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 31-35 are pending and are subject to this Office Action. Claims 1-30 have been cancelled. Claims 31-35 are newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 2/17/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive.
On page 7, the Applicant argues that the cited references do not teach the relationship between the specific structural features recited in new claim 31 and achieving the functional feature recited in new claim 31. The Examiner does not find this to be persuasive. The cited references teach a structure that is substantially identical to that of the claims. As such the claimed functional feature is presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See MPEP § 2112.01, I.
On page 7, the Applicant further argues that the cited references did not disclose or suggest combining the structure features recited in new claim 31 in a single device for any reason, and therefore starting from the cited references a person of ordinary skill in the art had no reason to endeavor to create a device having the structural or the functional features recited in the amended claims. The Examiner does not find this to be persuasive. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, (I) as Han is silent to the length of the aerosol cooling element and the inner diameter of the hollow tubular segment of the aerosol cooling element, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teaching of lengths and inner diameters of aerosol cooling elements that one of ordinary skill could apply to Han with a reasonable expectation of success in the length and inner diameter of the aerosol cooling element being suitable sized for use in a smoking article, (II) Silberstein teaches the protrusions add surface area to increase the amount of particulate matter separated from the smoke and this merely involves incorporating a known filter element (i.e. fins) to a similar aerosol generating article to yield predictable results, (III) as Han is silent to the size/thickness of the cylindrical peripheral wall of the tubular support element, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teaching of thicknesses of cylindrical peripheral walls of the tubular support elements that one of ordinary skill could apply to Han with a reasonable expectation of success in the thickness of the cylindrical peripheral wall of the tubular support element being suitable sized for use in a smoking article, and (IV) Yoss teaches providing the smoking article with filter ventilation can help with controlling tobacco smoke being drawn in by a user ([0023]) and this merely involves incorporating a known filter element (i.e. perforations) to a similar smoking article to yield predictable results.
On page 7, the Applicant further argues that the person of ordinary skill in the art had no basis to expect success in achieving the device that provides the functional features recited in new claim 31. The Examiner does not find this to be persuasive. 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).
The following is a modified rejection based on amendments made to the claims.
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 considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 31 and 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han (WO2018/182322, citations refer to the English equivalent US2025/0143368) in view of Lord (US2021/0315264), Silberstein (U.S. 4,393,885, cited previously), England (US2019/0116874, cited previously), and Yoss (US2009/0014020).
Regarding claim 31, Han teaches:
An aerosol-generating article for producing an aerosol flow upon heating (cigarette 10, figure 8A, [0105]) the aerosol-generating article comprising:
A. a rod of aerosol-generating substrate (tobacco rod 820, figure 8A, [0106])
B. an aerosol-cooling element positioned downstream of the rod of aerosol-generating substrate (third filter segment 840, figure 8A, [0105]-[0106]) comprising:
1. a hollow tubular segment ([0120]: tube filter having a hollow therein), the hollow tubular segment extending along a longitudinal axis and having a downstream end in fluid communication with an upstream end (figure 8A), the hollow tubular segment comprising:
a. a peripheral wall ([0120], wall of the tube filter) defining a cavity ([0120], hollow of the tube filter).
a tubular support element positioned between the rod of aerosol-generating substrate and the aerosol-cooling element (second filter segment 830, figure 8A, [0106]), the tubular support element comprising a cylindrical peripheral wall (outer wall of segment 830 that has a hollow [0120]).
a wrapper circumscribing the rod of aerosol-generating substrate, the aerosol-cooling element, and the tubular support element (first wrapper 850, [0123]).
