to a desired temperature (LEE ¶¶127). This would allow the user to enjoy smoking by inhaling an aerosol for a certain period of time during which the temperature of the heater is maintained (¶127). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24, modified UTHURRY discloses the system according to claim 23 as discussed above. UTHURRY does not teach wherein the non-combustible aerosol provision device is configured to heat the aerosol generating substrate of the article to a temperature of at least about 160°C, or at least about 200°C, or at least about 220°C, or at least about 240° C, or at least about 270°C. However, this limitation is rejected for the same reasons as discussed in the rejection of claim 23. Further the limitation is recited with “or” so only one of the limitations in the list must be met in the prior art to meet the claim limitation and as discussed in the rejection of claim 23, LEE discloses a range up to 250 for the initial temperature in table 1.
Regarding claim 25, modified UTHURRY discloses the system comprising an article according to claim 16 as discussed above. UTHURRY does not teach wherein said system comprises a combustible aerosol provision system.
LEE teaches the use of a cigarette in the system (¶9-¶10). A cigarette is inherently considered to be combustible.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide wherein said system comprises a combustible aerosol provision system as taught in LEE. A person of ordinary skill in the art would immediately recognize that since LEE teaches the use of a cigarette in the electronic device, a combustible is able to be used with the characteristics of modified UTHURRY to provide overcomes disadvantages of the common cigarette (¶2-¶3) and result in a reduction in amount of atomization and a consistent smoking feeling (¶8).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over UTHURRY and LEE as applied to claims 16-17 and 20-25 above, and further in view of US 20180271143 A1 (hereinafter BESSO). BESSO was made of record on applicant’s information disclosure statement filed May 30, 2023.
Regarding claim 18, modified UTHURRY discloses the article according to claim 17 as discussed above. UTHURRY does not disclose wherein the aerosol generating material is wrapped in a wrapper having a permeability of less than 100 Coresta Units, less than 80 Coresta Units, less than 60 Coresta Units or less than 20 Coresta Units.
BESSO teaches a smoking article comprising tobacco, a filter and a wrapper having an air permeability of less than about 20 Coresta unites (abstract). BESSO teaches a wrapper having an air permeability of less than about 20 Coresta Units (¶12). BESSO teaches that the Coresta Units feature is chosen to allow a specific dilution of side stream smoke through the wrapper and to the rod and the filter (¶12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide wherein the aerosol generating material is wrapped in a wrapper having a permeability of less than 100 Coresta Units, less than 80 Coresta Units, less than 60 Coresta Units or less than 20 Coresta Units as taught in BESSO. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case providing a wrapper with less than 20 Coresta units would customizer dilution of side stream smoke (BESSO ¶12).
Regarding claim 19, modified UTHURRY discloses the article according to claim 17 as discussed above. UTHURRY does not disclose wherein the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter or reconstituted tobacco material having a density of less than about 600 milligrams per cubic centimeter.
BESSO teaches a smoking article comprising tobacco, a filter and a wrapper having an air permeability of less than about 20 Coresta unites (abstract). BESSO teaches that the tobacco rod comprises any suitable tobacco in any suitable form, including reconstituted tobacco materials (¶27). BESSO further teaches that the packing density of the tobacco is from about 180 mg/cubic centimetre to about 280 mg/cubic centimetre (¶6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified UTHURRY to provide wherein the aerosol generating material comprises reconstituted tobacco material having a density of less than about 700 milligrams per cubic centimeter or reconstituted tobacco material having a density of less than about 600 milligrams per cubic centimeter as taught in BESSO. A person of ordinary skill in the art would choose any suitable tobacco in any suitable form for delivery to the smoker including reconstituted (BESSO ¶27). Further the range taught in BESSO is considered within the range of less than about 600 mg/cubic centimeter because BESSO teaches ranges less than 600. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant’s arguments, filed October 30, 2025, with respect to the rejection(s) of claim(s) 1-5 and 14-15 under 35 USC 103 have been fully considered and are persuasive in part. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of UTHURRY applying a narrowed range that matches the range of the instant application.
Applicant argues:
Independent claim 1 clearly requires that it is the same fibrous material which has both a total denier of between 300 and 500 grams/9000m per mm2 of the cross- sectional area of the section, and which also has a total denier of between 6,000 and 9,500 grams/9000m…Uthurry does not disclose both features (a) and (b) together in the same section of fibrous material. As Uthurry fails to teach all elements of claim 1, no prima facie case of obviousness has been established.