Han does not appear to explicitly disclose (I) the aerosol cooling element having a length of from 8 mm to 30 mm and the hollow tubular segment having an inner diameter of from 4 mm to 6 mm, (II) at least one elongated protrusion having a length of from 9 mm to 19 mm, a thickness of from 0.25 mm to 0.75 mm, and a thickness:length ratio of less than 1:10, the at least one elongated protrusion extending from the peripheral wall into an interior of the hollow tubular segment, the at least one elongated protrusion extending longitudinally from an upstream position on the peripheral wall to a position on the peripheral wall downstream of the upstream position, wherein the ratio of the greatest height of the at least one elongated protrusion to the inner diameter of the aerosol-cooling element is from 0.25 to 0.6; and wherein the ratio of the length of the at least one elongated protrusion to the length of the aerosol-cooling element is from 0.25 to 0.75, (III) wherein the thickness of the cylindrical peripheral wall is 2 mm or less, (IV) a ventilation zone provided at a location along the cavity of the hollow tubular segment of the aerosol-cooling element such that a fluid communication is established with an outer environment and the cavity, and (V) wherein, when aerosol flows through the aerosol-cooling element during use of the device by a user the at least one elongated protrusion creates turbulence in the flowing aerosol to promote mixing of the aerosol with cooler air already present in the aerosol- cooling element sufficient to maintain the temperature of the gaseous flow through the aerosol-generating article below a threshold value.
In regard to (I), Han is silent to the length of the aerosol cooling element and the inner diameter of the hollow tubular segment of the aerosol cooling element.
Lord, directed to a smoking articles, teaches:
A terminal filter element may be a hollow bore filter element with a bore diameter of between 1 and 5 mm ([0221]). The bore diameter defining an inner diameter of a hollow tubular segment.
The terminal filter element has a length of between 8 and 15 mm ([0220]), which falls within the claimed range of from 8 mm to 30 mm.
Therefore, as Han is silent to the length of the aerosol cooling element and the inner diameter of the hollow tubular segment of the aerosol cooling element, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teaching of lengths and inner diameters of aerosol cooling elements that one of ordinary skill could apply to Han with a reasonable expectation of success in the length and inner diameter of the aerosol cooling element being suitable sized for use in a smoking article.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the length of the aerosol cooling element and the inner diameter of the hollow tubular segment of Han be between 8 and 15 mm and between 1 and 5 mm, respectively, as taught by Lord, because both Han and Lord are directing to smoking articles with hollow filters, and this merely involves incorporating known dimensions of a hollow tubular segment to a similar aerosol generating article to yield predictable results.
The inner diameter range taught by the prior art overlaps the claimed range of at least 4 mm and is therefore prima facie obvious.
In regard to (II), Silberstein, directed to a cigarette filter, teaches:
At least one elongated protrusion (fins 26) extending from a peripheral wall into an interior of a hollow tubular segment (fins 26 extending generally radially inwardly of the channel 14 from the wall of the hollow tube 16, Col. 3, lines 35-45, figures 3-4).
The at least one elongated protrusion extending longitudinally from an upstream position on a peripheral wall to a position on the peripheral wall downstream of the upstream position (The fins 26 are illustrated as extending the entire length of the channel 14, Col. 3, lines 35-45, figures 3-4).
The at least one elongated protrusion is a deflecting fin (fin 26) configured to change a direction of flow of an aerosol flowing from the upstream end to the downstream end of the hollow tubular segment (as the fins impede the smoke flow path as shown in figures 3-4, and therefore structurally are capable of changing a direction of flow of the aerosol).
The protrusions add surface area to increase the amount of particulate matter separated from the smoke (Col. 3, lines 33-45).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the hollow tubular segment of Han incorporating the at least one elongated protrusion as taught by Silberstein, because both Han and Silberstein are directed to cigarettes comprising filters, Silberstein teaches the protrusions add surface area to increase the amount of particulate matter separated from the smoke, and this merely involves incorporating a known filter element (i.e. fins) to a similar aerosol generating article to yield predictable results.
Silberstein is silent to the dimensions of the at least one elongated protrusion. However, the courts have yielded 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. See MPEP § 2144.04 IV. A. Therefore, the recitation of the at least one elongated protrusion having a length of from 9 mm to 19 mm, a thickness of from 0.25 mm to 0.75 mm, and a thickness:length ratio of less than 1:10, wherein the ratio of the greatest height of the at least one elongated protrusion to the inner diameter of the aerosol-cooling element is from 0.25 to 0.6, and wherein the ratio of the length of the at least one elongated protrusion to the length of the aerosol-cooling element is from 0.25 to 0.75 does not make the claimed device patentably distinct from modified Han.
Additionally, it would be obvious for one of ordinary skill in the art to recognize that the thickness, length, and height of the protrusion is dependent on the overall size of the aerosol generating article, larger articles needing larger protrusions to mix larger amounts of smoke and remove enough particulate matter from the smoke. Therefore, it would be obvious for one having ordinary skill in the art to reasonably determine workable protrusion thicknesses, lengths, and heights that would allow the protrusion to function as effectively mixing and removing particulate matter from the smoke based on the size of the overall device.
In regard to (III), Han is silent to the thickness of the cylindrical peripheral wall.
However, England, directed to a smoking article, teaches:
A tubular support element (cooling segment 107) positioned between a rod of aerosol-generating substrate (body of smokable material 103) and an aerosol-cooling element (filter segment 109, figure 1, [0019]).
The thickness of the cylindrical peripheral wall of the tubular support element is 0.29 mm [0025].
Therefore, as Han is silent to the size/thickness of the cylindrical peripheral wall of the tubular support element, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teaching of thicknesses of cylindrical peripheral walls of the tubular support elements that one of ordinary skill could apply to Han with a reasonable expectation of success in the thickness of the cylindrical peripheral wall of the tubular support element being suitable sized for use in a smoking article.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the thickness of the cylindrical peripheral wall of the tubular support element of Han be 0.29 mm as taught by England, because both Han and England are directing to smoking articles with tubular support elements, and this merely involves incorporating a known thickness of a cylindrical peripheral wall of a tubular support element to a similar aerosol generating article to yield predictable results. The thickness of 0.29 mm falls within the claimed range of less than or equal to 2 mm and is therefore prima facie obvious.
In regard to (IV), Yoss, directed to a smoking article, teaches:
A smoking article (10) with a filter (40) having perforations (52) to provide the smoking article with filter ventilation ([0029], figure 3).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter segment 840 of Han to have perforations as taught by Yoss, and thus a ventilation zone provided at a location along the cavity of the hollow tubular segment of the aerosol-cooling element such that a fluid communication is established with an outer environment and the cavity, because both Han and Yoss are directed to smoking devices with filters, Yoss teaches this provides the smoking article with filter ventilation which can help with controlling tobacco smoke being drawn in by a user ([0023]), and this merely involves incorporating a known filter element (i.e. perforations) to a similar smoking article to yield predictable results.
In regard to (V), while modified Han does not appear to explicitly recite, when aerosol flows through the aerosol-cooling element during use of the device by a user the at least one elongated protrusion creates turbulence in the flowing aerosol to promote mixing of the aerosol with cooler air already present in the aerosol-cooling element sufficient to maintain the temperature of the gaseous flow through the aerosol-generating article below a threshold value, modified Han teaches a structure that is substantially identical to that of the claims. As such the claimed function of the at least one elongated protrusion creates turbulence in the flowing aerosol to promote mixing of the aerosol with cooler air already present in the aerosol- cooling element sufficient to maintain the temperature of the gaseous flow through the aerosol-generating article below a threshold value is presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See MPEP § 2112.01, I.
Regarding claim 34 modified Han further teaches:
Wherein the upstream position is located between the upstream end of the hollow tubular segment and a midpoint of the hollow tubular segment, and wherein the downstream position is located between the midpoint of the hollow tubular segment and the downstream end of the hollow tubular segment (Silberstein, Col. 3, lines 45-50, wherein the fins are illustrated as extending the entire length of the channel but may extend only part way along the length of the channel). Therein by extending part way and not the entire length of the channel, this may include one end extending between an upstream end and a midpoint of the hollow tube, and the other end extending between a downstream end and a midpoint of the hollow tube.
Regarding claim 35, modified Han further teaches:
Wherein the at least one elongated protrusion extends longitudinally from the upstream end of the hollow tubular segment to the downstream end of the hollow tubular segment (Silberstein, Col. 3, lines 45-50, wherein the fins extend the entire length of the channel).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han (WO2018/182322, citations refer to the English equivalent US2025/0143368) in view of Lord (US2021/0315264), Silberstein (U.S. 4,393,885, cited previously), England (US2019/0116874, cited previously), and Yoss (US2009/0014020) as applied to claim 31 above, and further in view of Leadley (US2019/0083720, cited previously) and Hoekman (US2013/0142868, cited previously).