This argument is considered to be persuasive in part. Since the instant application discloses that the mouthpiece (mapped to the filter segment of UTHURRY) has both (a) a total denier of between 300 and 500 grams/9000m per mm2 of the cross- sectional area of the section, and (b) total denier of between 6,000 and 9,500 grams/9000m the calculations above to determine a total denier of the cross-sectional area has been limited to the recited range of total denier of between 6,000 and 9,500 grams/9000m. As applicant has submitted that the total denier per cross sectional area is equal to the total denier divided by the cross sectional area of the section the calculation was performed above to determine a total denier per cross sectional area disclosed in UTHURRY to indeed overlap with the instant application being in a range from 53.1 to 484.1 grams/9000m per mm2 of said cross sectional area. Therefore, the ranges do overlap to create a prima facie case of obviousness while maintaining both limitations.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here a person of ordinary skill in the art is not constrained by the limitations of claim 1 to render obvious the whole range of values disclosed in UTHURRY. The calculation performed above gives the largest obvious range disclosed in UTHURRY. Since that range includes the denier of instant application claim 1, namely as low as 6000, and the range of the cross-sectional area is also disclosed, it is prima facie obvious that taken as a whole, UTHURRY reads upon the limitations of claim 1.
Applicant further argues:
Applicant points out that the Examiner's analysis in the Office Action is based upon Uthurry allegedly disclosing a denier per filament of less than 9.0 grams/9000m and hence meeting the requirement of the list of alternatives. However, the only value of denier per filament disclosed in Uthurry which falls in this range is the value of about 8 grams/9000m as in paragraph [0081]. This is the only single example in Uthurry of a denier per filament of less than 9. This disclosure relates to the specific embodiment of Figure 1 of Uthurry, in which the rod diameter is 7.2mm ([0082]), from which the cross sectional area derivable would not result in values of total denier per cross sectional area as defined in claim 2. This embodiment also does not mention any specific values of total denier..
Examiner recognizes that UTHURRY may have preferred embodiments, but a preferred embodiment does not constitute a teaching away where the specification teaches more broadly. See MPEP 2123, II. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Regarding claim 2, in response to applicant's argument that “Advantageously, the combination of features defined in independent claim 2 enables the section to achieve appropriate resistance to draw levels while allowing reductions in the weight of tow which is used,” the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding claim 7, applicant argues: “the teachings of Uthurry and Beard are incompatible with one another and would not be combined”, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, UTHURRY and BEARD are clearly within the same field of endeavor, providing customized filtered smoke to a user. A person of ordinary skill in the art would obviously look to the teachings of both of these references to improve smoking experiences.
Applicant further argues,
Applicant specifically asserts that while the Examiner has commented "BEARD further teaches that the filter materials incorporate materials having a size of about 1.8 to about 10 denier per filament", Beard does not specifically disclose or suggest a lower range of a denier per filament of less than 5, nor advantages of this limitation.
The Examiner has commented "a person of ordinary skill in the art would obviously select a specific dpf of less than 5 because doing so would customize the filter efficiency", with reference to Beard paragraph [0084]. However, this is allegedly taught in Beard, not Uthurry, and Uthurry in fact strongly teaches away from such a lower denier per filament. Modifying Uthurry based upon the teachings of Beard as suggested by the Examiner would have gone against the teachings of Uthurry, and accordingly would not be deemed obvious to do.
Applicant’s interpretation that BEARD does not disclose or suggest a lower range of a denier per filament of less than 5, nor advantages of this limitation is a mischaracterization of BEARD. BEARD clearly teaches a range (1.8 to 10 disclosed in ¶84) of denier per filament and that range includes values of less than 5. BEARD teaches that this value is selected to control filtration efficiency (¶84). So a person of ordinary skill in the art would obviously use this range of dpf to control for filter efficiency of a article with a capsule. Applicant argues that UTHURRY teaches away from the modification to provide the lower denier per filament taught in BEARD. UTHURRY does teach that a portion of the fibers should be higher (¶5), but UTHURRY also teaches that the balance of the fibers will be lower to control filter efficiency (¶6). Therefore, since BEARD teaches this lower range and provides a reason for the lower dpf to control filter efficiency (BEARD ¶84) a person of ordinary skill in the art would still venture to combine the disclosure of UTHURRY, that recognizes that lower deniers are known in the art, with BEARD to achieve filter efficiency. Further, the motivation for including the capsule of BEARD to change the nature and characteristic of the mainstream smoke would then motivate a person of ordinary skill in the art to evaluate filter efficiency since the payload of the capsule would introduce material that may need additional filtration. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747