Regarding claim 32, modified Han does not appear to explicitly disclose wherein a height of the at least one elongated protrusion varies between the upstream position and the downstream position.
Leadley, directed to an electronic cigarette, teaches:
A hollow tubular segment (432 air channel wall) comprising an elongating protrusion (protrusion 750) extending from the peripheral wall (inner wall 432A) of the hollow tubular segment, the at least one elongated protrusion extending longitudinally from an upstream position on the peripheral wall to a downstream position on the peripheral wall downstream of the upstream position ([0076]-[0077], Fig. 11A).
The protrusion disrupts the airflow in the hollow tubular segment (i.e. air channel 433) and enhances mixing of the air and vapor drawn through the channel to provide a more uniform vapor ([0074]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the protrusions of modified Han to be a helical shape as taught by Leadley, because both Han, Silberstein, and Leadley are directed to smoking devices with airflow channels, Leadley teaches the helical protrusion provides the benefit of mixing, and this merely involves incorporating a known protrusion configuration (i.e. helical) to a similar smoking device’s vapor channel to yield predictable results.
Leadley further teaches:
The height of the protrusion impacts the degree of airflow rotation ([0078]).
There are many protrusion configuration parameters that could be adjusted to reach a desired airflow rotation, and these different configurations could be tested empirically ([0080]).
Hoekman, directed to an aerosolization device, teaches:
The cross-sectional area of the channel decreases, thereby causing acceleration of the fluid in the channel ([0115]).
Increasing the height of the protrusion would cause the cross-sectional area of the channel to decrease. Therein, as Leadley teaches modifying the height of the protrusion impacts the degree of airflow rotation, as discussed previously, it would be further obvious to modify the height of the protrusion to increase from the upstream position to the downstream position, as Hoekman teaches decreasing the cross-sectional area of the channel from one end to the other causes acceleration of the fluid.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the at least one elongated protrusion of modified Han by decreasing the cross sectional area of the hollow tube (i.e. channel) as taught by Hoekman, because both Silberstein and Hoekman are directed to aerosol generation devices, Hoekman teaches this would cause acceleration of the fluid in the channel, and this merely involves modifying the shape of a known protrusion (i.e. decrease in height) to a similar fluid channel to yield predictable results.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Han (WO2018/182322, citations refer to the English equivalent US2025/0143368) in view of Lord (US2021/0315264), Silberstein (U.S. 4,393,885, cited previously), England (US2019/0116874, cited previously), and Yoss (US2009/0014020) as applied to claim 31 above, and further in view of Leadley (US2019/0083720, cited previously).
Regarding claim 33, modified Han does not appear to explicitly disclose wherein a circumferential position of the at least on elongated protrusion varies between its upstream position and its downstream position.
Leadley, directed to an electronic cigarette, teaches:
A hollow tubular segment (432 air channel wall) comprising an elongating protrusion (protrusion 750) extending from the peripheral wall (inner wall 432A) of the hollow tubular segment, the at least one elongated protrusion extending longitudinally from an upstream position on the peripheral wall to a downstream position on the peripheral wall downstream of the upstream position ([0076]-[0077], Fig. 11A).
A circumferential position of the at least on elongated protrusion varies between its upstream position and its downstream position (The protrusion completes around one turn [0076] and therefore not completing exactly one helical rotation would also yield the circumferential position of the protrusion to vary between its upstream and downstream position,
The protrusion disrupts the airflow in the hollow tubular segment (i.e. air channel 433) and enhances mixing of the air and vapor drawn through the channel to provide a more uniform vapor ([0074]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the protrusions of modified Han to be a helical shape as taught by Leadley, because both Han, Silberstein, and Leadley are directed to smoking devices with airflow channels, Leadley teaches the helical protrusion provides the benefit of mixing, and this merely involves incorporating a known protrusion configuration (i.e. helical) to a similar smoking device’s vapor channel 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755